C.F.R. » Title 37 » CHAPTER I—UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE › SUBCHAPTER A—GENERAL › PART 1—RULES OF PRACTICE IN PATENT CASES › Subpart B—National Processing Provisions

37 C.F.R. § 1.178

Original patent; continuing duty of applicant

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(a) The application for reissue of a patent shall constitute an offer to surrender that patent, and the surrender shall take effect upon reissue of the patent. Until a reissue application is granted, the original patent shall remain in effect.

(b) In any reissue application before the Office, the applicant must call to the attention of the Office any prior or concurrent proceedings in which the patent (for which reissue is requested) is or was involved, such as interferences or trials before the Patent Trial and Appeal Board, reissues, reexaminations, or litigations and the results of such proceedings (see also § 1.173(a)(1)).

[65 FR 54676, Sept. 8, 2000, as amended at 69 FR 56544, Sept. 21, 2004; 77 FR 46625, Aug. 6, 2012]
Notes of Decisions
Cited in 13 cases, 1980–2013 · leading case: Spectronics Corporation v. H.B. Fuller Company, Inc., and H.B. Fuller Automotive Products, Inc.
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Spectronics Corporation v. H.B. Fuller Company, Inc., and H.B. Fuller Automotive Products, Inc. (1991) cafc “Thus, argues Spec-tronics, while the reissue application is pending before the PTO, “the ’366 patent is merely in limbo, and may be resurrected at some future time, albeit in reduced form.”
Pharmacia Corp. v. Par Pharmaceutical, Inc. (2005) cafc “2d at 1564 (discussing the surrender of an original patent to initiate reissue proceedings); see also 37 C.F.R. § 1.178 (a) (2004) (requiring an offer to surrender the original patent or statement that the original is lost or inaccessible to initiate reissue proceedings).”
Pic Inc. v. Prescon Corp. (1980) ded · cites it 2× “§ 252 ; 37 C.F.R. § 1.178 . It is well-established that the surrender of a patent upon the granting of a reissue patent serves to extinguish the original patent, leaving the patentee only with those rights arising from the reissued patent.”
Bally Manufacturing Corp. v. Sidney A. Diamond, Commissioner of Patents and Trademarks (1980) ca4 · cites it 3× “2 Ordinarily, the patentee submits his previously issued patent, 37 C.F.R. § 1.178 , and files an affidavit stating the reason he believes it to be wholly or partly invalid, 37 C.”
Hewlett-Packard Co. v. Bausch & Lomb, Inc. (1988) cand · cites it 3× “Ordinarily, the patentee submits his previously issued patent, 37 CFR § 1.178 , and files an affidavit stating the reason he believes it to be wholly or partly invalid, 37 CFR § 1.”
Scripps Clinic & Research Foundation v. Genentech, Inc. (1989) cand “However, prior to issuance of the patent, the original patent must be surrendered; 37 CFR 1.178. (Ex. A 00396-97.) B. Scope of the Original Patent One prerequisite for gaining the benefits of section 251 is proof that “broadened claims sought by the reissue application are…”
Pfizer Inc. v. Apotex Inc. (2010) ilnd · cites it 2× “Section 252, which addresses the effects of reissue, contains the Patent Act’s only other reference to the surrender of an original patent through reissue.”
Eli Lilly and Co. v. TEVA PHARMACEUTICALS USA (2009) insd “” 37 C.F.R. 1.178(b). According to the Manual of Patent Examining Procedure, “[l]itigation begun after filing of the reissue application should be promptly brought to the attention of the Office.”
Kothmann Enterprises, Inc. v. Trinity Industries, Inc. (2006) txsd “The Manual of Patent Examining Procedure (MPEP) does not have the force of law, but contains instructions to examiners and provides information and interpretation.”
Dresser Industries, Inc. v. Ford Motor Co. (1981) txnd “178 of the Rules of Practice in Patent Cases, 37 C.F.R. § 1.178 , however, the original patent is not surrendered to the PTO when an application for reissue is filed.”
Hewlett-Packard Co. v. Bausch & Lomb, Inc. (1988) cand “Hence, under 37 C.F.R. § 1.178 if a reissue application is refused, “the original patent will be returned to [the] applicant upon his request.”
Disney Enterprises, Inc. v. Rea (2013) vaed “” 37 C.F.R. § 1.178 (a). If the reissue is granted, it will be valid only “for the unexpired part of the term of the original patent.”
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— 37 C.F.R. § 1.178(b) — 1 case
Eli Lilly and Co. v. TEVA PHARMACEUTICALS USA (2009) insd “” 37 C.F.R. 1.178(b). According to the Manual of Patent Examining Procedure, “[l]itigation begun after filing of the reissue application should be promptly brought to the attention of the Office.”
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