Strategic Plan > Index to Action Papers > Delete Requirement for Physical Surrender of the Patent

Delete Requirement for Physical Surrender of the Patent

Action:

37 CFR 1.178 should be amended to eliminate the requirement for physical surrender of the original letters patent (i.e., the "ribbon copy" of the original patent) in a reissue application, and to make surrender of the original patent automatic upon the grant of the reissue patent. 

Background Information:

The reissue statute, 35 U.S.C. 251, requires the surrender of the patent as a condition for reissue.  Section 251 does not, however, require a physical surrender of the actual letters patent, nor even a statement that the patent owner surrenders the patent.  Physical surrender by submission of the letters patent (i.e., the copy of the original patent grant) is currently required by rule via § 1.178; however, such submission is only symbolic, since the patent right exists independently of the letters patent. 

It is the right to the original patent that must be surrendered upon grant of the reissue patent, rather than any physical document.  Thus, where the letters patent is not submitted during the prosecution of the reissue application because the letters patent is lost or inaccessible, there is no evidence that any stigma is attached to the resulting reissue patent by the public.  Further, there is no case law treating such a reissue patent adversely due to the failure to submit the letters patent.  In fact, there is no legal reason to retain the requirement for physical surrender of the letters patent.  On the other hand, there is much benefit for eliminating the requirement for physical surrender of the letters patent.  The requirement for physical surrender is an anachronism that provides an unnecessary drain on Office processing and storage resources.  Further, it requires the patent owner to locate and file the letters patent or provide a statement of loss, and causes a delay in the prosecution.  Thus, it would be beneficial to both the Office and the public to eliminate the requirement for physical surrender, i.e., physical submission, of the letters patent.

Additionally, to further streamline the reissue process, it would be advisable to provide by rule that the surrender of the original patent is automatic upon the grant of the reissue patent, to thereby eliminate even the need for filing a paper stating surrender of the original patent.  This would eliminate any need for submission of a surrender statement by applicant after an indication of allowance of the claims, so that the Office would not need to delay prosecution while waiting for such a surrender statement.  Note that by "automatic," it is meant that surrender of the original patent upon issuance of the reissue application would be an intrinsic result of the filing of the reissue application, requiring no action by the patent owner (after the filing of the reissue application) directed to surrender.  The mere filing of the reissue application would constitute consent of the patent owner to surrender of the original patent at the time the reissue patent is granted.

Finally, it is to be noted that there is no requirement for physical surrender, or for a surrender statement, for the other post patent proceedings in the Office of reexamination, disclaimer of some/all claims, dedication to public, term disclaimer of a patent, nor certificate of correction.  Thus, reissue practice stands alone in requirement of a physical surrender as a condition to making a change to the patent.

Options Considered:

Option # 1:

  Surrender statement:  To permit a statement of surrender to be made (by the patent owner) in the reissue application, in place of physical submission of letters patent.

Option # 2:

  Automatic surrender:  To not require even a statement of surrender to be made in the reissue application, but rather to have the issuance of the reissue patent automatically void the original patent.

Advantages of deleting the physical surrender option by way of either Option #1 or Option #2:

Office burdens obviated:  At present, the Office often must delay prosecution while waiting for the letters patent.  Often, the patent owner will not submit the patent until the claims have been stated to be allowable in order to avoid the need for a request for the return of the surrendered patent, in the event the reissue will not be granted.  Thus, the Office must issue an "extra" action, which extends the prosecution by one complete iteration.

Once the letters patent is obtained, the Office must process it and store it in the application file.  The Office then has responsibility for retaining the document; yet, the document and could become separated from the file and lost.  If reissue will not be granted and return of the letters patent document is requested, the Office must expend resources to return the document prior to the abandonment of the application.  By way of the present initiative, the Office would be spared these expenditures of resources and the responsibility for the letters patent.

Public burdens obviated:  As to the public, the current requirement for physical surrender requires the patent owner (seeking reissue) to try to obtain the letters patent copy of the patent. If the document was lost or misplaced, the patent owner must search for it.  If it is in the hands of a former employee, the patent owner must make efforts to secure it from that employee (who might not be on friendly terms with the patentee).  If the letters patent can be obtained, it must then be physically submitted without losing or destroying it.  If the letters patent cannot be obtained, the patent owner must make a statement of loss, or explain that the document cannot be obtained from the party having physical possession of it.  The present initiative would eliminate these burdens on the public.

Disadvantages of deleting the physical surrender option:

The initiative will require rule making and an investment of Office resources.

Option #1 v. Option #2:

Option 1 requires an affirmative statement by patent owner that the patent is being surrendered.  This provides explicit evidence of the acknowledgment of surrender by patent owner.  The public may be more comfortable with this than having the surrender operate automatically with the implied acknowledgment of surrender by patent owner by virtue of paying the issue fee and accepting the reissue patent.  Option 1 also retains at least some vestige of traditional surrender, for those uncomfortable with doing away with it altogether.

Option 2 does away with any possibility of a potential extra step in the event patent owner has not yet made the required surrender statement when the case is otherwise ready for issue.  It further does away with any other delay that may be incident to the required surrender statement, e.g., where the statement is not made by the entirety of the ownership interest in the patent, and such must be obtained.  Option 2 completely eliminates an entire procedure compliance that the Office will no longer need to administer.  Even further, Option 2 eliminates the need for the patent owner to make a statement withdrawing surrender in the event the reissue patent is not granted, i.e., the reissue application is abandoned.  Finally, the complete elimination of the requirement for affirmative action by patent owner puts reissue law in step with the other post patent proceedings in the Office for change of a patent, which other proceedings have no requirement for even a statement of surrender.  Thus, an inconstancy in practice would be eliminated.

USPTO Recommended Course of Action:

Delete the requirement for physical surrender, and replace it with Option 2.

While the initiative will require rule making, it would involve only a minor expenditure of Office resources, while providing a substantial benefit to both the public (which should thus be receptive to the rule change) and the Office.  The initiative would eliminate a requirement that can be burdensome, while there is no real "down side" to instituting the initiative.  As to any possible negative publicity, see the discussion of this in the "risk" section below. 

Option 2 is recommended in view of the fact that it does away with all public and Office burden of dealing with the surrender requirement.  The surrender of the original patent will be automatic upon receipt of the reissue patent that replaces it, and everyone will be legally on notice of it.  This will be no different than other post patent proceedings for changing patents which have no requirement for a statement of surrender.  The Office will benefit from putting reissue practice in step with the other Office post patent proceedings for changing patents, which other proceedings have no requirement for even a statement of surrender.

Details:

  Requires minor rule making.

Paragraph (a) of 37 CFR 1.178:

  Section 1.178(a) would be rewritten to eliminate the requirement for the reissue applicant, i.e., the patent owner, to submit the actual letters patent document to the Office as part of the reissue process.  The filing of the reissue application would constitute a consent that the original patent be deemed surrendered upon granting of the reissue patent.  The reissue applicant need not take any affirmative action beyond the mere filing of the reissue application.

Title of 37 CFR 1.178:

  The title of § 1.178 would be revised to conform to the proposed changes of paragraph (a) regarding surrender of the original patent.

See the attachment as to the title of 37 CFR 1.178, and the rewrite of § 1.178(a).

Proof of Concept (POC):

  POC is not recommended.  This proposal has received widespread approval from the user community and was not the subject of commentary suggesting that a pilot of the proposal should be done.  Therefore, the Office plans to implement this proposal under its existing rulemaking authority, which will provide the public with an additional opportunity to comment on the proposal.

Discussion of Risks

There might be those who argue that the letters patent should be given some deference.  It is, however, clear that the letters patent has no legal effect.  Note that after the issuance of the reexamination certificate or a certificate of correction, the prior version of the patent is legally replaced by the version of the patent as modified by the certificate, despite the failure to surrender the patent.  There is no reason why the reissue patent then should require the surrender, for it to replace the patent.

It might also be argued that the public may inadvertently rely on a retained letters patent of the reissued patent without realizing the patent has been reissued.  It is to be noted, however, that the letters patent is not surrendered where claims are deleted by statutory disclaimers and dedication to the public, where claims are limited in duration by terminal disclaimer, and where claims are modified in a plurality of ways by reexamination certificate.  Yet, there has been no input that the public has inadvertently relied on the retained letters patent without realizing the patent has been modified.  The result should be no different for reissue.

Estimated benefits:

  The Office will benefit from advancing the elimination of an annoying anachronism that may at times be time-consuming and burdensome.  At the same time, the Office will save itself, and the public, expenditure of resources that could better be applied elsewhere.

Attachment A

DELETE REQUIREMENT FOR PHYSICAL SURRENDER OF THE PATENT

§ 1.178 Automatic surrender of original patent; continuing duty of applicant.

(a) The filing of an application for reissue of a patent shall constitute an offer to surrender the original patent for which reissue is requested. Such surrender shall take effect at the time the reissue application issues as a reissue patent.  Until that point in time, the original patent shall remain in effect.

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