In re Erik P. Staats and Robin D. Lash

The two-year limitation of 35 U.S.C. § 251 relating to broadening of claims on reissue application only applies to the first broadening reissue application; any further broadening reissue applications, whether or not related to the first broadening reissue application, may be filed outside of the two-year limit.

Opinion (Dyk): Erik P. Staats and Robin D. Lash (collectively “Staats”) appealed the decision of the Board of Patent Appeals (“BPAI”) and Interferences to reject claims of Staats’s reissue application due to broadening the scope of the original patent outside the two-year time limit imposed by 35 U.S.C. § 251. The reissue application in question is the third reissue application related to the U.S. Patent Number 5,940,600, filed almost seven years after the original patent issued, and attempts to broaden claims that are unrelated to the earlier broadening reissue applications. The Court of Appeals for the Federal Circuit noted that the first reissue application was filed within the two-year time limit and broadened the claims of the original patent. The Court held that two-year time limit of § 251 only applied to the first broadening reissue application and requiring “new claims [to] be related to the previously submitted claims, or be directed to the same embodiment, would be difficult to administer in a consistent and predictable way.” The Court REVERSED BPAI’s rejection of the claims due to the two-year statutory limitation and remanded for further proceedings.