Strong intellectual property (IP) protection is paramount in cases where knock-off products can easily be conceived of and produced, in order to establish a secure marketplace footprint. In this regard, one exemplary case is that of the Tommy Bahama backpack beach chair (FIG. 1), which is collapsible into a form that resembles a backpack for hands-free toting, and which is sold at major United States outlets such as Costco, for example. This chair recently caught our attention because not only was the backpack version of the chair patented (US 6056172), but there was also a reissue patent granted for the chair (US RE39022). This sparked our curiosity as to what aspects of the chair were deemed so desirable for protection that the long and potentially arduous process of obtaining a reissue patent was pursued.
Thus, we analyzed the prosecution history on this particular chair. As it turns out, in the original issued patent (US 6056172), the independent claim was directed to a backpack unit and included language stating “at least one support panel to support a user coupled about the back frame (15) and the seat frame (16).” For the broadening reissue application (US 10093903), a new independent claim was introduced specifying “a first panel (40) coupled to the back frame (15) and a second panel (35) coupled to the seat frame (16).” Thus, it is clear that the inventors of this particular chair deemed the language “at least one support panel coupled about the back frame and the seat frame” to be too limiting as compared to language stating “a first panel coupled to the back frame and a second panel coupled to the seat frame.” Because FIG. 1 depicted two support panels as different numbers, the inventors argued successfully that there was support in the specification and figures for the introduced claim language in the broadening reissue application.
The original patent (US 6056172) issued on May 2, 2000. The broadening reissue application (US 10093903) was initiated in March of 2002, and the date of the reissued patent (US RE39022E) is March 21, 2006. The reissue application prosecution process included new rejections to the claims that were previously allowed, resulting in an amendment to the previously allowed independent claim, in addition to amendments to the newly introduced independent claim.
Thus, there are a couple of important take-home messages from analysis of this particular case. Specifically, when drafting patent applications it is important to (as best possible) draft claims using language directed to the broadest possible concept. In this way, the process of applying for a reissue patent may be avoided, which may greatly reduce costs and time associated with prosecution. Furthermore, as evidenced in this particular example, one particular pitfall of attempting to obtain a reissue patent is that previously allowed claims may be again examined on their merit, which may result in the need to amend such claims thus resulting in a more limited protection as compared to the originally granted claims. By keeping these ideas in mind when drafting patent applications, costly and time-consuming steps associated with obtaining a reissue patent may be reduced.