37 CFR § 1.176 — Examination of reissue. (MPEP Coverage Index) – BlueIron IP

This page consolidates MPEP guidance interpreting 37 CFR § 1.176, including 102 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

The Examination of Reissue Application requires always reviewing the original patent file wrapper to ensure compliance with examination procedures.

What this section covers

This section covers examining a reissue application by reviewing the original patent file wrapper.

Key obligations

Always review the original patent file wrapper when examining a reissue application.
Ensure all relevant prior art and amendments are considered during the examination process.

Practice notes

Maintain clear and organized records of the original patent file wrapper for easy reference during reissue examination.
Avoid overlooking important information in the original file wrapper that could affect the reissue examination.

Restriction Between Original Claims and Unclaimed Subject Matter May Be RequiredMPEP 1440Required
Subject Matter of Original Claims Must Be Constructively ElectedMPEP 1440Prohibited
Original Claims Examined Same As New ApplicationsMPEP 1440Required
Differences in Prior Art Between Reissue and Original PatentMPEP 1440Permitted
Oath/Declaration for Reissue Must Comply with Specific RequirementsMPEP 1440
Reissue Applications with Litigation Examined FirstMPEP 1440
Review Original Patent File History When Examining Reissue ApplicationMPEP 1440Recommended
Same Prior Art for Reissue as OriginalMPEP 1440Permitted
Different Prior Art for ReissueMPEP 1440
Pre-AIA Benefit Claim in ReissueMPEP 1440Permitted
Reissue Examined Under Pre-AIA Standards If Claims Supported by Earlier ApplicationMPEP 1440
Examiner Acts on Reissue Before Other ApplicationsMPEP 1441
2-Month Delay for Reissue ExaminingMPEP 1441
Public Protest Period Before Examiner ActionMPEP 1441Permitted
Protest in Reissue ApplicationsMPEP 1441
Protests Must Be Filed Early In Reissue ApplicationsMPEP 1441Recommended
Petition for Immediate Reissue Examination AllowedMPEP 1441Required
Protestors Cannot Assume Full Delay PeriodMPEP 1441Prohibited
Petition for Immediate Action on Reissue ApplicationMPEP 1441
Petition Required for Ongoing Litigation During ReissueMPEP 1441Required
Reissue Application Examined Like OriginalMPEP 1445
Reissue Application Examined Like OriginalMPEP 1445
Claims in Reissue Application Subject to Any RejectionsMPEP 1445
Claims In Reissue Not Presumed ValidMPEP 1445Recommended
Requirement for Restricting ClaimsMPEP 1450Required
Original Claims Must Be Constructively ElectedMPEP 1450Prohibited
Requirement for Restricting New Claims in Reissue ApplicationMPEP 1450
Restriction Requirement for New Claims in Reissue ApplicationMPEP 1450
Restriction Requirement Includes Species ElectionMPEP 1450
Restriction Not Required for U.S. National Stage Reissue ApplicationsMPEP 1450Recommended
Restriction Requirement for Non-Elected Claims in ReissueMPEP 1450
Examiner Should Suggest Divisional Reissue for Non-Elected InventionsMPEP 1450Recommended
Restriction and Election of Species in Reissue ApplicationMPEP 1450Recommended
Non-Elected Claims Held in AbeyanceMPEP 1450
Non-Elected Claims Examined Only in Divisional Reissue ApplicationMPEP 1450
Disclaiming Original Patent Claims Requires Examination of New Claims OnlyMPEP 1450
Newly Added Claims Treated on Merits in Reissue ApplicationMPEP 1450
Disclaiming Original Patent Claims Before Examiner’s Action Required in Reissue ApplicationMPEP 1450Required
Disclaiming Original Patent Claims After ExaminationMPEP 1450
Newly Added Claims Must Be Examined Through Divisional ReissueMPEP 1450Required
Disclaiming Patent Claims Once Filed Cannot Be WithdrawnMPEP 1450Prohibited
Disclaim of Claims Cannot Be Withdrawn After Examination BeginsMPEP 1450Prohibited
Disclaiming Original Patent Claims Not Permitted in ReissueMPEP 1450Permitted
Requirement for Disclaiming Original Patent Claims in ReissueMPEP 1450Required
Examiner May Provide Disclaim Time PeriodMPEP 1450Permitted
Canceled Claims Deemed Elected Without DisclaimerMPEP 1450Required
Claims to New Independent Inventions Will Be Withdrawn from ExaminationMPEP 1450
Non-Elected Claims Examined Only in Divisional ReissueMPEP 1450
Non-Amended Claims Require Divisional ApplicationMPEP 1450
Requirement for Filing Divisional Reissue ApplicationMPEP 1450Required
Requirement for Filing Divisional Reissue Applications Containing Non-Elected Claims Within Three MonthsMPEP 1450Recommended
Divisional Reissue Application Must Be ExaminedMPEP 1450
Suspension of First Reissue Application When Claims Are AllowedMPEP 1450
Suspension of First Reissue for Divisional ExamMPEP 1450
Requirement to Merge Claims of Suspended and Allowable Reissue ApplicationsMPEP 1450
Requirement for Merging Claims into Single ApplicationMPEP 1450
First Reissue Application Rejected If Divisional AbandonedMPEP 1450
No Reissue Patent for Unamended ErrorsMPEP 1450
Examiner Cannot Require Restriction Among Original Claims in ReissueMPEP 1450Permitted
Requirement for No Restriction Among Original Claims in ReissueMPEP 1450
Requirement for Withdrawing RestrictionMPEP 1450Required
Permitted Restriction of Multiple Inventions in Reissue ClaimsMPEP 1450Permitted
Permitted to File Divisional Reissue for Separate InventionsMPEP 1450Permitted
Requirement for Restricting Reissue ClaimsMPEP 1451
Divisional Reissue Applications for Each Invention Identified in Restriction RequirementMPEP 1451Permitted

Restriction Between Original Claims and Unclaimed Subject Matter May Be RequiredMPEP 1440Required
Original Claims Examined Same As New ApplicationsMPEP 1440Required
Petition for Immediate Reissue Examination AllowedMPEP 1441Required
Petition Required for Ongoing Litigation During ReissueMPEP 1441Required
Requirement for Restricting ClaimsMPEP 1450Required
Disclaiming Original Patent Claims Before Examiner’s Action Required in Reissue ApplicationMPEP 1450Required
Newly Added Claims Must Be Examined Through Divisional ReissueMPEP 1450Required
Requirement for Disclaiming Original Patent Claims in ReissueMPEP 1450Required
Canceled Claims Deemed Elected Without DisclaimerMPEP 1450Required
Requirement for Filing Divisional Reissue ApplicationMPEP 1450Required
Requirement for Withdrawing RestrictionMPEP 1450Required
Non-Elected Added Species Claims Must Be RejoinedMPEP 1450Required
Restriction Required for Added Design to Segregable PartMPEP 1457Required
Divisional Reissue Application Required for Non-Elected Segregable PartsMPEP 1457Required
Restriction Between Original and New Claims in ReissueMPEP 803.05Required
Same Invention Claims Must Be Examined TogetherMPEP 803.05Required

AIA Revised Prior Art Determination for ExaminationMPEP 1440
Requirement for Reexamining Pre-AIA Reissue ApplicationsMPEP 1440
AIA Does Not Apply to Pre-March 16, 2013 ApplicationsMPEP 1440
AIA Applies to Claims Filed On Or After March 16, 2013MPEP 1440
Reissue Claim Effective Date Determined by ParentMPEP 1440Permitted
2013 Application Examined Under Pre-AIA RulesMPEP 1440
Claim Must Rely on April 1, 2013 DisclosureMPEP 1440Prohibited
Reissue Application Subject to AIA ProvisionsMPEP 1440
Claims of Reissue Evaluated Like Original PatentMPEP 1440
Claims of Reissue Evaluated Like Original PatentMPEP 1440
Claims of Reissue Evaluated as Original PatentMPEP 1440
Claims of Reissue Evaluated as Original PatentMPEP 1440
Divisional Reissue Application Must Correct Patent ErrorMPEP 1450
Surrender of Original Patent Claims if First Reissue AbandonedMPEP 1450
Merger Requirement for Reissue ApplicationsMPEP 1450Permitted
First Reissue Application Requires Corrected Error Under 35 U.S.C. 251MPEP 1450Permitted
Abandonment of First Reissue Application for Untimely ResponseMPEP 1450
Original Patent Surrender When Reissue Patents IssuedMPEP 1450
Merger Requirement for First Reissue ApplicationMPEP 1450Recommended
Election of Species Between Original and Reissue ClaimsMPEP 1450
Design Reissue for Distinct PartsMPEP 1457Permitted
Proper Design Reissue for Distinct Parts Within Two YearsMPEP 1457
Examiner Should Suggest Divisional Design Reissue ApplicationMPEP 1457Recommended
Claim to Entire Article Must Be Examined Without ChangeMPEP 1457
Divisional Application Required for Segregable PartMPEP 1457
Claims Must Be Examined TogetherMPEP 803.05Prohibited
New Claims Directed to Independent Invention Must Be WithdrawnMPEP 803.05
Multiple Reissue Applications Allowed for Claim DivisionMPEP 803.05Permitted
Elected Invention Patenting Without Divisional ApplicationMPEP 803.05Permitted
Non-Elected Inventions Unrecoverable by ReissueMPEP 803.05Prohibited
Restriction Acquiescence Requires Timely Divisional ApplicationMPEP 803.05Permitted
Failure to File Timely Divisional Not Correctable by ReissueMPEP 803.05

MPEP Section	Rules
MPEP § 1440	Restriction Between Original Claims and Unclaimed Subject Matter May Be RequiredMPEP 1440Required Subject Matter of Original Claims Must Be Constructively ElectedMPEP 1440Prohibited Original Claims Examined Same As New ApplicationsMPEP 1440Required Differences in Prior Art Between Reissue and Original PatentMPEP 1440Permitted Oath/Declaration for Reissue Must Comply with Specific RequirementsMPEP 1440 Reissue Applications with Litigation Examined FirstMPEP 1440 Review Original Patent File History When Examining Reissue ApplicationMPEP 1440Recommended AIA Revised Prior Art Determination for ExaminationMPEP 1440 Requirement for Reexamining Pre-AIA Reissue ApplicationsMPEP 1440 AIA Does Not Apply to Pre-March 16, 2013 ApplicationsMPEP 1440 AIA Applies to Claims Filed On Or After March 16, 2013MPEP 1440 Same Prior Art for Reissue as OriginalMPEP 1440Permitted Different Prior Art for ReissueMPEP 1440 Reissue Claim Effective Date Determined by ParentMPEP 1440Permitted 2013 Application Examined Under Pre-AIA RulesMPEP 1440 Claim Must Rely on April 1, 2013 DisclosureMPEP 1440Prohibited Reissue Application Subject to AIA ProvisionsMPEP 1440 Pre-AIA Benefit Claim in ReissueMPEP 1440Permitted Reissue Examined Under Pre-AIA Standards If Claims Supported by Earlier ApplicationMPEP 1440 Claims of Reissue Evaluated Like Original PatentMPEP 1440 Claims of Reissue Evaluated Like Original PatentMPEP 1440 Claims of Reissue Evaluated as Original PatentMPEP 1440 Claims of Reissue Evaluated as Original PatentMPEP 1440
MPEP § 1441	Examiner Acts on Reissue Before Other ApplicationsMPEP 1441 2-Month Delay for Reissue ExaminingMPEP 1441 Public Protest Period Before Examiner ActionMPEP 1441Permitted Protest in Reissue ApplicationsMPEP 1441 Protests Must Be Filed Early In Reissue ApplicationsMPEP 1441Recommended Petition for Immediate Reissue Examination AllowedMPEP 1441Required Protestors Cannot Assume Full Delay PeriodMPEP 1441Prohibited Petition for Immediate Action on Reissue ApplicationMPEP 1441 Petition Required for Ongoing Litigation During ReissueMPEP 1441Required
MPEP § 1445	Reissue Application Examined Like OriginalMPEP 1445 Reissue Application Examined Like OriginalMPEP 1445 Claims in Reissue Application Subject to Any RejectionsMPEP 1445 Claims In Reissue Not Presumed ValidMPEP 1445Recommended
MPEP § 1450	Requirement for Restricting ClaimsMPEP 1450Required Original Claims Must Be Constructively ElectedMPEP 1450Prohibited Requirement for Restricting New Claims in Reissue ApplicationMPEP 1450 Restriction Requirement for New Claims in Reissue ApplicationMPEP 1450 Restriction Requirement Includes Species ElectionMPEP 1450 Restriction Not Required for U.S. National Stage Reissue ApplicationsMPEP 1450Recommended Restriction Requirement for Non-Elected Claims in ReissueMPEP 1450 Examiner Should Suggest Divisional Reissue for Non-Elected InventionsMPEP 1450Recommended Restriction and Election of Species in Reissue ApplicationMPEP 1450Recommended Non-Elected Claims Held in AbeyanceMPEP 1450 Non-Elected Claims Examined Only in Divisional Reissue ApplicationMPEP 1450 Disclaiming Original Patent Claims Requires Examination of New Claims OnlyMPEP 1450 Newly Added Claims Treated on Merits in Reissue ApplicationMPEP 1450 Disclaiming Original Patent Claims Before Examiner’s Action Required in Reissue ApplicationMPEP 1450Required Disclaiming Original Patent Claims After ExaminationMPEP 1450 Newly Added Claims Must Be Examined Through Divisional ReissueMPEP 1450Required Disclaiming Patent Claims Once Filed Cannot Be WithdrawnMPEP 1450Prohibited Disclaim of Claims Cannot Be Withdrawn After Examination BeginsMPEP 1450Prohibited Disclaiming Original Patent Claims Not Permitted in ReissueMPEP 1450Permitted Requirement for Disclaiming Original Patent Claims in ReissueMPEP 1450Required Examiner May Provide Disclaim Time PeriodMPEP 1450Permitted Canceled Claims Deemed Elected Without DisclaimerMPEP 1450Required Claims to New Independent Inventions Will Be Withdrawn from ExaminationMPEP 1450 Non-Elected Claims Examined Only in Divisional ReissueMPEP 1450 Non-Amended Claims Require Divisional ApplicationMPEP 1450 Requirement for Filing Divisional Reissue ApplicationMPEP 1450Required Requirement for Filing Divisional Reissue Applications Containing Non-Elected Claims Within Three MonthsMPEP 1450Recommended Divisional Reissue Application Must Be ExaminedMPEP 1450 Suspension of First Reissue Application When Claims Are AllowedMPEP 1450 Suspension of First Reissue for Divisional ExamMPEP 1450 Requirement to Merge Claims of Suspended and Allowable Reissue ApplicationsMPEP 1450 Requirement for Merging Claims into Single ApplicationMPEP 1450 Divisional Reissue Application Must Correct Patent ErrorMPEP 1450 Surrender of Original Patent Claims if First Reissue AbandonedMPEP 1450 Merger Requirement for Reissue ApplicationsMPEP 1450Permitted First Reissue Application Requires Corrected Error Under 35 U.S.C. 251MPEP 1450Permitted Abandonment of First Reissue Application for Untimely ResponseMPEP 1450 Original Patent Surrender When Reissue Patents IssuedMPEP 1450 Merger Requirement for First Reissue ApplicationMPEP 1450Recommended First Reissue Application Rejected If Divisional AbandonedMPEP 1450 No Reissue Patent for Unamended ErrorsMPEP 1450 Examiner Cannot Require Restriction Among Original Claims in ReissueMPEP 1450Permitted Requirement for No Restriction Among Original Claims in ReissueMPEP 1450 Requirement for Withdrawing RestrictionMPEP 1450Required Permitted Restriction of Multiple Inventions in Reissue ClaimsMPEP 1450Permitted Permitted to File Divisional Reissue for Separate InventionsMPEP 1450Permitted Election of Species Between Original and Reissue ClaimsMPEP 1450 Non-Elected Added Species Claims Must Be RejoinedMPEP 1450Required
MPEP § 1451	Requirement for Restricting Reissue ClaimsMPEP 1451 Divisional Reissue Applications for Each Invention Identified in Restriction RequirementMPEP 1451Permitted
MPEP § 1457	Design Reissue for Distinct PartsMPEP 1457Permitted Proper Design Reissue for Distinct Parts Within Two YearsMPEP 1457 Restriction Required for Added Design to Segregable PartMPEP 1457Required Examiner Should Suggest Divisional Design Reissue ApplicationMPEP 1457Recommended Claim to Entire Article Must Be Examined Without ChangeMPEP 1457 Divisional Reissue Application Required for Non-Elected Segregable PartsMPEP 1457Required Divisional Application Required for Segregable PartMPEP 1457
MPEP § 803.05	Restriction Between Original and New Claims in ReissueMPEP 803.05Required Claims Must Be Examined TogetherMPEP 803.05Prohibited Same Invention Claims Must Be Examined TogetherMPEP 803.05Required New Claims Directed to Independent Invention Must Be WithdrawnMPEP 803.05 Multiple Reissue Applications Allowed for Claim DivisionMPEP 803.05Permitted Elected Invention Patenting Without Divisional ApplicationMPEP 803.05Permitted Non-Elected Inventions Unrecoverable by ReissueMPEP 803.05Prohibited Restriction Acquiescence Requires Timely Divisional ApplicationMPEP 803.05Permitted Failure to File Timely Divisional Not Correctable by ReissueMPEP 803.05

Related Provisions

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

37 CFR § 1.176 — Examination of reissue. (MPEP Coverage Index) – BlueIron IP

37 CFR § 1.176 Examination of reissue.

Summary

Official MPEP § 1.176 — Examination of reissue.

1.176 Examination of reissue.

Verbatim in MPEP

Required Actions

Key Interpretations

Topics

MPEP Coverage

Related Provisions