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1416 No Physical Surrender of Original Patent

MPEP SECTION SUMMARY

Surrender of the patent for which reissue is requested is automatic upon the grant of the reissue patent; physical surrender is not required.

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1416

37 C.F.R. 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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1417 Claim for Priority Under 35 U.S.C. 119(a)-(d)

MPEP SECTION SUMMARY

A claim for priority to an earlier filing date in a foreign country under 35 U.S.C. 119(a)-(d) must be made in a reissue application, even though such a claim was previously made in the application for the original patent to be reissued. No additional certified copy of the foreign application is necessary.

A patent may be reissued for the purpose of establishing a claim to priority which was not asserted, or which was not perfected during the prosecution of the original application”).

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1417

1418 Notification of Prior/Concurrent Proceedings and Decisions Thereon, and of Information Known To Be Material to Patentability

MPEP SECTION SUMMARY

A reissue application is subject to the same duty of disclosure requirements as is any other nonprovisional application.

37 C.F.R. 1.178 Original patent; continuing duty of applicant.

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(b) In any reissue application before the Office, the applicant must call to the attention of the Office any prior or concurrent proceedings in which the patent (for which reissue is requested) is or was involved, such as interferences, reissues, reexaminations, or litigations and the results of such proceedings (see also § 1.173(a)(1)).

» 1430 Reissue Files Open to the Public and, Notice of Filing Reissue Announced in, Official Gazette