MPEP § 1416 — No Physical Surrender of Original Patent (Annotated Rules)
§1416 No Physical Surrender of Original Patent
This page consolidates and annotates all enforceable requirements under MPEP § 1416, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
No Physical Surrender of Original Patent
This section addresses No Physical Surrender of Original Patent. Primary authority: 37 CFR 1.178, 37 CFR 1.178(a), and 37 CFR 1.59(b). Contains: 4 requirements, 1 prohibition, 1 permission, and 2 other statements.
Key Rules
Reissue Application Filing
(a) The application for reissue of a patent shall constitute an offer to surrender that patent, and the surrender shall take effect upon reissue of the patent. Until a reissue application is granted, the original patent shall remain in effect.
Pursuant to 37 CFR 1.178(a), surrender of the patent for which reissue is requested is automatic upon the grant of the reissue patent; physical surrender is not required. Prior to October 21, 2004, a reissue applicant was required to physically surrender the letters patent (i.e., the “ribbon copy” of the patent for which reissue was requested) before the reissue application would be granted. Where the patentee has submitted the original letters patent in a reissue application the Office may, in response to a timely request, return the original letters patent, when it can be readily retrieved from where it is stored, namely, the paper application file, or the artifact storage area for an Image File Wrapper (IFW) file. Any request for return of the letters patent which is submitted after the issue fee has been paid will require a petition pursuant to 37 CFR 1.59(b) to expunge from the file and return the original letters patent. Where the original letters patent cannot be readily retrieved, or in the rare instance that it has been subsequently misplaced, the Office will not be able to return the original letters patent and will not create a new one.
Pursuant to 37 CFR 1.178(a), surrender of the patent for which reissue is requested is automatic upon the grant of the reissue patent; physical surrender is not required. Prior to October 21, 2004, a reissue applicant was required to physically surrender the letters patent (i.e., the “ribbon copy” of the patent for which reissue was requested) before the reissue application would be granted. Where the patentee has submitted the original letters patent in a reissue application the Office may, in response to a timely request, return the original letters patent, when it can be readily retrieved from where it is stored, namely, the paper application file, or the artifact storage area for an Image File Wrapper (IFW) file. Any request for return of the letters patent which is submitted after the issue fee has been paid will require a petition pursuant to 37 CFR 1.59(b) to expunge from the file and return the original letters patent. Where the original letters patent cannot be readily retrieved, or in the rare instance that it has been subsequently misplaced, the Office will not be able to return the original letters patent and will not create a new one.
Recapture Doctrine
(a) The application for reissue of a patent shall constitute an offer to surrender that patent, and the surrender shall take effect upon reissue of the patent. Until a reissue application is granted, the original patent shall remain in effect.
See MPEP § 1460 for more information about surrender and the effect of a reissue patent.
Reissue Patent Practice
Pursuant to 37 CFR 1.178(a), surrender of the patent for which reissue is requested is automatic upon the grant of the reissue patent; physical surrender is not required. Prior to October 21, 2004, a reissue applicant was required to physically surrender the letters patent (i.e., the “ribbon copy” of the patent for which reissue was requested) before the reissue application would be granted. Where the patentee has submitted the original letters patent in a reissue application the Office may, in response to a timely request, return the original letters patent, when it can be readily retrieved from where it is stored, namely, the paper application file, or the artifact storage area for an Image File Wrapper (IFW) file. Any request for return of the letters patent which is submitted after the issue fee has been paid will require a petition pursuant to 37 CFR 1.59(b) to expunge from the file and return the original letters patent. Where the original letters patent cannot be readily retrieved, or in the rare instance that it has been subsequently misplaced, the Office will not be able to return the original letters patent and will not create a new one.
Pursuant to 37 CFR 1.178(a), surrender of the patent for which reissue is requested is automatic upon the grant of the reissue patent; physical surrender is not required. Prior to October 21, 2004, a reissue applicant was required to physically surrender the letters patent (i.e., the “ribbon copy” of the patent for which reissue was requested) before the reissue application would be granted. Where the patentee has submitted the original letters patent in a reissue application the Office may, in response to a timely request, return the original letters patent, when it can be readily retrieved from where it is stored, namely, the paper application file, or the artifact storage area for an Image File Wrapper (IFW) file. Any request for return of the letters patent which is submitted after the issue fee has been paid will require a petition pursuant to 37 CFR 1.59(b) to expunge from the file and return the original letters patent. Where the original letters patent cannot be readily retrieved, or in the rare instance that it has been subsequently misplaced, the Office will not be able to return the original letters patent and will not create a new one.
Reissue Fees
Pursuant to 37 CFR 1.178(a), surrender of the patent for which reissue is requested is automatic upon the grant of the reissue patent; physical surrender is not required. Prior to October 21, 2004, a reissue applicant was required to physically surrender the letters patent (i.e., the “ribbon copy” of the patent for which reissue was requested) before the reissue application would be granted. Where the patentee has submitted the original letters patent in a reissue application the Office may, in response to a timely request, return the original letters patent, when it can be readily retrieved from where it is stored, namely, the paper application file, or the artifact storage area for an Image File Wrapper (IFW) file. Any request for return of the letters patent which is submitted after the issue fee has been paid will require a petition pursuant to 37 CFR 1.59(b) to expunge from the file and return the original letters patent. Where the original letters patent cannot be readily retrieved, or in the rare instance that it has been subsequently misplaced, the Office will not be able to return the original letters patent and will not create a new one.
Citations
| Primary topic | Citation |
|---|---|
| Reissue Application Filing Reissue Fees Reissue Patent Practice | 37 CFR § 1.178(a) |
| Reissue Application Filing Reissue Fees Reissue Patent Practice | 37 CFR § 1.59(b) |
| Recapture Doctrine | MPEP § 1460 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 1416 — No Physical Surrender of Original Patent
Source: USPTO1416 No Physical Surrender of Original Patent [R-10.2019]
37 CFR 1.178 Original patent; continuing duty of applicant.
- (a) The application for reissue of a patent shall constitute an offer to surrender that patent, and the surrender shall take effect upon reissue of the patent. Until a reissue application is granted, the original patent shall remain in effect.
*****
Pursuant to 37 CFR 1.178(a), surrender of the patent for which reissue is requested is automatic upon the grant of the reissue patent; physical surrender is not required. Prior to October 21, 2004, a reissue applicant was required to physically surrender the letters patent (i.e., the “ribbon copy” of the patent for which reissue was requested) before the reissue application would be granted. Where the patentee has submitted the original letters patent in a reissue application the Office may, in response to a timely request, return the original letters patent, when it can be readily retrieved from where it is stored, namely, the paper application file, or the artifact storage area for an Image File Wrapper (IFW) file. Any request for return of the letters patent which is submitted after the issue fee has been paid will require a petition pursuant to 37 CFR 1.59(b) to expunge from the file and return the original letters patent. Where the original letters patent cannot be readily retrieved, or in the rare instance that it has been subsequently misplaced, the Office will not be able to return the original letters patent and will not create a new one.
See MPEP § 1460 for more information about surrender and the effect of a reissue patent.