Bottom line: Filing a continuing patent application is the best vehicle for broadening patent protection (i.e., patent’s claim), not reissue patent applications. In a broadening reissue patent application, the patent’s claims cannot be amended or broadened so as to exclude the primary invention described in the patent application under the ‘original patent’ requirement. In contrast, in a continuing patent application, the focus of the claims can be altered, shifted, enlarged, narrowed regardless of whether the claims include the primary invention described in the patent application. The inventor has great flexibility in claiming the invention. There is no ‘original patent’ requirement for the claim set in a continuing patent application.
U.S. patent laws allow patent owners to pursue different aspects and broaden patent protection of an invention through a series of continuing patent applications (i.e., divisional, continuation, and continuation-in-part patent applications). However, the cost of pursuing multiple continuing patent applications can be very high. As such, most inventors at some point in time stop filing continuing patent applications. As a last resort, the inventor can seek to broaden patent protection of an issued patent with a reissue patent application. However, there are two major limitations in broadening claims through a reissue patent application. The reissue patent application must satisfy the “original patent” requirement. Plus, there is a rule against recapturing previously surrendered subject matter. The following case explains the “original patent” rule and how this rule limits the benefits of broadening patent protection through reissue patent applications. It also shows the advantages of filing continuing patent applications.
In Antares Pharma Inc. v. Medac Pharma Inc. (Fed. Cir. 2014), Antares obtained a patent directed to an automatic injection device for self-administering pharmaceuticals. All claims were originally limited to jet injectors. Within two years of the patent issuance, Antares filed a reissue patent application in an attempt to broaden the claims to encompass devices that had no jet injectors. Under the “original patent” requirement for reissue patent applications, the reissue claims could not be broadened if the subject matter of the broadened claims were merely suggested or indicated in the patent’s specification. The broadened claims cannot be based on a hint, suggestion or indication in the specification. It cannot be based on some vague reference in the specification. The broadened claims have to be based on the primary invention described in the patent application.
In applying the ‘original patent’ rule to the instant case, the court stated that all of the original claims focused on the jet injection limitation. In contrast, the reissued claims focused on particular safety features and did not include the jet injection limitation. The title, abstract, summary of the invention and repetitive descriptions of the “present invention” all indicated the importance of the jet injector. Safety features were disclosed, but never discussed apart from the jet injectors. Nowhere did the specification disclose, in an explicit and unequivocal manner, the particular combination of safety features defined in the reissue claims, separate from the jet injection limitation. Hence, the claims of the reissue patent were found to be invalid for failure to satisfy the ‘original patent’ requirement for reissued patents under 35 U.S.C. § 251.
This Court repeatedly stated that the “original patent” requirement is analogous to the written description requirement. However, the court made clear that the written description requirement is different from the “original patent” requirement. A claim in a continuing patent application may be presented based on a hint, suggestion or an indication. As such, continuing patent applications provide broad leeway in claiming an aspect described in the patent application. For example, in my understanding of this case, a description in the specification such as “it is also contemplated that the device include other features such as but not limited to X” can probably provide written description support for a claim directed to any of the X alternatives. However, the X alternatives might not be able to support the “original patent” requirement for the reissue claims if the X alternatives were always used with a feature repeatedly referred to as the “invention” of the patent.
For this reason, it appears reasonable to conclude that continuing patent applications provide significantly more flexibility in crafting the claims compared to claims in reissue patent applications. Hence, important technologies should not rely upon broadening reissue patent applications as a means for trying to stop competitor efforts to design around patent claims. Rather, important technologies should be protected with the filing of a continuing patent application.
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