"Federal Circuit Clarifies That All Related Patents Must Be Considered In Rule Against Recapture Analysis," R. Eric Gaum, Esq.

The recent case of MBO Laboratories, Inc. v. Becton, Dickinson & Company, clarifies that a patentee may violate the rule against recapture by claiming subject matter in a reissue patent that the patentee surrendered while prosecuting a related patent application, as compared to only subject matter surrendered while prosecuting the patent being corrected by reissue. Courts are to review a patent family’s entire prosecution history when applying the rule against recapture.