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1416 Offer to Surrender and Return Original Patent [R-2] - 1400 Correction of Patents
1416 Offer to Surrender and Return Original Patent [R-2]
37 CFR 1.178 Original patent; continuing duty of applicant.
(a) The application for a reissue should be accompanied by either an offer to surrender the original patent, or the original patent itself, or if the original is lost or inaccessible, by a statement to that effect. The application may be accepted for examination in the absence of the original patent or the statement, but one or the other must be supplied before the application is allowed. If a reissue application is refused, the original patent, if surrendered, will be returned to applicant upon request.
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An examination on the merits of the reissue application is made even though the ** actual surrender, or a statement to the effect that the original is lost or inaccessible, has not been received. Either the original patent, or a statement as to loss or inaccessibility of the original patent, must >,however,< be received before the examiner can allow the reissue application >(i.e., pass the reissue application to issue)<.
Form paragraph 14.05.01 may be used to notify applicant that the original patent or an affidavit or declaration as to loss is required before allowance >of the reissue application<.
¶ 14.05.01 Original Patent Required Prior to Allowance
The original patent, or a statement as to loss or inaccessibility of the original patent, must be received before this reissue application can be allowed. See 37 CFR 1.178.
Examiner Note
1. This form paragraph may be used in an Office action to remind applicant of the requirement for submission of the original patent before allowance.
2. It may also be used in an Ex parte Quayle action to require such submission.
3. Do not use this form paragraph in an examiner's amendment. The original patent or a statement of loss must be filed prior to mailing of the "Notice of Allowability".
If the original patent has been surrendered in the reissue application, and applicant requests the return of the surrendered original patent upon abandonment of the reissue application, the original patent will be sent to the applicant by the Technology Center.
An applicant may request that a surrendered original patent be transferred from an abandoned reissue application to a continuation or divisional reissue application. The technical support staff making the transfer should note the transfer on the "Contents" of the abandoned application. The application number and filing date of the reissue application to which it is transferred must be included in the notation. Even where the original patent grant is submitted together with the reissue application as filed, patentee must include a copy of the printed original patent to serve as the specification of the reissue application. See 37 CFR 1.172(a) and MPEP § 1411.
Form PTO/SB/55, Reissue Patent Application Statement As To Loss Of Original Patent, may be used by applicant for filing a statement to the effect that the original patent is lost or inaccessible. >The form, or an equivalent statement (where the form is not used), may be signed by the inventors, by an officer of the assignee, by an authorized party acting on behalf of the assignee with a proper 37 CFR 3.73(b) statement, or by a registered practitioner representing the reissue applicant.<
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