In a recent precedential opinion, the U.S. Court of Appeals for the Federal Circuit clarified the original patent requirement based on Title 35 of the U.S. Code, Section 251, which applies to reissue applications. The decision, named ‘In re: Float’N’Grill LLC’, differentiates the original patent requirement from the written description requirement, further explaining what is necessary to meet the original patent requirement.
According to Title 35, Section 251, a patent owner can apply for a reissue patent if the original patent is deemed “defective”. This includes flaws in its scope, failure to disclose the “best mode” of carrying out the invention, or deficiency in the specification. The applicant must establish these defects to satisfy the original patent requirement. This ruling has now made clear the difference between this requirement and the written description requirement, which demands that patent applications describe the invention sufficiently to permit a person of ordinary skill in the art to replicate it.
This clarity in the law will enable patent applicants to more efficiently navigate the reissue application process, by giving clear guidance on how to fulfil these two separate requirements. A clear understanding of these rules will help avoid any potential rejections or costly litigation over the validity of a reissued patent.
The ruling was originally reported by Law360 on August 8, 2023 and republished by JDSupra.
The ‘In re: Float’N’Grill LLC’ case and its implications on the reissue application process show the practical importance of staying updated with the latest precedential opinions in the field of patent law. This ruling, particularly, brings transparency and predictability to an area of the law that was once fraught with uncertainty.
Patent applicants and their legal counsel in corporations and law firms worldwide will do well to familiarize themselves with this latest development and make strategic decisions based on it.