37 CFR 1.176 Examination of reissue.
- (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elected unless a disclaimer of all the patent claims is filed in the reissue application, which disclaimer cannot be withdrawn by applicant.
Restriction practice relating to reissue applications is governed by 37 CFR 1.176(b) which specifies that restriction may only be required between the invention(s) of the original patent claims and previously unclaimed invention(s) set forth in new claims added in the reissue application. The claims of the original patent must not be restricted as being directed to two or more independent and distinct inventions and must be examined together. Where restriction is required by the examiner, the invention(s) set forth by the original patent claims and any newly added claims that are directed to the same invention(s) will be held as constructively elected. Any new claim that is directed to an invention that is independent and distinct from the invention(s) of the original patent claims will be withdrawn from consideration. See MPEP § 1450 for a detailed explanation of this practice. Note that applicant may initiate a division of the claims by filing more than one reissue application in accordance with 37 CFR 1.177. See MPEP § 1451 for a detailed explanation of this practice.
Where a restriction (or an election of species) requirement was made in an application and applicant permitted the elected invention to issue as a patent without filing a divisional application on the non-elected invention(s) or on non-claimed subject matter distinct from the elected invention, the non-elected invention(s) and non-claimed, distinct subject matter cannot be recovered by filing a reissue application. Once an applicant acquiesces to a restriction (or an election of species) requirement, any invention distinct from that elected and prosecuted to allowance—whether originally claimed or not—can only be pursued in a timely-filed divisional application. A reissue applicant’s failure to timely file a divisional application is not considered to be error causing a patent granted on the elected claims to be partially inoperative by reason of claiming less than the applicant had a right to claim. Accordingly, this is not correctable by reissue of the original patent under 35 U.S.C. 251. In re Watkinson, 900 F.2d 230, 14 USPQ2d 1407 (Fed. Cir. 1990); In re Weiler, 790 F.2d 1576, 229 USPQ 673 (Fed. Cir. 1986). See MPEP § 1412.01.