The court’s decision held that the BPAI had improperly affirmed a Patent and Trademark Office decision that rejected reissue claims sought for an important Rovi patent. The BPAI had ruled that “any” broadening of a patent claim with respect to a limitation that had been added during prosecution to avoid the prior art, so as to produce a reissue claim of an intermediate scope, was improper under the recapture rule.
Rejecting the BPAI’s essentially per se rule against intermediate-scope reissue claims, the Federal Circuit held that ”if the patentee on reissue modifies a limitation that had been added during the original prosecution to avoid prior art, such that the limitation as modified is broader than the patented claim yet still materially narrows the reissue relative to the original claim before the limitation was added, the recapture rule does not bar reissue.”
Stay Up To Date with Ropes & Gray
Ropes & Gray attorneys provide timely analysis on legal developments, court decisions and changes in legislation and regulations.
Stay in the loop with all things Ropes & Gray, and find our more about our people, culture, initiatives and everything that’s happening.
We regularly notify our clients and contacts of significant legal developments, news, webinars and teleconferences that affect their industries.