Can a patent owner amend claims after a final rejection in reexamination?

While a patent owner can submit amendments after a final rejection in reexamination, they do not have an absolute right to amend claims at this stage. The MPEP states:

It should be kept in mind that a patent owner cannot, as a matter of right, amend any finally rejected claims, add new claims after a final rejection, or reinstate previously canceled claims.

For amendments filed after final rejection and prior to the appeal brief, a showing under 37 CFR 1.116(b) is required. The examiner will evaluate proposed amendments based on specific criteria, such as whether they merely cancel claims, adopt examiner’s suggestions, remove issues for appeal, or require only cursory review.

To learn more:

• amendments
• final rejection
• reexamination
• patent claims
• prosecution