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1450    Restriction and Election of Species Made in Reissue Application

MPEP SECTION SUMMARY

This section covers restrictions and election of species in reissue applications. A restriction will be required in a reissue application if the claims newly added in a reissue application are directed to an invention that is separate and distinct from the invention defined in the original patent claims.

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37 C.F.R. 1.176 Examination of reissue.

(a) A reissue application will be examined in the same manner as a non-reissue, non-provisional application, and will be subject to all the requirements of the rules related to non-reissue applications. Applications for reissue will be acted on by the examiner in advance of other applications.
(b) Restriction between subject matter of the original patent claims and previously unclaimed subject matter may be required (restriction involving only subject matter of the original patent claims will not be required). If restriction is required, the subject matter of the original patent claims will be held to be constructively elected unless a disclaimer of all the patent claims is filed in the reissue application, which disclaimer cannot be withdrawn by applicant.

I. DISCLAIMER

If a disclaimer of all the original patent claims is filed in the reissue application containing newly added claims that are separate and distinct from the original patent claims, only the newly added claims will be present for examination.

  • In this situation, the examiner’s Office action will treat the newly added claims in the reissue application on the merits.
  • The disclaimer of all the original patent claims must be filed in the reissue application before the issuance of the examiner’s Office action treating the original patent claims on the merits. 


II. TREATMENT OF MULTIPLE REISSUES

If the reissue application containing only original (unamended) patent claims, which are found allowable, a rejection will be made under 35 U.S.C. 251 based on the fact that there is no "error" in the non-amended patent claims.

In the Office action making this rejection, the examiner should advise the applicant that a proper response to the rejection must include:

  • (A) a request to suspend action in this original reissue application pending completion of examination of a divisional reissue application directed to the constructively non-elected invention(s),
  • (B) the filing of the divisional reissue application, or a statement that one has already been filed (identifying it at least by application number), and
  • (C) an argument that a complete response to the rejection has been made based upon the filing of the divisional reissue application and the request for suspension. 


III. RESTRICTION, INCLUDING ELECTION OF SPECIES

The examiner is not permitted to require restriction among original claims of the patent (i.e., among claims that were in the patent before filing the reissue application).

  • Even where the original patent contains claims to different inventions which the examiner considers independent or distinct, and the reissue application claims the same inventions, a restriction requirement would be improper.
  • If such a restriction requirement is made, it must be withdrawn.

Restriction between multiple inventions recited in the newly added claims will be permitted provided the added claims are drawn to several separate and distinct inventions.

  • In such a situation, the original patent claims would be examined in the first reissue application, and applicant is permitted to file a divisional reissue application for each of the several separate and distinct inventions identified in the examiner’s restriction requirement.

 

» 1451 Divisional Reissue Applications; Continuation Reissue Applications Where the Parent is Pending