Impermissible Recapture in a Patent Reissue Application

A Reissue application is an application filed with the USPTO that seeks to broaden the scope of a previously allowed patent.  A reissue application will not be allowed where the claimed subject matter was surrendered during the application process for the original patent.  Applying for previously surrendered subject matter in a Reissue Application is called “recapture” and it is not allowed.

There is a three step test for recapture outlined in the North American Container case, 415 F.3d at 1349, 75 USPQ2d at 1556.

North American Container says that impermissible recapture happens when:

• The reissue claims are broader than the original patent claims;
• The limitations of the reissue claims that have been broadened are limitations regarding subject matter that was surrendered in the original application;
• and the limitations were material to the allowance of the patent in the original application.