37 CFR 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elected unless a disclaimer of all the patent claims is filed in the reissue application, which disclaimer cannot be withdrawn by applicant.
37 CFR 1.176 provides that an original claim, if re-presented in a reissue application, will be fully examined in the same manner, and subject to the same rules as if being presented for the first time in an original non-reissue, nonprovisional application, except that division will not be required by the examiner. See MPEP § 1450 and § 1451. As discussed below, however, the prior art available during the examination of the reissue application may differ from that available during the examination of the patent for which reissue is requested depending on the effective filing date of the claims in the reissue application. In addition, the application will be examined with respect to compliance with 37 CFR 1.171–1.178 relating specifically to reissue applications, for example, the reissue oath or declaration will be carefully reviewed for compliance with 37 CFR 1.175. See MPEP § 1444 for handling applications in which the oath or declaration lacks compliance with 37 CFR 1.175. Reissue applications with related litigation will be acted on by the examiner before any other special applications, and will be acted on immediately by the examiner, subject only to a 2-month delay after publication for examining reissue applications; see MPEP § 1441.
The original patent file wrapper/file history should always be reviewed when examining a reissue application thereof.
I. DETERMINING PATENTABILITY OVER THE PRIOR ART
The Leahy-Smith America Invents Act (AIA) revised 35 U.S.C. 102 and thereby, the standard to determine what prior art is available during examination of an application. See Public Law 112-29, 125 Stat. 284 (2011). The changes to 35 U.S.C. 102 and 103 in the AIA (first inventor to file provisions) do not apply to any application filed before March 16, 2013. Thus, any application filed before March 16, 2013, is governed by pre-AIA 35 U.S.C. 102 and 103. AIA 35 U.S.C. 102 and 103 apply to any patent application that contains or contained at any time a claim to a claimed invention that has an effective filing date that is on or after March 16, 2013. See MPEP §§ 2159et seq. to determine whether an application is subject to examination under the AIA first inventor to file provisions, and MPEP §§ 2150et seq. for examination of applications subject to those provisions.
The available prior art that can be applied during the examination of a reissue application is generally the same as that under which the original application was examined. In some cases, however, the reissue is subject to different available prior art than was the original application.
For example, a situation may arise where an application filed April 1, 2013, has a benefit claim to a prior application having a filing date of December 12, 2012, and all claims are fully supported by the 2012 application. In this situation, the 2013 application would be examined with respect to the prior art available under pre-AIA 35 U.S.C. 102 and 103. If a reissue application is filed on the subsequent patent in which a claim presented must rely on the April 1, 2013 disclosure for 35 U.S.C. 112 support (i.e., cannot rely solely on the parent application), that newly presented claim has an effective filing date of April 1, 2013. In this situation, the ENTIRE reissue application is now subject to the prior art available under AIA first inventor to file provisions. See MPEP §§ 2151–2156 for a discussion of the prior art available under the first inventor to file provisions of the AIA. In addition, this reissue application would be subject to pre-AIA 35 U.S.C. 102(g), because pre-AIA 35 U.S.C. 102(g) applies to each claim of an application for patent, and any patent issued thereon, if such application or patent contains, or contained at any time: (1) A claim to an invention having an effective filing date as defined in 35 U.S.C. 100(i) that occurs before March 16, 2013; or (2) a specific reference under 35 U.S.C. 120, 121, or 365(c) to any patent or application that contains, or contained at any time, such a claim. See MPEP § 2159.03.
Another situation may arise in which a benefit claim to an application filed before March 16, 2013, is added in a reissue application based on an AIA patent. If all the claims ever presented in the reissue application and underlying patent are fully supported by the prior application filed before March 16, 2013, then the reissue application would be examined only under pre-AIA 35 U.S.C. 102 and 103 because the application was entitled to the benefit of the earlier-filed application as evidenced by appropriate benefit claim to the filing date of the prior-filed application.
II. EFFECTIVE DATE FOR CLAIMS OF REISSUE APPLICATION
The claims in a reissue application are treated as if they were presented in the patent being reissued for purposes of evaluating patentability over prior art, i.e., as if they had the same effective filing date as the original patent. See Grant v. Raymond, 31 U.S. 218, 244 (1832). The rationale for such treatment is that a reissue patent replaces the original patent, and thus is merely continuing the patent privilege of the original patent as opposed to being an independent (regular) patent with its own privilege (and its own term). Grant, 31 U.S. at 244. Accordingly, the claims of a reissue application are evaluated for patentability as if they had the same effective filing date as the original patent, even though the reissue application could not make a benefit claim under 35 U.S.C. 120 to the original patent.