What is the three-step test for recapture analysis?
The Court of Appeals for the Federal Circuit established a three-step test for recapture analysis, as outlined in MPEP 1412.02: Determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims. Determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original…
Read MoreWhat is a surrender generating limitation (SGL) in patent reissue?
A surrender generating limitation (SGL) is a key concept in recapture analysis for patent reissues. According to MPEP 1412.02, an SGL is defined as: “A ‘limitation’ presented, argued, or stated to make the claims patentable over the art (in the original application) and ‘generates’ the surrender of claimed subject matter.” An SGL can be created…
Read MoreWhat 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):…
Read MoreWhat are ‘overlooked aspects’ in patent reissue applications?
‘Overlooked aspects’ are an important concept in patent reissue applications, particularly in the context of recapture analysis. According to MPEP 1412.02, overlooked aspects are defined as: “Claims to separate inventions/embodiments/species that were never presented in the original application.” Key points about overlooked aspects: They are not subject to recapture analysis They represent genuinely new inventions…
Read MoreHow does the “materially narrowed” test apply in patent reissue recapture analysis?
How does the “materially narrowed” test apply in patent reissue recapture analysis? The “materially narrowed” test is a crucial part of the third step in the recapture analysis for patent reissue applications. It determines whether the reissue claims have avoided recapture by including a materially narrowing limitation relative to the original claims. According to MPEP…
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