What is considered impermissible recapture in a reissue application?

Impermissible recapture in a reissue application refers to the situation where a patentee attempts to regain subject matter that was intentionally surrendered during the original prosecution of the patent. This is particularly pertinent when amendments or limitations were introduced to overcome objections from the patent examiner.

When a limitation is added during prosecution, it often serves as a compromise to ensure that the claims are allowable. If the patentee later seeks to eliminate that limitation entirely in a reissue application, the action would be considered an attempt to recapture the broader scope of the original claims that were intentionally narrowed to secure the patent. This is specifically prohibited because it undermines the principle that the patentee should not be allowed to reclaim what was given up to obtain the patent.

In contrast, the other options do not involve recapturing subject matter that was surrendered:

• Adding multiple new claims may relate to expanding the scope of the patent but does not necessarily equate to recapturing lost subject matter.

• Changing the inventor on the application raises issues of inventorship but does not pertain to the recapture of surrendered claims.

• Reducing claims associated with terminal disclaimers involves claim management rather than the recapture of limitations that were relinquished.

Thus, eliminating entirely a limitation added during