Today, Mon., Mar. 5, 2012, in In re Staats, No. 2010-1443, the Federal Circuit (Dyk, O’Malley (concur) and Reyna) reversed the Patent Office and ruled that a continuing reissue application filed after the 2-year period for seeking broadened reissue was proper because it related to a prior broadening reissue application filed within the 2-year period. This was the case even though the continuing reissue application sought for the first time to cover a second embodiment in the patent and the prior broadening reissue application was directed only to a first embodiment.
The Majority relied on the prior Doll decision that permitted broadened claims added in an amendment made outside the 2-year period because the broadened reissue application itself was filed within the 2-year period. The Majority indicated it was bound by the Doll decision and any change must be by en banc review. Judge O’Malley concurred with the result, but viewed that result as proper both because it followed Doll and because it was consistent with the statute, legislative history, Patent Office rules, case law and “common sense.”
This case provides a good historical review of the basis for reissued patents and the 2-year statutory limit on seeking a broadened reissue.