Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-27
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.