What are the limitations on amendments after the second Office action in patent reexamination?

Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-30

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

After the second Office action in patent reexamination, which is typically final, there are limitations on amendments. MPEP 2269 states:

“Any amendment after the second Office action, which will normally be final as provided for in MPEP § 2271, must ordinarily be restricted to the rejection or to the objection or requirement made.”

This means that amendments at this stage should specifically address the issues raised by the examiner in the final Office action, rather than introducing new or unrelated changes to the patent.

Topics: MPEP 2200 - Citation Of Prior Art And Ex Parte Reexamination Of Patents MPEP 2269 - Reconsideration Patent Law Patent Procedure
Tags: Rejection Non Prior Art