The “original patent” requirement is a heightened standard compared to the separate written description requirement in that the specification must “clearly and unequivocally” disclose the particular invention claimed on reissue as a separate invention. Here, for example, a generic injector device with particular combinations of safety features was found to be a separate invention but not expressly described as such in the specification, which only made passing reference to safety features as part of a specific “jet” injector system. “[I]t is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.” Reissue claims should be more closely scrutinized and drafted for express support in the original patent specification.
Background / Facts: The reissue patent being asserted here discloses a jet injector system for injecting medicant in which a needle punctures the skin before forcefully expelling the medicant. The claims on appeal were added during a broadening reissue and cover embodiments of injection devices (not restricted to jet-injection devices) with particular combinations of safety features. By the patentee’s own admission, the reissue claims target a different invention from what was originally claimed.
Issue(s): Whether the reissue claims are invalid for failure to comply with the “original patent” requirement of 35 U.S.C. § 251.
Holding(s): Yes. “The original specification here does not adequately disclose the later-claimed safety features to meet the Industrial Chemicals standard. The specification discussed only one invention: a particular class of jet injectors. This is clear from [the numerous references to jet injectors throughout the specification]. … Although safety features were mentioned in the specification, they were never described separately from the jet injector, nor were the particular combinations of safety features claimed on reissue ever disclosed in the specification. Rather, the safety features were serially mentioned as part of the broader conversation: how to build the patented jet injection device. … Nowhere does the specification disclose, in an explicit and unequivocal manner, the particular combinations of safety features claimed on reissue, separate from the jet injection invention. This does not meet the original patent requirement under § 251.”