MPEP § 1450 — MPEP § 1450
Current through: 2022-07-01

1450-Restriction and Election of Species Made in Reissue Application 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1400 

 Section 1450 
 

 
 
 
 
 
 1450 Restriction and Election of Species Made in Reissue
 Application [R-10.2019]
 

 
 37 CFR 1.176 Examination of reissue. 

 
 (a) A reissue application will be examined in the same manner as a
 non-reissue, non-provisional application, and will be subject to all the
 requirements of the rules related to non-reissue applications. Applications for
 reissue will be acted on by the examiner in advance of other applications.
 

 (b) Restriction between subject matter of the original patent claims
 and previously unclaimed subject matter may be required (restriction involving
 only subject matter of the original patent claims will not be required). If
 restriction is required, the subject matter of the original patent claims will be
 held to be constructively elected unless a disclaimer of all the patent claims is
 filed in the reissue application, which disclaimer cannot be withdrawn by
 applicant.
 

 
 

 37 CFR
 1.176(b) permits the examiner to require restriction in a reissue
 application between claims newly added in a reissue application and the original patent
 claims, where the added claims are directed to an invention which is separate and distinct
 from the invention(s) defined by the original patent claims. The criteria for making a
 restriction requirement in a reissue application between the newly added claims and the
 original claims are the same as that applied in a non-reissue application. See
 MPEP §§
 806 through 806.05(i) . The authority to make a
 
 "restriction"
 
 
 requirement under
 37 CFR
 1.176(b) extends to and includes the authority to make an election of
 species. For reissue applications of patents issued from a U.S. national stage application
 submitted under 35 U.S.C.
 371 , the 
 "restriction"
 
 
 requirement should not be made under the PCT unity of
 invention standard as set forth in MPEP Chapter 1800 , because a reissue
 application is filed under 35 U.S.C. 251 , and not under
 35 U.S.C.
 371 .
 

 Where a restriction requirement is made by the examiner, the original
 patent claims will be held to be constructively elected (except for the limited situation
 where a disclaimer is filed as discussed in the next paragraph). In the Office action
 containing the restriction requirement, the examiner should suggest to the applicant that a
 divisional reissue application directed to the constructively non-elected invention(s) may
 be filed. The Office action in the reissue application should also (1) provide notification
 of the restriction requirement, (2) hold the added claims to be constructively non-elected
 and withdrawn from consideration, (3) treat the original patent claims on the merits, and
 (4) inform applicant that if the original patent claims are found allowable and no error
 (other than the failure to present the non-elected claims) is being corrected in the
 reissue application under examination, and a divisional application has been filed for the
 non-elected claims, further action in the application will be suspended, pending resolution
 of the divisional application. The claims to the original patented invention will continue
 to be examined and the non-elected claims (to any added invention(s)) will be held in
 abeyance in a withdrawn status. The non-elected claims will only be examined if filed in a
 divisional reissue application.
 

 I. 
 DISCLAIMER If a disclaimer of all the original patent claims is filed in the
 reissue application containing newly added claims that are separate and distinct from
 the original patent claims, only the newly added claims will be present for examination.
 In this situation, the examiner’s Office action will treat the newly added claims in the
 reissue application on the merits. The disclaimer of all the original patent claims must
 be filed in the reissue application before the issuance of the examiner’s Office action
 treating the original patent claims on the merits. Once the examiner has issued the
 Office action providing notification of the restriction requirement and treating the
 original patent claims on the merits, it is too late to obtain an examination on the
 added claims in the reissue application by filing a disclaimer of all the original
 patent claims. If reissue applicant wishes to have the newly added claims treated on the
 merits, a divisional reissue application must be filed to obtain examination of the
 added claims. Reissue applicants should carefully note that once a disclaimer of the
 patent claims is filed, it cannot be withdrawn. It does not matter whether the reissue
 application is still pending, or whether the reissue application has been abandoned or
 issued as a reissue patent. For all these situations, 37 CFR 1.176(b) 
 states that the disclaimer cannot be withdrawn; the disclaimer will be given effect.
 Note that cancellation of all the original patent claims in the reissue application will
 not be effective as an alternative to disclaiming all the original patent claims, and
 37 CFR
 1.176(b) will not be waived to permit the same. This is because
 the patent owner can subsequently file a reissue continuation presenting the original
 patent claims.
 

 If all original patent claims are canceled prior to
 examination and no new claims are directed to invention(s) covered by the original
 patent claims, the examiner may notify the applicant that a disclaimer of the original
 patent claims is required if examination of the new claims directed to new invention(s)
 is desired in the present reissue application. The examiner may provide a time period
 for the applicant to file the disclaimer. 
 

 If applicant does not file a disclaimer, then the
 examiner shall deem the canceled original patent claims as elected by original
 presentation. In this situation, claims drawn to new independent and distinct inventions
 (e.g., added inventions) will be withdrawn from examination. The non-elected claims will
 only be examined if filed in a divisional reissue application. 
 

 II. TREATMENT
 OF MULTIPLE REISSUES If the reissue application contains only original (unamended) patent
 claims, which are found allowable, a rejection will be made under 35 U.S.C. 251 
 based on the fact that there is no "error" in the non-amended patent claims. In the
 Office action making this rejection, the examiner should advise the applicant that a
 proper response to the rejection must include (A) a request to suspend action in this
 original reissue application pending completion of examination of a divisional reissue
 application directed to the constructively non-elected invention(s), (B) the filing of
 the divisional reissue application, or a statement that one has already been filed
 (identifying it at least by application number), and (C) an argument that a complete
 response to the rejection has been made based upon the filing of the divisional reissue
 application and the request for suspension. The Office action should set a three-month
 time period for the patent owner/applicant to file divisional reissue application(s)
 containing the non-elected claims.
 

 If no divisional reissue application is filed for the non-elected
 claims in response to the Office action indicating that the original unamended (elected)
 claims are allowable, no reissue patent will issue because no error in the original
 patent is being corrected in the first reissue application. The Office will not permit
 claims to issue in a reissue application when the reissue application does not correct
 any error in the original patent.
 

 If a divisional reissue application is timely filed, the
 divisional reissue application will also be examined. Action in the first reissue
 application that contains the original patent claims will be suspended once the claims
 are determined to be allowable. Further suspensions (usually six-month periods) in the
 first reissue application will be granted, as needed, to await completion of the
 examination in a divisional reissue application containing the added claims. Once a
 divisional reissue application containing the added claims is determined to be
 allowable, the examiner will issue a requirement under 37 CFR 1.177(c) 
 for applicant to merge the claims of the suspended first reissue application with the
 allowable claims of the divisional reissue application into a single application, by
 placing all of the claims in one of the applications and expressly abandoning the other.
 The Office action making this requirement will set a two-month period for compliance
 with the requirement. 
 

 If applicant fails to timely respond to the Office
 action, or otherwise refuses to comply with the requirement made, then the divisional
 reissue application (claiming the invention which was non-elected in the now-suspended
 first reissue application) will be passed to issue alone, since the claims of the
 divisional reissue application, by themselves, do correct an error in the original
 patent. Prosecution will be reopened in the suspended first reissue application, and a
 rejection based on a lack of error under 35 U.S.C. 251 will be made. This
 rejection may be made final, because applicant is on notice of the consequences of not
 complying with the merger requirement. The first reissue application can only issue as a
 patent if a proper error under 35 U.S.C. 251 is corrected in the
 application. If applicant fails to timely respond to the Office action in the first
 reissue application, which contains the original patent claims, the first reissue
 application will be abandoned. In this situation, such abandonment will result in the
 loss of the original patent claims because surrender of the original patent will occur
 when the divisional reissue application issues as a reissue patent and the first reissue
 application is no longer pending. In other words, the original patent is surrendered
 when at least one reissue patent has been granted and there are no pending applications
 for reissue of the original patent. For this reason, the Office provides for suspensions
 of action in the first reissue application that includes the original patent claims, and
 applicants should comply with any merger requirement to ensure that the first reissue
 application to issue includes the original patent claims. See MPEP § 1460 for more
 information about surrender when there are multiple reissue applications and the effect
 of a reissue patent on other related reissue applications.
 

 If the divisional reissue application is filed but becomes abandoned,
 prosecution will be reopened in the suspended first reissue application, and a rejection
 based on a lack of error under 35 U.S.C. 251 will once again be
 made in the first reissue application. Because no error in the original patent is being
 corrected in the first reissue application, no reissue patent will issue.
 

 III. 
 RESTRICTION, INCLUDING ELECTION OF SPECIES As stated in 37 CFR 1.176(b) , the examiner
 is not permitted to require restriction among original claims of the patent 
 (i.e., among claims that were in the patent before filing the reissue application). Even
 where the original patent contains claims to different inventions which the examiner
 considers independent or distinct, and the reissue application claims the same
 inventions, a restriction requirement would be improper. If such a restriction
 requirement is made, it must be withdrawn.
 

 Restriction between multiple inventions recited in the newly
 added claims will be permitted provided the added claims are drawn to several
 separate and distinct inventions. In such a situation, the original patent claims would
 be examined in the first reissue application, and applicant is permitted to file a
 divisional reissue application for each of the several separate and distinct inventions
 identified in the examiner’s restriction requirement.
 

 A situation will sometimes arise where the examiner makes an election
 of species requirement between the species claimed in the original patent claims and a
 claimed species added in the reissue application. In such a situation, if (1) the
 non-elected claims to the added species depend from (or otherwise include all
 limitations of) a generic claim which embraces all species claims, and (2) the generic
 claim is found allowable, then the non-elected claims directed to the added species that
 was not subject to restriction in the original prosecution must be rejoined with the
 elected claims of the original patent. See MPEP § 821.04(a) . 
 

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 1400.01-Introduction 

 1401-Reissue 

 1402-Grounds for Filing 

 1403-Diligence in Filing 

 1404-Submission of Papers Where Reissue Patent Is in Litigation 

 1405-Reissue and Patent Term 

 1406-Citation and Consideration of References Cited in Original Patent 

 1407-1409-[Reserved] 

 1410-Content of Reissue Application 
 1410.01-Reissue Applicant and Inventor's Oath or Declaration 

 1410.02-Assignee Consent to the Reissue 

 
 

 1411-Form of Specification 
 1411.01-Certificate of Correction or Disclaimer in Original Patent 

 1411.02-New Matter 

 
 

 1412-Content of Claims 
 1412.01-Reissue Claims Must Be for Same General Invention 

 1412.02-Recapture of Canceled Subject Matter 

 1412.03-Broadening Reissue Claims 

 1412.04-Correction of Inventorship By Reissue 

 1412.05-Correction of Inventorship in a Broadening Reissue Application 

 
 

 1413-Drawings 

 1414-Content of Reissue Oath/Declaration 
 1414.01-Reissue Oath or Declaration in Reissue Application Filed On or After September 16, 2012 

 1414.02-Reissue Oath or Declaration in Reissue Application Filed Before September 16, 2012 

 1414.03-Supplemental Reissue Oath/Declaration 

 
 

 1415-Reissue Application and Issue Fees 
 1415.01-Maintenance Fees on the Original Patent 

 
 

 1416-No Physical Surrender of Original Patent 

 1417-Claim for Priority Under 35 U.S.C. 119(a)-(d) 

 1418-Notification of Prior/Concurrent Proceedings and Decisions Thereon, and of Information Known To Be Material to Patentability 

 1419-1429-[Reserved] 

 1430-Reissue Files Open to the Public and, Notice of Filing Reissue Announced in, Official Gazette 

 1431-1439-[Reserved] 

 1440-Examination of Reissue Application 

 1441-Two-Month Delay Period 
 1441.01-Protest and Pre-issuance Submission in Reissue Applications 

 
 

 1442-Special Status 
 1442.01-Litigation-Related or PTAB Trial-Related Reissues 

 1442.02-Concurrent Litigation or Trial Before the Patent Trial and Appeal Board 

 1442.03-Litigation Stayed 

 1442.04-Litigation Involving Patent 

 1442.05-Court Ordered Filing of Reissue Application 

 
 

 1443-Initial Examiner Review 

 1444-Review of Reissue Oath/Declaration 

 1445-Reissue Application Examined in Same Manner as Original Application 

 1446-1447-[Reserved] 

 1448-Fraud, Inequitable Conduct, or Duty of Disclosure Issues 

 1449-Protest Filed in Reissue Where Patent Is in Interference or Contested Case 
 1449.01-Concurrent Office Proceedings 

 1449.02-Interference in Reissue 

 1449.03-Reissue Application in Derivation Proceeding 

 
 

 1450-Restriction and Election of Species Made in Reissue Application 

 1451-Divisional Reissue Applications; Continuation Reissue Applications Where the Parent is Pending 

 1452-Request for Continued Examination of Reissue Application 

 1453-Amendments to Reissue Applications 

 1454-Appeal Brief 

 1455-Allowance and Issue 

 1456-Reissue Review 

 1457-Design Reissue Applications and Patents 

 1458-1459-[Reserved] 

 1460-Effect of Reissue 

 1461-1469-[Reserved] 

 1470-Public Access to Reissue Applications 

 1471-1479-[Reserved] 

 1480-Certificates of Correction — Office Mistake 
 1480.01-Expedited Issuance of Certificates of Correction - Error Attributable to Office 

 
 

 1481-Certificates of Correction - Applicant’s Mistake 
 1481.01-Correction of Assignees’ Names 

 1481.02-Correction of Named Inventor 

 1481.03-Correction of 35 U.S.C. 119 and 35 U.S.C. 120 Benefits 

 
 

 1482-1484-[Reserved] 

 1485-Handling of Request for Certificates of Correction 

 1486-1489-[Reserved] 

 1490-Disclaimers 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:50:35