The patent statute allows patentees to correct errors in issued patents. If undertaken within two years of the patent’s issuance, those corrections can broaden the scope of the issued patent. But not all errors can be corrected.

The recapture rule is one limitation on broadening corrections. The reasoning is that a deliberate choice made during prosecution is not an error because it is not inadvertent or a mistake, and the public should be able to rely on a patentee's deliberate choices when evaluating the scope of the patent.

The Federal Circuit has now confirmed that the recapture rule applies to amendments made to secure a claim’s patent eligibility under 35 U.S.C. § 101.

In the case before the Federal Circuit, a patent applicant sought to overcome a § 101 rejection by adding “processor” limitations to the original claims since, at the time, it felt the presence of a hardware limitation could be used to show § 101 compliance.

But, the patentee felt the law of § 101 evolved after the patent issued, and the limitations were now no longer necessary. It thus sought to remove the exact added “processor” terms to claim a broader claim scope. The Federal Circuit was not swayed by arguments concerning the evolution of § 101 jurisprudence and adopted a more bright line that claim scope related to surrendered subject matter cannot creep back into the reissue claim, regardless of whether the amendment was made to revisit a prior art rejection or a patent eligibility rejection.