Background
During original prosecution of his patent application, McDonald added limitations to his claims in order to overcome a rejection under 35 U.S.C. § 101 for lack of patent eligibility. By narrowing the claims with these additional limitations, McDonald persuaded the examiner to allow the application, and a patent issued. Later, McDonald filed a reissue application seeking to remove those same limitations that had been added to overcome the § 101 rejection — in effect, attempting to reclaim the broader claim scope he had surrendered during prosecution.
The USPTO rejected the reissue claims under the reissue recapture doctrine. The Patent Trial and Appeal Board affirmed, and McDonald appealed to the Federal Circuit, arguing that the recapture rule should not apply when the original surrender was made to overcome a patent eligibility rejection rather than a prior art rejection.
The Court’s Holding
The Federal Circuit affirmed, holding that the recapture rule applies to surrenders made to overcome § 101 rejections, not just surrenders made in response to prior art rejections. The recapture doctrine provides that a patent owner may not use a reissue application to reclaim subject matter that was deliberately surrendered during original prosecution, regardless of the type of rejection that prompted the surrender.
The court rejected McDonald’s argument that the recapture rule should be limited to surrenders made to avoid prior art. The purpose of the recapture rule is to protect the public’s reliance interest in the scope of issued claims — and that interest is equally implicated when a patentee narrows claims to overcome a § 101 rejection as when it narrows claims to avoid prior art. The court also emphasized the public notice function of prosecution history: third parties are entitled to rely on an applicant’s deliberate amendments as defining the boundaries of the patent. Using reissue to undo those amendments — whether made to satisfy prior art or eligibility requirements — would undermine that reliance.
Key Takeaways
- The reissue recapture doctrine applies to all deliberate surrenders of claim scope during prosecution, including surrenders made to overcome patent eligibility rejections under § 101, not just surrenders to avoid prior art.
- Patent applicants who narrow claims to overcome a § 101 rejection cannot later use reissue to restore the surrendered scope — even if the legal landscape around patent eligibility has evolved since the original prosecution.
- The recapture rule reflects a broader principle: once claim scope has been deliberately given up before the USPTO, that surrender is binding on the patent owner and cannot be undone through reissue as a matter of course.
- Applicants who are concerned about narrowing their claims to overcome a § 101 rejection should explore all available options — including appeal, requesting examination under updated guidance, or filing continuation applications — rather than assuming they can recover the scope later through reissue.
Why It Matters
The McDonald decision is particularly significant in light of the ongoing fluidity in § 101 patent eligibility law. Since the Supreme Court’s Alice decision in 2014 and the subsequent development of USPTO examination guidance, many applicants found themselves narrowing claims to satisfy eligibility requirements that may have since been interpreted differently or revised. Some of those applicants turned to reissue as a vehicle to recapture the scope they had surrendered.
In re McDonald closes that door. Patent owners who narrowed claims during prosecution in response to § 101 rejections cannot use reissue to walk back those amendments. The ruling reinforces the importance of making well-considered prosecution decisions from the outset — and of seeking broader claim coverage through continuation applications filed during the original prosecution, rather than relying on reissue as a cleanup mechanism after the fact.