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thought this was a good read if things try to get twisted around

A Disclaimer May Bar Later Broadening of Claims Through Reissue: In Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 49 USPQ2d 1144 (Fed. Cir. 1998), the Federal Circuit held that a patentee may not use a reissue application to add new claims broader than the claims remaining after a disclaimer but narrower than the original claims. The patentee, Vectra, obtained a patent in 1989. Later, it became aware of previously unknown prior art that would invalidate some of the patent?s claims. In 1990, Vectra submitted to the PTO a disclaimer under 35 U.S.C. § 253, and disclaimed the broadest claims of the patent. The PTO added the disclaimer to the file wrapper of the patent, but it neither entered the disclaimer on the cover page of the file wrapper, nor published the disclaimer in the Official Gazette.

Later, in 1991, Vectra filed a reissue application and sought to add new claims to its patent. The new claims had a narrower scope than the original claims of the patent, but a broader scope than the claims remaining in the patent after the 1990 disclaimer. The reissue application, including the new claims, issued in 1994. In 1996, Vectra sued TNWK for infringement of the reissue patent. On TNWK?s motion, the district court invalidated the new claims added by reissue because they impermissibly enlarged the scope of the original patent more than two years after the date of the original issue.

On appeal to the Federal Circuit, Vectra argued that the PTO?s mishandling of the disclaimer prevented it from ?being ?recorded? within the meaning of that term in 35 U.S.C. § 253.? The Federal Circuit disagreed and pointed out that, under 37 C.F.R. § 1.321(a) and M.P.E.P. § 317.01, the recording of a disclaimer ?is not dependent upon the actions taken by the PTO.? In addition, the court noted that nothing in the patent statutes and regulations ?requires any action by the PTO for a disclaimer to be ?recorded.?? As long as the disclaimer arrived at the PTO ?in proper form and with the appropriate filing fee,? it ?was recorded on that date regardless of handling by the PTO.?

Turning to the merits of the dispute, the Federal Circuit reiterated that 35 U.S.C. § 251 prohibits broadening the scope of the claims of the original patent more than two years after its grant. Thus, the validity of the new claims added through reissue depends on whether the disclaimed claims are part of the ?original patent.? The court rejected Vectra?s argument that the phrase ?claims of the original patent? in section 251 refers to the claims of the patent when it issued, unaffected by a later disclaimer. The term ?considered as part of the original patent? in section 253 means that courts will treat the patent ?as if the disclaimed claims never existed.? When Vectra invoked section 253 and disclaimed the broadest claims of its original patent, it ?effectively eliminated those claims from the original patent.? Vectra agreed that the disclaimer effectively eliminated the claims from the ?original patent? within the meaning of that term in section 253. But Vectra contended that the construction of the phrase ?original patent? in section 253 has nothing to do with the interpretation of the same term in section 251. The Federal Circuit rejected Vectra?s assertion and concluded that the term ?original? patent has the same meaning in the two closely related statutes.

The court also rejected Vectra?s arguments on public policy grounds. The public has a right to rely on the public record of a patent to determine the scope of its claims. That reliance allows businesses and others in the society to plan their future conduct in ?as certain an environment as possible.? Once the two-year window for broadening claims of a patent through reissue closes, the pubic should be able to rely on the scope of the non-disclaimed claims. Under Vectra?s proposed approach, a patentee could improperly reclaim previously disclaimed subject matter any time during the term of the patent. Such recapture would ?render disclaimers a nullity? and prevent the public from relying on the patent?s public record. The court therefore affirmed the district court?s judgment invalidating the new claims added through reissue.

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