MPEP Q & A 179: What is the 3-Step Test for Recapture?

mpep-podcast-800

Question:

What is the 3-step test for recapture?

Answer:

The three-step test for recapture is:

  • First, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
  • Next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
  • 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.

Chapter Details:

The answer to this question can be found in chapter 1400 of the MPEP. This chapter covers correction of patents.

The answer is from the 9th Edition, Revision 08.2017. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.

Section Summary:

This question and answer comes from section 1412.02 of the MPEP.  The following is a brief summary of section 1412.02.

1412.02 Recapture of Canceled Subject Matter

A reissue will not be granted to “recapture” claimed subject matter which was surrendered in an application to obtain the original patent. This section covers the three-step test for recapture:

(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.

Claims to separate inventions/embodiments/species that were not claimed in the original application prosecution (i.e., “overlooked aspects”) are not a part of a recapture analysis.