Legal Definitions - recapture rule

The recapture rule is a principle in U.S. patent law that prevents a patent holder from regaining, through a "reissue patent," a specific claim or aspect of their invention that they intentionally gave up or narrowed during the original patent application process to secure the patent's approval.

When an inventor applies for a patent, they submit "claims" that define the precise boundaries of their invention. During the examination process, the U.S. Patent and Trademark Office (USPTO) might reject certain claims because they are too broad, lack novelty, or conflict with existing inventions (known as "prior art"). To overcome these rejections and get their patent granted, inventors often strategically amend, narrow, or even abandon certain claims. The recapture rule ensures that if a patent holder later seeks a reissue patent (which is used to correct genuine, unintentional errors in an already granted patent), they cannot use this process to recover claims they previously surrendered as a deliberate tactic to get the original patent issued. The law requires that errors corrected by a reissue patent must have been made "without deceptive intent," and intentionally abandoning a claim is considered a strategic choice, not an unintentional error.

• Example 1: Narrowing Claims to Overcome Prior Art

  Scenario: An inventor, Ms. Anya, applies for a patent on a new type of smart thermostat. Her initial claims broadly cover "any thermostat with AI-driven learning capabilities." The patent examiner rejects this broad claim, citing several existing patents for AI-driven systems in various household appliances, including some basic learning thermostats. To overcome this rejection and secure her patent, Ms. Anya amends her claims to specify "a smart thermostat featuring AI-driven learning capabilities *that optimize energy usage based on real-time grid demand data*." This narrower claim is then granted.

  Illustration: A few years later, Ms. Anya realizes that the broader claim (just "AI-driven learning capabilities") would have been more valuable, as a competitor has launched a similar thermostat with AI learning but without the grid demand optimization feature. She attempts to apply for a reissue patent to remove the "real-time grid demand data" limitation and regain her original, broader claim. Under the recapture rule, this attempt would likely fail. She intentionally narrowed her claim during the original application to overcome prior art and gain allowance of her patent; she cannot now "recapture" that abandoned broader scope through a reissue patent.

• Example 2: Strategic Abandonment of a Feature

  Scenario: Mr. Ben invents a unique medical imaging device. His initial patent application includes a claim for a device that uses both "ultrasound imaging and optical coherence tomography (OCT) capabilities." During discussions with the patent examiner, it becomes clear that combining both technologies in a single claim makes it vulnerable to prior art rejections and significantly complicates the patent process. After careful consideration and advice from his patent attorney, Mr. Ben decides to remove the OCT capability from that specific claim, focusing solely on the "ultrasound imaging" aspect to expedite the patent's approval. His patent is granted for the ultrasound-only device.

  Illustration: Years later, Mr. Ben sees a significant market opportunity for a combined ultrasound and OCT device and believes his original broader claim would have been highly valuable. He attempts to file a reissue patent to reintroduce the OCT capability into the claim he previously narrowed. The recapture rule would apply here. Mr. Ben made a conscious, strategic decision to abandon the OCT aspect from that claim to facilitate the original patent's allowance. This was not an error made without deceptive intent, but a deliberate choice. Therefore, he cannot "recapture" the OCT capability for that claim through a reissue patent.

• Example 3: Distinguishing from a Competitor's Product

  Scenario: Dr. Carla invents a new type of athletic shoe with a specialized cushioning system. Her initial patent application includes a claim for "a shoe with a multi-layered gel cushioning insert." During the examination, the patent office points out a competitor's shoe that also uses a gel cushioning insert, though it's a single-layer design. To clearly distinguish her invention and ensure her patent is granted, Dr. Carla explicitly amends her claim to specify "a shoe with a multi-layered gel cushioning insert *featuring interconnected air pockets*." Her patent is then issued with this specific claim.

  Illustration: Later, Dr. Carla discovers that many consumers are interested in simpler multi-layered gel inserts without the air pockets, and that her competitor's design is gaining market share. She tries to file a reissue patent to broaden her claim back to simply "a shoe with a multi-layered gel cushioning insert," hoping to cover designs both with and without air pockets. The recapture rule would prevent this. Dr. Carla deliberately narrowed her claim to differentiate from prior art (the competitor's product) and secure her original patent. She cannot now use a reissue patent to "recapture" the broader scope she strategically abandoned.