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Question:
How can you determine whether the original patent requirement is satisfied in a reissue application?
Answer:
Examiners should review the reissue application to determine whether the original patent requirement is satisfied, by considering if:
- (A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied;
- (B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application; and
- (C) the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features.
The determination of the original patent requirement is “an essentially factual inquiry confined to the objective intent manifested by the original patent.”
Chapter Details:
The answer to this question can be found in chapter 1400 of the MPEP. This chapter covers Correction of Patents.
The answer is from the 9th Edition, Revision 07.2022, Published February 2023. Depending on future changes to the MPEP, the question and answer may or may not be applicable in later Editions or revisions.
Section Summary:
This question and answer comes from section 1412.01 of the MPEP. The following is a brief summary of section 1412.01.
1412.01 Reissue Claims Must Be for Same General Invention
The reissue claims must be for the same invention as that disclosed as being the invention in the original patent. 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), the non-elected invention(s) cannot be recovered by filing a reissue application.