1460 Effect of Reissue [R-08.2017]
35 U.S.C. 252 Effect of reissue.
The surrender of the original patent shall take effect upon the issue of the reissued patent, and every reissued patent shall have the same effect and operation in law, on the trial of actions for causes thereafter arising, as if the same had been originally granted in such amended form, but in so far as the claims of the original and reissued patents are substantially identical, such surrender shall not affect any action then pending nor abate any cause of action then existing, and the reissued patent, to the extent that its claims are substantially identical with the original patent, shall constitute a continuation thereof and have effect continuously from the date of the original patent.
A reissued patent shall not abridge or affect the right of any person or that person’s successors in business who, prior to the grant of a reissue, made, purchased, offered to sell, or used within the United States, or imported into the United States, anything patented by the reissued patent, to continue the use of, to offer to sell, or to sell to others to be used, offered for sale, or sold, the specific thing so made, purchased, offered for sale, used, or imported unless the making, using, offering for sale, or selling of such thing infringes a valid claim of the reissued patent which was in the original patent. The court before which such matter is in question may provide for the continued manufacture, use, offer for sale, or sale of the thing made, purchased, offered for sale, used, or imported as specified, or for the manufacture, use, offer for sale, or sale in the United States of which substantial preparation was made before the grant of the reissue, and the court may also provide for the continued practice of any process patented by the reissue that is practiced, or for the practice of which substantial preparation was made, before the grant of the reissue, to the extent and under such terms as the court deems equitable for the protection of investments made or business commenced before the grant of the reissue.
The effect of the reissue of a patent is stated in 35 U.S.C. 252. With respect to the Office treatment of the reissued patent, the reissued patent will be viewed as if the original patent had been originally granted in the amended form provided by the reissue. With respect to intervening rights resulting from the reissue of an original patent, the second paragraph of 35 U.S.C. 252 provides for two separate and distinct defenses to patent infringement under the doctrine of intervening rights: “Absolute” intervening rights are available for a party that “prior to the grant of a reissue, made, purchased, offered to sell, or used within the United States, or imported into the United States, anything patented by the reissued patent,” and “equitable” intervening rights may be provided where “substantial preparation was made before the grant of the reissue.” See BIC Leisure Prods., Inc., v. Windsurfing Int’l, Inc., 1 F.3d 1214, 1220, 27 USPQ2d 1671, 1676 (Fed. Cir. 1993).
Generally, if a reissue application is abandoned, the original patent remains in force because surrender of the patent did not occur. See McCormick Harvesting Mach. Co. v. C. Aultman & Co., 169 U.S. 606, 610 (1898). However, this may not be the case in the situation where multiple reissue applications are filed.
In the situation where multiple reissue applications are filed, the original patent is surrendered when at least one reissued patent has been granted and there are no pending applications for reissue of the original patent. Pfizer Inc. v. Apotex Inc., 731 F. Supp.2d 741, 748 (N.D. Ill. 2010). 35 U.S.C. 252 mandates that “[t]he surrender of the original patent shall take effect upon the issue of the reissued patent.” After that point in time, the original patent ceases to exist, and no subsequent applications for its reissue can be made. See Peck v. Collins, 103 U.S. 660, 663-64 (1880) (surrender of a patent extinguishes it, and the patentee thereafter has no rights except those in the reissued patent). If, however, a continuation reissue application were filed prior to the issuance of the first reissue patent, then the surrender of the original patent would be delayed until the issuance (or abandonment) of the continuation reissue application. See Ex Parte Bayles, Commissioner’s Decision, 176 O.G. 750 (1912) (grant of first reissue application does not bar copending reissue application for reissue of the original patent). For the situation where a divisional reissue application issues first without the original patent claims, see MPEP § 1450 for more information.