How does the “overlooked aspects” doctrine apply to broadening reissue claims?
The “overlooked aspects” doctrine is an important consideration in broadening reissue claims. According to MPEP 1412.03:
“Claims to separate inventions/embodiments/species that were disclosed but never covered by the claims in the original application prosecution are claims to overlooked aspects.”
This doctrine allows patent owners to pursue claims in a reissue application that were disclosed in the original specification but never claimed. Key points about overlooked aspects include:
- They are not subject to recapture because they were never surrendered
- They must be directed to a separate invention, embodiment, or species
- They must be supported by the original disclosure
Patent practitioners should carefully consider potential overlooked aspects when preparing broadening reissue applications, as they may provide opportunities for expanded patent coverage.
To learn more: