1450 Restriction and Election of Species Made in Reissue Application [R-10.2019]

37 CFR 1.176(b) permits the examiner to require restriction in a reissue application between claims newly added in a reissue application and the original patent claims, where the added claims are directed to an invention which is separate and distinct from the invention(s) defined by the original patent claims. The criteria for making a restriction requirement in a reissue application between the newly added claims and the original claims are the same as that applied in a non-reissue application. See MPEP §§ 806 through 806.05(i). The authority to make a "restriction" requirement under 37 CFR 1.176(b) extends to and includes the authority to make an election of species. For reissue applications of patents issued from a U.S. national stage application submitted under 35 U.S.C. 371, the "restriction" requirement should not be made under the PCT unity of invention standard as set forth in MPEP Chapter 1800, because a reissue application is filed under 35 U.S.C. 251, and not under 35 U.S.C. 371.

Where a restriction requirement is made by the examiner, the original patent claims will be held to be constructively elected (except for the limited situation where a disclaimer is filed as discussed in the next paragraph). In the Office action containing the restriction requirement, the examiner should suggest to the applicant that a divisional reissue application directed to the constructively non-elected invention(s) may be filed. The Office action in the reissue application should also (1) provide notification of the restriction requirement, (2) hold the added claims to be constructively non-elected and withdrawn from consideration, (3) treat the original patent claims on the merits, and (4) inform applicant that if the original patent claims are found allowable and no error (other than the failure to present the non-elected claims) is being corrected in the reissue application under examination, and a divisional application has been filed for the non-elected claims, further action in the application will be suspended, pending resolution of the divisional application. The claims to the original patented invention will continue to be examined and the non-elected claims (to any added invention(s)) will be held in abeyance in a withdrawn status. The non-elected claims will only be examined if filed in a divisional reissue application.

I. DISCLAIMER

If a disclaimer of all the original patent claims is filed in the reissue application containing newly added claims that are separate and distinct from the original patent claims, only the newly added claims will be present for examination. In this situation, the examiner’s Office action will treat the newly added claims in the reissue application on the merits. The disclaimer of all the original patent claims must be filed in the reissue application before the issuance of the examiner’s Office action treating the original patent claims on the merits. Once the examiner has issued the Office action providing notification of the restriction requirement and treating the original patent claims on the merits, it is too late to obtain an examination on the added claims in the reissue application by filing a disclaimer of all the original patent claims. If reissue applicant wishes to have the newly added claims treated on the merits, a divisional reissue application must be filed to obtain examination of the added claims. Reissue applicants should carefully note that once a disclaimer of the patent claims is filed, it cannot be withdrawn. It does not matter whether the reissue application is still pending, or whether the reissue application has been abandoned or issued as a reissue patent. For all these situations, 37 CFR 1.176(b) states that the disclaimer cannot be withdrawn; the disclaimer will be given effect. Note that cancellation of all the original patent claims in the reissue application will not be effective as an alternative to disclaiming all the original patent claims, and 37 CFR 1.176(b) will not be waived to permit the same. This is because the patent owner can subsequently file a reissue continuation presenting the original patent claims.

If all original patent claims are canceled prior to examination and no new claims are directed to invention(s) covered by the original patent claims, the examiner may notify the applicant that a disclaimer of the original patent claims is required if examination of the new claims directed to new invention(s) is desired in the present reissue application. The examiner may provide a time period for the applicant to file the disclaimer.

If applicant does not file a disclaimer, then the examiner shall deem the canceled original patent claims as elected by original presentation. In this situation, claims drawn to new independent and distinct inventions (e.g., added inventions) will be withdrawn from examination. The non-elected claims will only be examined if filed in a divisional reissue application.

II. TREATMENT OF MULTIPLE REISSUES

If the reissue application contains only original (unamended) patent claims, which are found allowable, a rejection will be made under 35 U.S.C. 251 based on the fact that there is no "error" in the non-amended patent claims. In the Office action making this rejection, the examiner should advise the applicant that a proper response to the rejection must include (A) a request to suspend action in this original reissue application pending completion of examination of a divisional reissue application directed to the constructively non-elected invention(s), (B) the filing of the divisional reissue application, or a statement that one has already been filed (identifying it at least by application number), and (C) an argument that a complete response to the rejection has been made based upon the filing of the divisional reissue application and the request for suspension. The Office action should set a three-month time period for the patent owner/applicant to file divisional reissue application(s) containing the non-elected claims.

If no divisional reissue application is filed for the non-elected claims in response to the Office action indicating that the original unamended (elected) claims are allowable, no reissue patent will issue because no error in the original patent is being corrected in the first reissue application. The Office will not permit claims to issue in a reissue application when the reissue application does not correct any error in the original patent.

If a divisional reissue application is timely filed, the divisional reissue application will also be examined. Action in the first reissue application that contains the original patent claims will be suspended once the claims are determined to be allowable. Further suspensions (usually six-month periods) in the first reissue application will be granted, as needed, to await completion of the examination in a divisional reissue application containing the added claims. Once a divisional reissue application containing the added claims is determined to be allowable, the examiner will issue a requirement under 37 CFR 1.177(c) for applicant to merge the claims of the suspended first reissue application with the allowable claims of the divisional reissue application into a single application, by placing all of the claims in one of the applications and expressly abandoning the other. The Office action making this requirement will set a two-month period for compliance with the requirement.

If applicant fails to timely respond to the Office action, or otherwise refuses to comply with the requirement made, then the divisional reissue application (claiming the invention which was non-elected in the now-suspended first reissue application) will be passed to issue alone, since the claims of the divisional reissue application, by themselves, do correct an error in the original patent. Prosecution will be reopened in the suspended first reissue application, and a rejection based on a lack of error under 35 U.S.C. 251 will be made. This rejection may be made final, because applicant is on notice of the consequences of not complying with the merger requirement. The first reissue application can only issue as a patent if a proper error under 35 U.S.C. 251 is corrected in the application. If applicant fails to timely respond to the Office action in the first reissue application, which contains the original patent claims, the first reissue application will be abandoned. In this situation, such abandonment will result in the loss of the original patent claims because surrender of the original patent will occur when the divisional reissue application issues as a reissue patent and the first reissue application is no longer pending. In other words, the original patent is surrendered when at least one reissue patent has been granted and there are no pending applications for reissue of the original patent. For this reason, the Office provides for suspensions of action in the first reissue application that includes the original patent claims, and applicants should comply with any merger requirement to ensure that the first reissue application to issue includes the original patent claims. See MPEP § 1460 for more information about surrender when there are multiple reissue applications and the effect of a reissue patent on other related reissue applications.

If the divisional reissue application is filed but becomes abandoned, prosecution will be reopened in the suspended first reissue application, and a rejection based on a lack of error under 35 U.S.C. 251 will once again be made in the first reissue application. Because no error in the original patent is being corrected in the first reissue application, no reissue patent will issue.

III. RESTRICTION, INCLUDING ELECTION OF SPECIES

As stated in 37 CFR 1.176(b), the examiner is not permitted to require restriction among original claims of the patent (i.e., among claims that were in the patent before filing the reissue application). Even where the original patent contains claims to different inventions which the examiner considers independent or distinct, and the reissue application claims the same inventions, a restriction requirement would be improper. If such a restriction requirement is made, it must be withdrawn.

Restriction between multiple inventions recited in the newly added claims will be permitted provided the added claims are drawn to several separate and distinct inventions. In such a situation, the original patent claims would be examined in the first reissue application, and applicant is permitted to file a divisional reissue application for each of the several separate and distinct inventions identified in the examiner’s restriction requirement.

A situation will sometimes arise where the examiner makes an election of species requirement between the species claimed in the original patent claims and a claimed species added in the reissue application. In such a situation, if (1) the non-elected claims to the added species depend from (or otherwise include all limitations of) a generic claim which embraces all species claims, and (2) the generic claim is found allowable, then the non-elected claims directed to the added species that was not subject to restriction in the original prosecution must be rejoined with the elected claims of the original patent. See MPEP § 821.04(a).

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