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1416 - 1400 Correction of Patents
1416 No Physical Surrender of Original Patent [R-7]
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.
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37 CFR 1.178(a) was amended, effective October 21, 2004, to eliminate the requirement for physical surrender of the original letters patent (i.e., the "ribbon copy" of the original patent) in a reissue application, and to make surrender of the original patent automatic upon the grant of the reissue patent.
Amended 37 CFR 1.178(a) applies retroactively to all pending applications. For those applications with an outstanding requirement for the physical surrender of the original letters patent, a reissue applicant must timely reply that the requirement is moot in view of the implementation of the amended rule. Such a reply will be considered a complete reply to any requirement directed toward the surrender of the original letters patent. It is to be noted that the Office will not conduct a search to withdraw Office actions where the only outstanding requirement is compliance with the physical surrender of the original letters patent.
Example 1:
An Office action issues **>before< the effective date of the amendment to 37 CFR 1.178 with only a requirement for a return of the original letters patent to the Office. A two-month period for reply is set in the Office action. Applicant fails to timely reply to the Office action, relying on the amendment to 37 CFR 1.178 as mooting the requirement for physical surrender of the original letters patent. The six-month full statutory period for reply expires. In this instance, the reissue application would be abandoned (as of the day after the last day of the two-month period set in the Office action) for failure to timely reply to the Office action, because no reply was timely filed.
Example 2:
An Office action issues **>before< the effective date of the amendment to 37 CFR 1.178 with the only requirement for a return of the original letters patent to the Office. Applicant fails to reply to the Office action within the two-month period set in the Office action, relying on the amendment to 37 CFR 1.178 as mooting the requirement for physical surrender of the original letters patent. In reviewing the reissue application in connection with a related application, the examiner notes the omission **>before< the expiration of the six-month full statutory period for reply. In this instance, the examiner may telephone the applicant, and remind the applicant of the need to file a timely reply.
Example 3:
An Office action issues **>before< the effective date of the amendment to 37 CFR 1.178 with the only requirement being a return of the original letters patent to the Office. Applicant timely replies to the Office that it should vacate/withdraw the requirement, or otherwise indicates that return of the original letters patent is now unnecessary. In this instance, a complete reply would have been filed, and the requirement would be withdrawn and the application passed to issue.
Example 4:
An Office action issues **>before< the effective date of the amendment to 37 CFR 1.178 with both (a) a requirement to return the original letters patent to the Office, and (b) a rejection of the claims under 35 U.S.C. 103. Applicant timely replies to the Office action addressing only the rejection under 35 U.S.C. 103 (but not the need for physical surrender of the original letters patent). In this instance, the reply would be accepted as complete, and the Office would withdraw the requirement for physical surrender of the original letters patent. (The requirement was proper when made, so the Office would not vacate the action in regard to submission of the original letters patent.).
Where the patentee has submitted the original letters patent in a reissue application subject to 37 CFR 1.178 as it is now amended, 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.
Example 5:
In an application filed after the effective date of the amendment to 37 CFR 1.178, applicant has mistakenly submitted the original letters patent and later seeks its return. In this instance, provided applicant timely requests the return of the original letters patent, the Office would return the patent, provided it can be readily retrieved.
Example 6:
A reissue application was pending at the time of the effective date of the amendment to 37 CFR 1.178, and an original letters patent was submitted. Applicant requests return of the original letters patent, although the application is abandoned at the time the request for return is made. In this instance, the Office would return the original letters patent if it is readily retrievable. Even where the reissue application was already abandoned at the time of the effective date of the amendment to 37 CFR 1.178, the Office would also return the original letters patent.
Example 7:
A reissue application is pending at the time of the effective date of the amendment to 37 CFR 1.178. An original letters patent was submitted, and the issue fee has been paid for the reissue application at the time the request for return of the original letters patent is made. In this instance, the Office may similarly return the original letters patent, but only if the request is accompanied by a grantable petition under 37 CFR 1.59(b).
Example 8:
A reissue application was pending at the time of the effective date of the amendment to 37 CFR 1.178. An original letters patent was submitted, and the reissue application then issued as a reissue patent. After the reissue patent issues, the request for return of the original letters patent is made. Once again, the Office may return the original letters patent, but only if the request is accompanied by a grantable petition under 37 CFR 1.59(b).
Example 9:
A reissue application issued as a reissue patent **>before< the effective date of the amendment to 37 CFR 1.178. The reissue applicant, now the patentee, requests return of the original letters patent that was submitted in the reissue application. In this instance, the Office will not return the original letters patent. The original letters patent was submitted in reply to a requirement that was in effect throughout the pendency of the reissue application.
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