What is a surrender generating limitation (SGL) in patent reissue?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-27 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. A surrender generating limitation (SGL) is a key concept in recapture analysis for patent reissues. According to MPEP 1412.02 , an SGL is defined as: “A ‘limitation’ presented, argued, or stated to make the claims patentable over the art (in the original application) and ‘generates’ the surrender of claimed subject matter.” An SGL can be created by: Presenting new/amended claims to define the invention over prior art Arguments made by the applicant that a limitation defines the invention over prior art Identifying SGLs is crucial in determining whether impermissible recapture has occurred in a reissue application. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Element C Is a Surrender Generating Limitation MPEP 1412.02 Modification of Surrender Generating Limitation in Reissue Claims MPEP 1412.02 Required Modification of Surrender Generating Limitation Impermissible Recapture MPEP 1412.02 Required Modification of Surrender Generating Limitation Requires Material Narrowing MPEP 1412.02 Required Modification of Surrender Generating Limitation Must Not Materially Narrow Original Claims MPEP 1412.02 Required Modification of Surrender Generating Limitation Must Not Materially Narrow Original Claims MPEP 1412.02 Required Modification of Surrender Generating Limitation Must Not Materially Narrow Original Claims MPEP 1412.02 Required Surrendered Subject Matter Created by New Claims or Arguments MPEP 1412.02 Permitted Modification of Surrender Generating Limitation Not Permitted in Reissue MPEP 1412.02 Required Modification of Surrender Generating Limitation Not Entirely Eliminated Requires Analysis MPEP 1412.02 Required Other Related FAQs 5 FAQs Collapse How can a reis...