MPEP § 1445 — Reissue Application Examined in Same Manner as Original Application (Annotated Rules)
§1445 Reissue Application Examined in Same Manner as Original Application
This page consolidates and annotates all enforceable requirements under MPEP § 1445, 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.
Reissue Application Examined in Same Manner as Original Application
This section addresses Reissue Application Examined in Same Manner as Original Application. Primary authority: 35 U.S.C. 102 and 37 CFR 1.176. Contains: 1 guidance statement and 3 other statements.
Key Rules
Reissue Patent Practice
As stated in 37 CFR 1.176, a reissue application, including all the claims therein, is subject to “be examined in the same manner as a non-reissue, non-provisional application.” Even in rare cases where, because of an amendment to the claims, the prior art available under 35 U.S.C. 102 and 103 during examination of the reissue application differs from that applied to the original application (see discussion in MPEP § 1440), the overall examination of the reissue application is conducted in the same manner as was the parent. Accordingly, the claims in a reissue application are subject to any and all rejections which the examiner deems appropriate. It does not matter whether the claims are identical to those of the patent or changed from those in the patent. It also does not matter that a rejection was not made in the prosecution of the patent, or could have been made, or was in fact made and dropped during prosecution of the patent; the prior action in the prosecution of the patent does not prevent that rejection from being made in the reissue application. Claims in a reissue application enjoy no “presumption of validity.” In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232-233 (CCPA 1973); In re Sneed, 710 F.2d 1544, 1550 n.4, 218 USPQ 385, 389 n.4 (Fed. Cir. 1983). Likewise, the fact that during prosecution of the patent the examiner considered, may have considered, or should have considered information such as, for example, a specific prior art document, does not have any bearing on, or prevent, its use as prior art during prosecution of the reissue application.
Amendments Adding New Matter
As stated in 37 CFR 1.176, a reissue application, including all the claims therein, is subject to “be examined in the same manner as a non-reissue, non-provisional application.” Even in rare cases where, because of an amendment to the claims, the prior art available under 35 U.S.C. 102 and 103 during examination of the reissue application differs from that applied to the original application (see discussion in MPEP § 1440), the overall examination of the reissue application is conducted in the same manner as was the parent. Accordingly, the claims in a reissue application are subject to any and all rejections which the examiner deems appropriate. It does not matter whether the claims are identical to those of the patent or changed from those in the patent. It also does not matter that a rejection was not made in the prosecution of the patent, or could have been made, or was in fact made and dropped during prosecution of the patent; the prior action in the prosecution of the patent does not prevent that rejection from being made in the reissue application. Claims in a reissue application enjoy no “presumption of validity.” In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232-233 (CCPA 1973); In re Sneed, 710 F.2d 1544, 1550 n.4, 218 USPQ 385, 389 n.4 (Fed. Cir. 1983). Likewise, the fact that during prosecution of the patent the examiner considered, may have considered, or should have considered information such as, for example, a specific prior art document, does not have any bearing on, or prevent, its use as prior art during prosecution of the reissue application.
Rejection of Claims
As stated in 37 CFR 1.176, a reissue application, including all the claims therein, is subject to “be examined in the same manner as a non-reissue, non-provisional application.” Even in rare cases where, because of an amendment to the claims, the prior art available under 35 U.S.C. 102 and 103 during examination of the reissue application differs from that applied to the original application (see discussion in MPEP § 1440), the overall examination of the reissue application is conducted in the same manner as was the parent. Accordingly, the claims in a reissue application are subject to any and all rejections which the examiner deems appropriate. It does not matter whether the claims are identical to those of the patent or changed from those in the patent. It also does not matter that a rejection was not made in the prosecution of the patent, or could have been made, or was in fact made and dropped during prosecution of the patent; the prior action in the prosecution of the patent does not prevent that rejection from being made in the reissue application. Claims in a reissue application enjoy no “presumption of validity.” In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232-233 (CCPA 1973); In re Sneed, 710 F.2d 1544, 1550 n.4, 218 USPQ 385, 389 n.4 (Fed. Cir. 1983). Likewise, the fact that during prosecution of the patent the examiner considered, may have considered, or should have considered information such as, for example, a specific prior art document, does not have any bearing on, or prevent, its use as prior art during prosecution of the reissue application.
Rejection on Prior Art
As stated in 37 CFR 1.176, a reissue application, including all the claims therein, is subject to “be examined in the same manner as a non-reissue, non-provisional application.” Even in rare cases where, because of an amendment to the claims, the prior art available under 35 U.S.C. 102 and 103 during examination of the reissue application differs from that applied to the original application (see discussion in MPEP § 1440), the overall examination of the reissue application is conducted in the same manner as was the parent. Accordingly, the claims in a reissue application are subject to any and all rejections which the examiner deems appropriate. It does not matter whether the claims are identical to those of the patent or changed from those in the patent. It also does not matter that a rejection was not made in the prosecution of the patent, or could have been made, or was in fact made and dropped during prosecution of the patent; the prior action in the prosecution of the patent does not prevent that rejection from being made in the reissue application. Claims in a reissue application enjoy no “presumption of validity.” In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232-233 (CCPA 1973); In re Sneed, 710 F.2d 1544, 1550 n.4, 218 USPQ 385, 389 n.4 (Fed. Cir. 1983). Likewise, the fact that during prosecution of the patent the examiner considered, may have considered, or should have considered information such as, for example, a specific prior art document, does not have any bearing on, or prevent, its use as prior art during prosecution of the reissue application.
Citations
| Primary topic | Citation |
|---|---|
| Amendments Adding New Matter Reissue Patent Practice Rejection of Claims Rejection on Prior Art | 35 U.S.C. § 102 |
| Amendments Adding New Matter Reissue Patent Practice Rejection of Claims Rejection on Prior Art | 37 CFR § 1.176 |
| Amendments Adding New Matter Reissue Patent Practice Rejection of Claims Rejection on Prior Art | MPEP § 1440 |
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 § 1445 — Reissue Application Examined in Same Manner as Original Application
Source: USPTO1445 Reissue Application Examined in Same Manner as Original Application [R-11.2013]
As stated in 37 CFR 1.176, a reissue application, including all the claims therein, is subject to “be examined in the same manner as a non-reissue, non-provisional application.” Even in rare cases where, because of an amendment to the claims, the prior art available under 35 U.S.C. 102 and 103 during examination of the reissue application differs from that applied to the original application (see discussion in MPEP § 1440), the overall examination of the reissue application is conducted in the same manner as was the parent. Accordingly, the claims in a reissue application are subject to any and all rejections which the examiner deems appropriate. It does not matter whether the claims are identical to those of the patent or changed from those in the patent. It also does not matter that a rejection was not made in the prosecution of the patent, or could have been made, or was in fact made and dropped during prosecution of the patent; the prior action in the prosecution of the patent does not prevent that rejection from being made in the reissue application. Claims in a reissue application enjoy no “presumption of validity.” In re Doyle, 482 F.2d 1385, 1392, 179 USPQ 227, 232-233 (CCPA 1973); In re Sneed, 710 F.2d 1544, 1550 n.4, 218 USPQ 385, 389 n.4 (Fed. Cir. 1983). Likewise, the fact that during prosecution of the patent the examiner considered, may have considered, or should have considered information such as, for example, a specific prior art document, does not have any bearing on, or prevent, its use as prior art during prosecution of the reissue application.