A common problem encountered during patent prosecution is a restriction requirement. According to In re Doyle, the failure to assert linking claims that readon non-elected claims is an error correctable by reissue. This paper argues that the Doyle court was correct in holding that Doyle was distinguishable from In re Orita. Allowance of genus claims that link previously non-elected claims comports with the patent statute. As the public is on notice that patent claims may be broadenedwithin two years, the Doyle holding ensures that the patentee is given the fullbreadth of protection necessary to “promote the Progress of Science and the usefulArts.” Patentees are advised to review patents issued in the last two years where thepatent application was subject to a restriction requirement and a divisional application was not filed. A reissue may be granted for genus claims that would cover some of the originally non-elected claims.
Grace C. Y. Leung, Stake Your (Linking) Claim: Assessing the Impact of In re Doyle on Patent Reissue, 2 J. Marshall Rev. Intell. Prop. L. 360 (2003)