How 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 1412.02(II)(C):
“The materially narrowing must relate to what was amended or argued by applicant in the original application, to define the claim over the art.”
To apply this test:
- Compare the reissue claim to the original patent claim it replaced
- Identify the broadening aspect (what limitation was eliminated or broadened)
- Determine if the reissue claim includes a limitation that narrows the claim relative to the original broadening
- Assess if the narrowing is material, i.e., it relates to the prior art rejections or arguments made during original prosecution
If the reissue claim is materially narrowed relative to the original claims, recapture may be avoided even if some broadening has occurred.
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