MPEP § 1460 — MPEP § 1460
Current through: 2022-07-01

1460-Effect of Reissue 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Patent Laws, Regulations, Policies & Procedures 

 
 Manual of Patent Examining Procedure 

 Chapter 1400 

 Section 1460 
 

 
 
 
 
 
 1460 Effect of Reissue [R-08.2017]

 
 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.
 

 

 The effect of the reissue of a patent is stated in 35 U.S.C. 252 . With
 respect to the Office treatment of the reissued patent, the reissued patent will be viewed
 as if the original patent had been originally granted in the amended form provided by the
 reissue. With respect to intervening rights resulting from the reissue of an original
 patent, the second paragraph of 35 U.S.C. 252 provides for two separate
 and distinct defenses to patent infringement under the doctrine of intervening rights:
 
 "Absolute"
 
 
 intervening rights
 are available for a party that 
 "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,"
 
 
 
 and 
 "equitable"
 
 
 intervening rights
 may be provided where 
 "substantial preparation was made
 before the grant of the reissue."
 
 
 See BIC Leisure Prods.,
 Inc., v. Windsurfing Int’l, Inc., 1 F.3d 1214, 1220, 27 USPQ2d 1671, 1676
 (Fed. Cir. 1993).
 

 Generally, if a reissue application is abandoned, the original patent
 remains in force because surrender of the patent did not occur. See McCormick
 Harvesting Mach. Co. v. C. Aultman & Co., 169 U.S. 606, 610 (1898).
 However, this may not be the case in the situation where multiple reissue applications are
 filed.
 

 In the situation where multiple reissue applications are
 filed, the original patent is surrendered when at least one reissued patent has been
 granted and there are no pending applications for reissue of the original patent.
 Pfizer Inc. v. Apotex Inc., 731 F. Supp.2d 741, 748 (N.D. Ill. 2010).
 35 U.S.C.
 252 mandates that “[t]he surrender of the original patent shall take
 effect upon the issue of the reissued patent.” After that point in time, the original
 patent ceases to exist, and no subsequent applications for its reissue can be made. See
 Peck v. Collins, 103 U.S. 660, 663-64 (1880) (surrender of a patent
 extinguishes it, and the patentee thereafter has no rights except those in the reissued
 patent). If, however, a continuation reissue application were filed prior to the issuance
 of the first reissue patent, then the surrender of the original patent would be delayed
 until the issuance (or abandonment) of the continuation reissue application. See
 Ex Parte Bayles, Commissioner’s Decision, 176 O.G. 750 (1912) (grant
 of first reissue application does not bar copending reissue application for reissue of the
 original patent). For the situation where a divisional reissue application issues first
 without the original patent claims, see MPEP § 1450 for more information.
 

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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