MPEP § 1406 — MPEP § 1406
Current through: 2022-07-01

1406-Citation and Consideration of References Cited in Original Patent 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 1400 

 Section 1406 
 

 
 
 
 
 
 1406 Citation and Consideration of References Cited in Original
 Patent [R-08.2012]
 

 In a reissue application, the examiner should consider all references that
 have been cited during the original prosecution of the patent, and list on a PTO-892 form
 any reference again cited/applied in the reissue application. See MPEP § 1455 . It is noted
 that a reference cited in the original patent may no longer be relevant, e.g., in view of a
 narrowing of the claim scope in the reissue application, and therefore may not need to be
 listed on the PTO-892 form.
 

 Should applicants wish to ensure that all of the
 references which were cited in the original patent are considered and cited in the reissue
 application, an information disclosure statement (IDS) in compliance with 37 CFR 1.97 and
 1.98 should be filed in the reissue application. See
 MPEP §
 609 . The requirement for a copy of each U.S. patent or U.S.
 patent application publication listed in an IDS has been eliminated, unless required by the
 Office. 37 CFR
 1.98(a)(2) requires a legible copy of:
 

 
 (A) each foreign patent;

 (B) each publication or that portion which caused it to be listed, other
 than U.S. patents and U.S. patent application publications unless required by the
 Office;
 

 (C) for each cited pending unpublished U.S. application, the application
 specification including the claims, and any drawing of the application, or that
 portion of the application which caused it to be listed including any claims directed
 to that portion; and
 

 (D) all other information or that portion which caused it to be
 listed.
 

 
 See MPEP §
 609.04(a) . The Office imposes no responsibility on a reissue
 applicant to resubmit, in a reissue application, all the references cited in the patent for
 which reissue is sought. Rather, applicant has a continuing duty under 37 CFR 1.56 to timely
 apprise the Office of any information which is material to the patentability of the claims
 under consideration in the reissue application. See MPEP § 1418 . 
 

 Where a copy of a reference other than a U.S. patent or U.S. patent
 application publication that was cited in the original patent is not available and cannot
 be obtained through any source other than the reissue applicant (who has not submitted the
 copy), the examiner will not consider that reference and therefore, will not list that
 reference on the PTO-892 form. If that reference was listed by the reissue applicant on a
 PTO/SB/08 form but a copy has not been provided, the examiner will line-through the
 reference to indicate that the reference has not been considered.
 

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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 20:49:26