Can a patent owner amend claims before the first Office action in inter partes reexamination?

No, a patent owner cannot amend claims before the first Office action in inter partes reexamination. MPEP 2660 clearly states:

“Ordinarily, there will be no patent owner amendment to address in the first Office action of the inter partes reexamination, because 37 CFR 1.939(b) prohibits a patent owner amendment prior to first Office action.”

This prohibition ensures that the first Office action addresses the patent claims as they existed at the time of the reexamination request. The only exception to this rule is when the new reexamination is merged with an existing proceeding that already contains an amendment.

To learn more:

• patent amendment
• inter partes reexamination
• first Office action
• patent claims