MPEP § 1440 — MPEP § 1440
Current through: 2022-07-01

1440-Examination of Reissue Application 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1400 

 Section 1440 
 

 
 
 
 
 
 1440 Examination of Reissue Application [R-08.2017]

 
 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 filed in the reissue application, which disclaimer cannot be withdrawn by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 provides that an original claim, if re-presented in a reissue
 application, will be fully examined in the same manner, and subject to the same rules as if
 being presented for the first time in an original non-reissue, nonprovisional application,
 except that division will not be required by the examiner. See MPEP § 1450 and
 §
 1451 . As discussed below, however, the prior art available during
 the examination of the reissue application may differ from that available during the
 examination of the patent for which reissue is requested depending on the effective filing
 date of the claims in the reissue application. In addition, the application will be
 examined with respect to compliance with 37 CFR 1.171 - 1.178 relating
 specifically to reissue applications, for example, the reissue oath or declaration will be
 carefully reviewed for compliance with 37 CFR 1.175 . See MPEP § 1444 for handling
 applications in which the oath or declaration lacks compliance with 37 CFR 1.175 . Reissue
 applications with related litigation will be acted on by the examiner before any other
 special applications, and will be acted on immediately by the examiner, subject only to a
 2-month delay after publication for examining reissue applications; see
 MPEP §
 1441 .
 

 The original patent file wrapper/file history should always be reviewed
 when examining a reissue application thereof.
 

 I. DETERMINING PATENTABILITY OVER THE PRIOR ART The Leahy-Smith America Invents Act (AIA) revised
 35 U.S.C.
 102 and thereby, the standard to determine what prior art is
 available during examination of an application. See Public Law 112-29, 125 Stat. 284
 (2011). The changes to 35 U.S.C. 102 and 103 in
 the AIA (first inventor to file provisions) do not apply to any application filed before
 March 16, 2013. Thus, any application filed before March 16, 2013, is governed by
 pre-AIA 35 U.S.C.
 102 and 103 . AIA 35 U.S.C.
 102 and 103 apply to any patent application
 that contains or contained at any time a claim to a claimed invention that has an
 effective filing date that is on or after March 16, 2013. See MPEP §§
 2159 et seq. to determine whether an application is subject to examination
 under the AIA first inventor to file provisions, and MPEP §§
 2150 et seq. for examination of applications subject to those
 provisions.
 

 The available prior art that can be applied during the
 examination of a reissue application is generally the same as that under which the
 original application was examined. In some cases, however, the reissue is subject to
 different available prior art than was the original application. 
 

 For example, a situation may arise where an application
 filed April 1, 2013, has a benefit claim to a prior application having a filing date of
 December 12, 2012, and all claims are fully supported by the 2012 application. In this
 situation, the 2013 application would be examined with respect to the prior art
 available under pre-AIA 35 U.S.C. 102 and 103 . If a reissue application is
 filed on the subsequent patent in which a claim presented must rely on the April 1, 2013
 disclosure for 35
 U.S.C. 112 support (i.e., cannot rely solely on the parent
 application), that newly presented claim has an effective filing date of April 1, 2013.
 In this situation, the ENTIRE reissue application is now subject to the prior art
 available under AIA first inventor to file provisions. See MPEP §§
 2151 - 2156 for a discussion of the prior art
 available under the first inventor to file provisions of the AIA. In addition, this
 reissue application would be subject to pre-AIA 35 U.S.C. 102(g) , because
 pre-AIA 35 U.S.C.
 102(g) applies to each claim of an application for patent, and any
 patent issued thereon, if such application or patent contains, or contained at any time:
 (1) A claim to an invention having an effective filing date as defined in
 35 U.S.C.
 100(i) that occurs before March 16, 2013; or (2) a specific
 reference under 35
 U.S.C. 120 , 121 , or 365(c) to any
 patent or application that contains, or contained at any time, such a claim. See
 MPEP §
 2159.03 .
 

 Another situation may arise in which a benefit claim to
 an application filed before March 16, 2013, is added in a reissue application based on
 an AIA patent. If all the claims ever presented in the reissue application and
 underlying patent are fully supported by the prior application filed before March 16,
 2013, then the reissue application would be examined only under pre-AIA 35 U.S.C.
 102 and 103 because the application was
 entitled to the benefit of the earlier-filed application as evidenced by appropriate
 benefit claim to the filing date of the prior-filed application. 
 

 II. EFFECTIVE
 DATE FOR CLAIMS OF REISSUE APPLICATION The claims in a reissue application are treated as if
 they were presented in the patent being reissued for purposes of evaluating
 patentability over prior art, i.e., as if they had the same effective filing date as the
 original patent. See Grant v. Raymond, 31 U.S. 218, 244 (1832). The
 rationale for such treatment is that a reissue patent replaces the original patent, and
 thus is merely continuing the patent privilege of the original patent as opposed to
 being an independent (regular) patent with its own privilege (and its own term). Grant,
 31 U.S. at 244. Accordingly, the claims of a reissue application are evaluated for
 patentability as if they had the same effective filing date as the original patent, even
 though the reissue application could not make a benefit claim under 35 U.S.C. 120 
 to the original patent.
 

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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 20:50:34