MPEP § 2766 — MPEP § 2766
Current through: 2022-07-01

2766-Processing of Patent Term Extension Applications When Reissue Has Been Filed 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2700 

 Section 2766 
 

 
 
 
 
 
 2766 Processing of Patent Term Extension Applications
 When Reissue Has Been Filed [R-01.2024]
 

 [Editor Note: Applicable to any patent
 application filed on or after September 16, 2012. See pre-AIA 35 U.S.C.
 251 for the law otherwise applicable.] 

 
 35 U.S.C. 251 
 Reissue of defective patents. 

 
 (a) IN GENERAL.—Whenever any patent is, through error,
 deemed wholly or partly inoperative or invalid, by reason of a defective
 specification or drawing, or by reason of the patentee claiming more or less than
 he had a right to claim in the patent, the Director shall, on the surrender of
 such patent and the payment of the fee required by law, reissue the patent for the
 invention disclosed in the original patent, and in accordance with a new and
 amended application, for the unexpired part of the term of the original patent. No
 new matter shall be introduced into the application for reissue.
 

 (b) MULTIPLE REISSUED PATENTS.— The Director may issue
 several reissued patents for distinct and separate parts of the thing patented,
 upon demand of the applicant, and upon payment of the required fee for a reissue
 for each of such reissued patents.
 

 (c) APPLICABILITY OF THIS TITLE.— The provisions of this
 title relating to applications for patent shall be applicable to applications for
 reissue of a patent, except that application for reissue may be made and sworn to
 by the assignee of the entire interest if the application does not seek to enlarge
 the scope of the claims of the original patent or the application for the original
 patent was filed by the assignee of the entire interest.
 

 (d) REISSUE PATENT ENLARGING SCOPE OF CLAIMS.—No
 reissued patent shall be granted enlarging the scope of the claims of the original
 patent unless applied for within two years from the grant of the original
 patent.
 

 
 

 [Editor Note: Not applicable to any patent
 application filed on or after September 16, 2012. See 35 U.S.C. 251 
 for the law otherwise applicable.] 

 
 Pre-AIA 35 U.S.C. 251 
 Reissue of defective patents. 

 Whenever any patent is, through error without any
 deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a
 defective specification or drawing, or by reason of the patentee claiming more or less
 than he had a right to claim in the patent, the Director shall, on the surrender of such
 patent and the payment of the fee required by law, reissue the patent for the invention
 disclosed in the original patent, and in accordance with a new and amended application,
 for the unexpired part of the term of the original patent. No new matter shall be
 introduced into the application for reissue.
 

 The Director may issue several reissued patents for
 distinct and separate parts of the thing patented, upon demand of the applicant, and
 upon payment of the required fee for a reissue for each of such reissued patents.
 

 The provisions of this title relating to applications
 for patent shall be applicable to applications for reissue of a patent, except that
 application for reissue may be made and sworn to by the assignee of the entire interest
 if the application does not seek to enlarge the scope of the claims of the original
 patent.
 

 No reissued patent shall be granted enlarging the scope
 of the claims of the original patent unless applied for within two years from the grant
 of the original patent.
 

 

 
 35 U.S.C. 252 
 Effect of reissue 

 The surrender of the original patent shall take effect
 upon the issue of the reissued patent, and every reissued patent shall have the same
 effect and operation in law, on the trial of actions for causes thereafter arising, as
 if the same had been originally granted in such amended form, but in so far as the
 claims of the original and reissued patents are substantially identical, such surrender
 shall not affect any action then pending nor abate any cause of action then existing,
 and the reissued patent, to the extent that its claims are substantially identical with
 the original patent, shall constitute a continuation thereof and have effect
 continuously from the date of the original patent.
 

 A reissued patent shall not abridge or affect the right
 of any person or that person’s successors in business who, prior to the grant of a
 reissue, made, purchased, offered to sell, or used within the United States, or imported
 into the United States, anything patented by the reissued patent, to continue the use
 of, to offer to sell, or to sell to others to be used, offered for sale, or sold, the
 specific thing so made, purchased, offered for sale, used, or imported unless the
 making, using, offering for sale, or selling of such thing infringes a valid claim of
 the reissued patent which was in the original patent. The court before which such matter
 is in question may provide for the continued manufacture, use, offer for sale, or sale
 of the thing made, purchased, offered for sale, used, or imported as specified, or for
 the manufacture, use, offer for sale, or sale in the United States of which substantial
 preparation was made before the grant of the reissue, and the court may also provide for
 the continued practice of any process patented by the reissue that is practiced, or for
 the practice of which substantial preparation was made, before the grant of the reissue,
 to the extent and under such terms as the court deems equitable for the protection of
 investments made or business commenced before the grant of the reissue.
 

 

 In accordance with 35 U.S.C. 251 , a patent owner, during
 the unexpired part of the term of the original patent, may file for reissue of the patent
 for the invention disclosed in the original patent. See MPEP § 1401 . 
 

 When the filing of a reissue occurs during processing of a
 patent term extension application, the Office should receive notice of the filing of the
 reissue (see MPEP §
 2762 ), and if necessary, applicant should request stay of action
 on the application for term extension. See MPEP §
 2765 regarding a petition to request stay of action in a pending
 patent term extension application. 
 

 Should the patent for which extension has been sought be
 reissued during the processing of the application for patent term extension, the original
 patent, by operation of law, no longer exists. 
 

 When a patent is reissued, it is necessary to transfer the
 documents and correspondence regarding the application for patent term extension from the
 original patent into the reissue patent. A whole new application for patent term extension
 should not be filed since any such filing would be outside the 60-day time frame within
 which an application must be filed following product approval as delineated in
 35 U.S.C.
 156(d)(1) . Instead, a petition under 37 CFR 1.182 should
 be filed in the original patent informing the Office of the reissue patent and requesting
 that the application for term extension and all related documents be transferred to the
 reissue patent file. The petition should include any updated information that has changed
 in light of the scope of the patent claims contained in the reissued patent. The petition
 will be decided by the Office of Patent Legal Administration.
 

 With respect to calculating the amount of extension to
 which the reissued patent is entitled to receive, so long as the original patent claimed
 the approved product and the reissued patent claims the approved product, the original
 patent grant date would be used to calculate the extension to which the reissued patent
 would be entitled.
 

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 2701-Patent Term 

 2702-2709-[Reserved] 

 2710-Term Extensions or Adjustments for Delays Within the USPTO Under 35 U.S.C. 154 

 2711-2719-[Reserved] 

 2720-Applications Filed Between June 8, 1995, and May 28, 2000 

 2721-2729-[Reserved] 

 2730-Applications Filed on or After May 29, 2000; Grounds for Adjustment 

 2731-Period of Adjustment 

 2732-Reduction of Period of Adjustment of Patent Term 

 2733-Patent Term Adjustment Determination 

 2734-Application for Patent Term Adjustment; Due Care Showing 

 2735-[Reserved] 

 2736-Third-Party Papers 

 2737-2749-[Reserved] 

 2750-Patent Term Extension for Delays at other Agencies under 35 U.S.C. 156 

 2751-Eligibility Requirements 

 2752-Patent Term Extension Applicant 

 2753-Application Contents 

 2754-Filing Date 
 2754.01-Deadline for Filing an Application Under 35 U.S.C. 156(d)(1) 

 2754.02-Filing Window for an Application Under 35 U.S.C. 156(d)(5) 

 2754.03-[Removed and Reserved] 

 
 

 2755-Eligibility Determination 
 2755.01-Interim Extension of Patent Term During the Processing of the Application 

 2755.02-Interim Extension of Patent Term Before Product Approval 

 
 

 2756-Correspondence Between the USPTO and the Regulatory Agency 

 2757-Regulatory Agency Determination of the Length of the Regulatory Review Period 
 2757.01-Due Diligence Determination 

 
 

 2758-Notice of Final Determination - Calculation of Patent Term Extension 

 2759-Certificate of Extension of Patent Term 

 2760-Trade Secret, Confidential, and Protective Order Material 

 2761-Multiple Applications for Extension of Term of the Same Patent or of Different Patents for the Same Regulatory Review Period
 for a Product 

 2762-Duty of Disclosure in Patent Term Extension Proceedings 
 2762.01-Duty of Disclosure When a Terminal Disclaimer is Filed During Patent Term Extension Proceedings 

 
 

 2763-Limitation of Third-Party Participation 

 2764-Express Withdrawal of Application for Extension of Patent Term 

 2765-Petition for Stay in Processing of Patent Term Extension Application 

 2766-Processing of Patent Term Extension Applications When Reissue Has Been Filed 

 

 

 
 

 
 
 

 
 

 

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