What is the significance of the “surrender generating limitation” in patent reissue recapture?
What is the significance of the “surrender generating limitation” in patent reissue recapture?
The “surrender generating limitation” (SGL) is a critical concept in patent reissue recapture analysis. It refers to the claim limitation(s) or features that were added to the claims or argued during original prosecution to overcome prior art rejections.
According to MPEP 1412.02(I)(B)(1)(A):
“With respect to whether applicant surrendered any subject matter, it is to be noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims.”
The significance of the SGL lies in:
- Identifying what subject matter was surrendered during original prosecution
- Determining whether the reissue claims recapture that surrendered subject matter
- Assessing whether any narrowing in the reissue claims is related to the surrendered subject matter
If a reissue claim entirely eliminates or broadens the SGL, it may trigger the recapture rule and potentially be rejected. Understanding the SGL is crucial for both patent applicants and examiners in evaluating the validity of reissue claims.
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