Sometimes a patent is issued with claims that do not adequately protect the owner of the patent from competitors. In some cases, the claims may not be broad enough to prevent a competitor from designing around the claimed elements of the invention.

In other cases, the technology may evolve rapidly after the patent issues, evolving technology creates new potential avenues to possibly design around the originally issued patent claims. In many cases, a broadening reissue can be a useful remedy for such a patent owner.

One condition for a broadening reissue is that its application must be submitted within two years of the patent’s original issue date. Another condition for a broadening reissue is that the new claims, which are broader than the original claims, must be supported in the original written specification.

Thus, the quality of the original written specification is very important in determining the future potential rights available to the patent owner.

An important legal distinction exists between the claimed invention and the written specification of the invention. A patent owner cannot sue for infringement based upon the written specification. Infringement requires all elements of a specific claim to be infringed.

The claim language is dispositive as to whether a competitor’s device or method infringes a patent. the actual scope of an invention described in the written description typically is and should be much broader than that articulated by the claims themselves. A Litigation Quality Patent is one in which the written specification anticipates a much broader arena of the invention, so as to allow the possibility of future broadening claims.

CASE STUDY: APPLICATION FOR BUSINESS

The United States Court of Appeals for the Federal Circuit heard a case involving a broadening reissue: Intel Corporation v. Negotiated Data Solutions, Inc. In this case, Intel had a broad cross-licensing agreement with National Semiconductor Corp.

Three of National’s patents that were cross-licensed to Intel were subsequently assigned to another company – Negotiated Data Solutions, Inc., (NDI). Following the assignment of these three cross-licensed patents to NDI, the cross-licensing agreement between National and Intel expired.

NDI then applied for broadening reissues of the three cross-licensed patents, and these patents were eventually issued to them. NDI then sued Intel for infringement of these reissued patents.

The Federal Circuit court was asked to determine whether the cross-licensing agreement extends to any reissue patents that are derived therefrom NDI claimed that because the claimed language was broader than the original, these reissued patents were in some ways new, and therefore not the same as those that were originally cross-licensed.

Intel countered that because a reissue requires that the claimed language must be supported by the original written specification, the new claims were simply describing the original invention, albeit more precisely. Intel further contended that the rights to practice the original invention (as described in the original written description) were those negotiated in the cross-licensing agreement. The court agreed with Intel, in part due to California contract law specifics. The case demonstrates the differences between the scope of the written description and the claim language.

CEO INSIGHT:

Broadening reissues are a powerful tool to create negotiating leverage for business leaders who need to expand the scope of protection of a patent, but this tool is only available for two years after the patent issues.