How are claims selected for reexamination in inter partes proceedings?

In inter partes reexamination, claims are selected for reexamination based on whether they raise a substantial new question of patentability (SNQ). The MPEP provides examples of this process:

Claims 1 – 3 of the Key patent will be reexamined. … Accordingly, claim 4 will not be reexamined. … Finally, reexamination has not been requested for claims 5 – 20 of the Key patent. Accordingly, claims 5 – 20 will not be reexamined.

Key points on claim selection:

• Only claims for which an SNQ is found will be reexamined
• Claims not raising an SNQ are excluded from reexamination
• Claims not requested for reexamination are not included
• The examiner determines which claims meet the SNQ standard

This selective approach ensures that the reexamination focuses only on claims with potential patentability issues not previously addressed.

To learn more:

• inter partes reexamination
• claim selection
• substantial new question of patentability
• SNQ