37 CFR § 1.178 — Original patent; continuing duty of (MPEP Coverage Index) – BlueIron IP

This page consolidates MPEP guidance interpreting 37 CFR § 1.178, including 54 rules 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.

Summary

Under 37 CFR 1.178, this section explains the automatic surrender of an original patent upon granting a reissue without physical submission, providing key obligations and avoiding common pitfalls.

What this section covers

Defines that the original patent is automatically surrendered upon granting a reissue.
Provides guidance on the automatic process of surrendering an original patent without physical submission.
Understands that surrender of the original patent is automatic upon granting a reissue.
Recognizes that there is no need for physical surrender of the original patent as it is automatically surrendered.

Key obligations

Understands that surrender of the original patent is automatic upon granting a reissue.
Recognizes that there is no need for physical surrender of the original patent as it is automatically surrendered.

Practice notes

Drafts to ensure awareness of the automatic surrender process and avoids mistakenly requiring physical submission.
Avoids common pitfall of requiring physical submission, which is unnecessary and could lead to delays or errors.

Disclosure of Litigation Involving PatentMPEP 1410Recommended
Duty to Call Prior Proceedings During ReissueMPEP 1410
Reissue Application Constitutes Patent SurrenderMPEP 1416Required
Original Patent Remains Effective Until ReissuedMPEP 1416Required
Automatic Surrender of Original Patent Upon Reissue GrantMPEP 1416Required
No Physical Surrender of Original Patent for ReissueMPEP 1416Required
Return of Original Letters Patent Upon RequestMPEP 1416Permitted
Petition Required After Issue Fee for Return of Letters PatentMPEP 1416
Office Cannot Return Misplaced Original Letters PatentMPEP 1416Prohibited
Disclosure of Litigation Involving PatentMPEP 1418
Reissue Applicants Must Disclose Concurrent ProceedingsMPEP 1418
Disclosure of Litigation Involving PatentMPEP 1418Permitted
Continuing Duty to Submit Information for Reissue PatentMPEP 1418
Duty of Disclosure for Reissue ApplicationsMPEP 1418
Oath/Declaration Requires Disclosure of Material InformationMPEP 1418Prohibited
Duty of Disclosure for Reissue Applications Before September 16, 2012MPEP 1418
No Duty to Resubmit References in Reissue ApplicationMPEP 1418
Applicant Must Timely Disclose Material InformationMPEP 1418
Requirement for Submitting Material Information to Patent OfficeMPEP 1418
Information Known to Be Material to Patentability Must be SubmittedMPEP 1418
Disclosure Requirement for Reissue ApplicantsMPEP 1418Required
Reissue Applicants Must File Information Disclosure Statements at FilingMPEP 1418
Reminder of Duties for Reissue ApplicationMPEP 1418Permitted
Disclosure of Litigation Involving Patent During ReissueMPEP 1442.04Recommended
Promptly Inform Office of Post-Application LitigationMPEP 1442.04Recommended
PTAB Proceedings Must Be NotifiedMPEP 1442.04Recommended
Notices of Filing and Termination of Infringement Suits RequiredMPEP 1442.04Required
Patent Litigation Notices Do Not Indicate Court OpinionMPEP 1442.04
Patent Citations Must Be ListedMPEP 1442.04
Patent Litigation Search RequiredMPEP 1442.04Recommended
Search Notes Must Be Annotated for IFW Reissue ApplicationsMPEP 1442.04
Library for Litigation Search GuidanceMPEP 1442.04Permitted
Applicant May Supply Copies of Papers Not Otherwise ObtainableMPEP 1442.04Permitted
Consider Court Holding When Filing ReissueMPEP 1442.04Recommended
Examiner May Inquire About Litigation Details for Reissue PatentMPEP 1442.04Permitted

Reissue Application Constitutes Patent SurrenderMPEP 1416Required
Original Patent Remains Effective Until ReissuedMPEP 1416Required
Automatic Surrender of Original Patent Upon Reissue GrantMPEP 1416Required
No Physical Surrender of Original Patent for ReissueMPEP 1416Required
Disclosure Requirement for Reissue ApplicantsMPEP 1418Required
Notices of Filing and Termination of Infringement Suits RequiredMPEP 1442.04Required

Effect of Reissue Patent on Recapture DoctrineMPEP 1416
Disclosure of Litigation Involving PatentMPEP 1442.04Permitted
Disclosure of Litigation Involving PatentMPEP 1442.04Recommended
Disclosure of Supporting Materials for Invalidity AllegationsMPEP 1442.04Recommended
Reissue Application Not Interested In Irrelevant Litigation DocumentsMPEP 1442.04
Litigation Status Must Be Updated In Reissue ApplicationMPEP 1442.04Recommended
Examiner Must Determine Court Adjudication on Reissue Application FilingMPEP 1442.04Recommended
Court Decisions and Litigation Papers for Reissue ExaminationMPEP 1442.04Permitted
Examiners Must Inform Applicants of Litigation DutyMPEP 1442.04Recommended
Disclosure of Litigation Involving PatentMPEP 1442.04Permitted
Examiner Must Inquire About Litigation During Reissue ExaminationMPEP 1442.04Recommended
Inquiry for Litigation Details Using Form Paragraph 14.06MPEP 1442.04Permitted
Patent Owner Must Notify Office of Concurrent ProceedingsMPEP 1449.01
Patent Owner Must Notify Office of Concurrent ProceedingsMPEP 1449.01
Notification for Reissue and Reexamination ProceedingsMPEP 1449.01Recommended
Patent Owner Must Notify Office of Concurrent Reissue and ReexaminationMPEP 1449.01Recommended
Patent Owner Must Notify Office of Concurrent ProceedingsMPEP 2285
Notification of Concurrent Proceedings Required for Reissue ApplicationMPEP 2285Recommended
Patent Owner Must Notify Office of Concurrent ProceedingsMPEP 2285Recommended

MPEP Section	Rules
MPEP § 1410	Disclosure of Litigation Involving PatentMPEP 1410Recommended Duty to Call Prior Proceedings During ReissueMPEP 1410
MPEP § 1416	Reissue Application Constitutes Patent SurrenderMPEP 1416Required Original Patent Remains Effective Until ReissuedMPEP 1416Required Automatic Surrender of Original Patent Upon Reissue GrantMPEP 1416Required No Physical Surrender of Original Patent for ReissueMPEP 1416Required Return of Original Letters Patent Upon RequestMPEP 1416Permitted Petition Required After Issue Fee for Return of Letters PatentMPEP 1416 Office Cannot Return Misplaced Original Letters PatentMPEP 1416Prohibited Effect of Reissue Patent on Recapture DoctrineMPEP 1416
MPEP § 1418	Disclosure of Litigation Involving PatentMPEP 1418 Reissue Applicants Must Disclose Concurrent ProceedingsMPEP 1418 Disclosure of Litigation Involving PatentMPEP 1418Permitted Continuing Duty to Submit Information for Reissue PatentMPEP 1418 Duty of Disclosure for Reissue ApplicationsMPEP 1418 Oath/Declaration Requires Disclosure of Material InformationMPEP 1418Prohibited Duty of Disclosure for Reissue Applications Before September 16, 2012MPEP 1418 No Duty to Resubmit References in Reissue ApplicationMPEP 1418 Applicant Must Timely Disclose Material InformationMPEP 1418 Requirement for Submitting Material Information to Patent OfficeMPEP 1418 Information Known to Be Material to Patentability Must be SubmittedMPEP 1418 Disclosure Requirement for Reissue ApplicantsMPEP 1418Required Reissue Applicants Must File Information Disclosure Statements at FilingMPEP 1418 Reminder of Duties for Reissue ApplicationMPEP 1418Permitted
MPEP § 1442.04	Disclosure of Litigation Involving Patent During ReissueMPEP 1442.04Recommended Promptly Inform Office of Post-Application LitigationMPEP 1442.04Recommended PTAB Proceedings Must Be NotifiedMPEP 1442.04Recommended Disclosure of Litigation Involving PatentMPEP 1442.04Permitted Disclosure of Litigation Involving PatentMPEP 1442.04Recommended Disclosure of Supporting Materials for Invalidity AllegationsMPEP 1442.04Recommended Reissue Application Not Interested In Irrelevant Litigation DocumentsMPEP 1442.04 Litigation Status Must Be Updated In Reissue ApplicationMPEP 1442.04Recommended Examiner Must Determine Court Adjudication on Reissue Application FilingMPEP 1442.04Recommended Court Decisions and Litigation Papers for Reissue ExaminationMPEP 1442.04Permitted Examiners Must Inform Applicants of Litigation DutyMPEP 1442.04Recommended Disclosure of Litigation Involving PatentMPEP 1442.04Permitted Notices of Filing and Termination of Infringement Suits RequiredMPEP 1442.04Required Patent Litigation Notices Do Not Indicate Court OpinionMPEP 1442.04 Patent Citations Must Be ListedMPEP 1442.04 Patent Litigation Search RequiredMPEP 1442.04Recommended Search Notes Must Be Annotated for IFW Reissue ApplicationsMPEP 1442.04 Library for Litigation Search GuidanceMPEP 1442.04Permitted Applicant May Supply Copies of Papers Not Otherwise ObtainableMPEP 1442.04Permitted Consider Court Holding When Filing ReissueMPEP 1442.04Recommended Examiner Must Inquire About Litigation During Reissue ExaminationMPEP 1442.04Recommended Inquiry for Litigation Details Using Form Paragraph 14.06MPEP 1442.04Permitted Examiner May Inquire About Litigation Details for Reissue PatentMPEP 1442.04Permitted
MPEP § 1449.01	Patent Owner Must Notify Office of Concurrent ProceedingsMPEP 1449.01 Patent Owner Must Notify Office of Concurrent ProceedingsMPEP 1449.01 Notification for Reissue and Reexamination ProceedingsMPEP 1449.01Recommended Patent Owner Must Notify Office of Concurrent Reissue and ReexaminationMPEP 1449.01Recommended
MPEP § 2285	Patent Owner Must Notify Office of Concurrent ProceedingsMPEP 2285 Notification of Concurrent Proceedings Required for Reissue ApplicationMPEP 2285Recommended Patent Owner Must Notify Office of Concurrent ProceedingsMPEP 2285Recommended

Related Provisions

Based on MPEP Last Modified: 10/30/2024 08:50:22

37 CFR § 1.178 — Original patent; continuing duty of (MPEP Coverage Index) – BlueIron IP

37 CFR § 1.178 Original patent; continuing duty of

Summary

Official MPEP § 1.178 — Original patent; continuing duty of

1.178 Original patent; continuing duty of applicant.

Verbatim in MPEP

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Key Interpretations

Topics

MPEP Coverage

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