【程序】reissue 再發行

更新2006.11.01

【程序】reissue 再發行

判例

GUIDANT CORPORATION, GUIDANT SALES CORPORATION
and ELI LILLY & COMPANY, V. MIROWSKI FAMILY VENTURES L.L.C.

依據35 U.S.C. § 251，在符合‘error’ requirement的情況下，發明人可以利用再發行來擴大請求項，專利代理人的錯誤被認為是常見的錯誤，但“recapture” 原申請案所曾放棄的範圍不被認為是錯誤，不符合錯誤要件。

Pursuant to 35 U.S.C. § 251, a patentee may obtain reissue of a patent if the patent is, through error “without any deceptive intention, deemed wholly or partly inoperative or invalid, . . . by reason of the patentee claiming more or less than he had a right to claim in the patent . . . .” 35 U.S.C. § 251; see also 37 C.F.R. § 1.175.

“In considering the ‘error’ requirement, we keep in mind that the reissue statute is ‘based on fundamental principles of equity and fairness, and should be construed liberally.’” Hester Indus., Inc. v. Stein, Inc., 142 F.3d 1472, 1479 (Fed. Cir. 1998) (citation omitted). We have stated that “[a]n attorney’s failure to appreciate the full scope of the invention is one of the most common sources of defects in patents,” and is generally sufficient to justify reissuing a patent. In re Wilder, 736 F.2d 1516, 1519 (Fed. Cir. 1984); see also Hester, 142 F.3d at 1479-80; In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997); Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 995 (Fed. Cir. 1993); Scripps Clinic & Res. Found. v. Genentech, Inc., 927 F.2d 1565, 1575 (Fed. Cir. 1991). It is not necessary that the error be unavoidable or that the error could not have been discovered by the patentee through proper communication with the prosecuting attorney. Wilder, 736 F.2d at 1519.

Reissue proceedings, however, cannot be used to obtain subject matter that could not have been included in the original patent. Under the “recapture” rule, the deliberate surrender of a claim to certain subject matter during the original prosecution of the application for a patent “made in an effort to overcome a prior art rejection” is not such “error” as will allow the patentee to recapture that subject matter in a reissue. Clement, 131 F.3d at 1468-69. Thus, the recapture rule prevents a patentee from regaining, through reissue, subject matter that was surrendered during prosecution of the original patent in an effort to obtain allowance of the original claims. Pannu v. Storz Inst., Inc., 258 F.3d 1366, 1371 (Fed. Cir. 2001); see also Hester, 142 F.3d at 1479-80 (“[A] surrender is not the type of correctable ‘error’ contemplated by the reissue statute.”).

recapture rule的三個判斷步驟
“We apply the recapture rule as a three-step process: (1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; (2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and (3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.” N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1349 (Fed. Cir. 2005) (citing Clement, 131 F.3d at 1471); see also Pannu, 258 F.3d at 1371 (citing Hester, 142 F.3d at 1482-83; Clement, 131 F.3d at 1470).

所以，判斷有無surrender，是能不能夠透過ressure來recapture原本之專利範圍的要件之一。於此案例中：

It is clear from the prosecution history that neither the examiner nor the prosecuting attorney, Mr. Nikolai, considered the unconditional embodiment a part of the invention. The fact that Mr. Nikolai thought the claims were directed to the conditional embodiment alone is demonstrated by his correspondence with the inventor and with the examiner. The fact that the examiner thought that the claim was to the conditional embodiment alone is demonstrated by the examiner’s amendment he made to add “minor wording changes.” This is the kind of inadvertence or mistake that the reissue doctrine was meant to remedy.

因為審查員及專利代理人都沒有考慮到nonconditional embodiment，所以雖然不符合surrender要件，因此可以讓專利權人recapture原本之專利範圍nonconditional embodiment的部分。


不知在臺灣因專利代理人的錯誤，是不是有什麼方法擴大專利範圍？

資料來源：一：Patent Prospector