What happens if a proposed amendment in reexamination doesn’t comply with regulations?
If a proposed amendment in a reexamination proceeding doesn’t comply with the regulations set forth in 37 CFR 1.530(d)-(j), the patent owner will be notified and given an opportunity to correct the issue. The MPEP provides a standardized form paragraph (26.05.01) for examiners to use in such cases:
The amendment filed [1] proposes amendments to [2] that do not comply with 37 CFR 1.530(d)-(j), which sets forth the manner of making amendments in reexamination proceedings. A supplemental paper correctly proposing amendments in the present inter partes reexamination proceeding is required.
The patent owner is typically given one month or thirty days, whichever is longer, to correct the informality. Failure to timely correct the issue may result in the amendment being held as an inappropriate response, with consequences as outlined in 37 CFR 1.957(b) or (c).
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