35 U.S.C. § 252 — Effect of reissue (MPEP Coverage Index) – BlueIron IP
35 U.S.C. § 252 Effect of reissue
This page consolidates MPEP guidance interpreting 35 U.S.C. § 252, including 33 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
This section discusses how a reissued patent affects the original patent by surrendering it upon issuance and ensuring every reissued patent has the same effect in legal proceedings.
What this section covers
- Describes how a reissued patent affects the original patent.
Key obligations
- Surrender of the original patent takes effect upon issuance of the reissued patent.
- Every reissued patent has the same effect and operation in law as the original patent.
Practice notes
- Ensure that any claims in the reissued patent do not broaden beyond the original patent.
- Avoid attempting to recapture prior art through a broadening reissue, as it may not be permissible.
Official MPEP § 252 — Effect of reissue
Source: USPTOLast Modified: 10/30/2024 08:50:22
35 U.S.C. 252 Effect of reissue.
The surrender of the original patent shall take effect upon the issue of the reissued patent, and every reissued patent shall have the same effect and operation in law, on the trial of actions for causes thereafter arising, as if the same had been originally granted in such amended form, but in so far as the claims of the original and reissued patents are substantially identical, such surrender shall not affect any action then pending nor abate any cause of action then existing, and the reissued patent, to the extent that its claims are substantially identical with the original patent, shall constitute a continuation thereof and have effect continuously from the date of the original patent.
A reissued patent shall not abridge or affect the right of any person or that person’s successors in business who, prior to the grant of a reissue, made, purchased, offered to sell, or used within the United States, or imported into the United States, anything patented by the reissued patent, to continue the use of, to offer to sell, or to sell to others to be used, offered for sale, or sold, the specific thing so made, purchased, offered for sale, used, or imported unless the making, using, offering for sale, or selling of such thing infringes a valid claim of the reissued patent which was in the original patent. The court before which such matter is in question may provide for the continued manufacture, use, offer for sale, or sale of the thing made, purchased, offered for sale, used, or imported as specified, or for the manufacture, use, offer for sale, or sale in the United States of which substantial preparation was made before the grant of the reissue, and the court may also provide for the continued practice of any process patented by the reissue that is practiced, or for the practice of which substantial preparation was made, before the grant of the reissue, to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced before the grant of the reissue.
(Amended Dec. 8, 1994, Public Law 103-465, sec. 533(b)(2), 108 Stat. 4989; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-566 (S. 1948 sec. 4507(8)).)
- Ex Parte Reexamination
- Reexamination Conclusion
- Patent Term
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- Reissue Concurrent Proceedings
- Reissue Issuance
| MPEP Section | Rules |
|---|---|
| MPEP § 1460 | |
| MPEP § 2258 | |
| MPEP § 2293 | |
| MPEP § 2504 | |
| MPEP § 2766 |