How are claim scope statements considered in the determination of a reexamination request?
Patent owner claim scope statements and accompanying information submitted under 37 CFR 1.501(a)(2) are not considered by the examiner when determining whether to order ex parte reexamination under 35 U.S.C. 304. The MPEP explains:
“A patent owner claim scope statement and any accompanying information submitted pursuant to 37 CFR 1.501(a)(2) will not be considered by the examiner when making the determination of whether to order ex parte reexamination under 35 U.S.C. 304.“
This is because 35 U.S.C. 301(d) specifies that such statements and information are not to be considered by the Office for any purpose other than determining the proper meaning of a patent claim in a proceeding that has already been ordered under 35 U.S.C. 304.
However, if reexamination is ordered, these statements and information will be considered during the examination stage to the fullest extent possible when determining the scope of the claims subject to reexamination.
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