How are amendments handled in inter partes reexamination proceedings?

Amendments in inter partes reexamination proceedings are handled as follows:

• Amendments should be submitted in proper form
• If appropriate, amendments will be entered for the reexamination proceeding, even if they don’t have legal effect until the certificate is issued
• “New matter” amendments to the disclosure will be required to be canceled
• Claims containing new matter will be rejected under 35 U.S.C. 112
• “New matter” amendments to drawings are ordinarily not entered
• Amendments enlarging the scope of claims will be rejected under 35 U.S.C. 314(a)

For specific guidance, MPEP 2670 states: “See MPEP §§ 2234 and 2250 for manner of entering amendments. For entry of amendments in a merged inter partes reexamination proceeding (i.e., an inter partes reexamination proceeding merged with another reexamination proceeding or with a reissue application), see MPEP §§ 2686.01 and 2686.03.“

To learn more:

• amendments
• inter partes reexamination
• new matter
• claim scope
• patent law