Authored by: Jeremy J. Gustrowsky
In a recent decision, the Federal Circuit clarified an important rule for patent owners seeking to broaden their claims through a reissue: what matters is the actual language of the original claims, not what the inventors may have intended to claim. The case involved Miodrag Kostic and Guy Vandevelde, owners of U.S. Patent No. 8,494,950, which covers methods for buying and selling click-through website traffic. After their patent issued in 2013, the inventors filed a reissue application in 2019—well over two years later—attempting to broaden their claims by making a previously required “trial process” optional.
The U.S. Patent and Trademark Office and the Patent Trial and Appeal Board both rejected the reissue claim, finding that it improperly broadened the scope of the original patent in violation of 35 U.S.C. § 251(d), which bars broadening reissues filed more than two years after the original patent grant. The inventors argued that the reissue merely reflected their original intent, but the court disagreed, holding that the law requires comparison of the actual claim language, not subjective intent.
The Federal Circuit explained that this approach protects competitors who may have relied on the original claims and ensures clarity in the patent system. The court emphasized that if a reissue claim would cover even one process or apparatus not covered by the original claims, it is considered broader and thus barred if filed outside the two-year window. In this case, because the reissue claim allowed for a method without a trial process—unlike the original claim, which required it—the reissue was broader and therefore not allowed.
This decision serves as a reminder to patent owners: be careful and precise in your original claim drafting, and if you need to broaden your claims, act quickly within the two-year statutory period. Relying on what you “meant” to claim is not enough; the actual words in your patent are what count.