Can a patent owner include amendments with a reexamination request?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs 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. Yes, a patent owner can include proposed amendments with a reexamination request. According to MPEP 2221 , “ Under 37 CFR 1.510(e), a patent owner may include a proposed amendment with his or her request. ” However, it’s important to note that these amendments must comply with specific regulations: The amendments must be in accordance with 37 CFR 1.530(d) through (j) . They must follow the format and requirements outlined in MPEP § 2250 . If the amendment adds claims, excess claims fees may apply under 37 CFR 1.20(c)(3) and (c)(4) . Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Amendments Must Comply with Specific Rules in Reexaminations MPEP 2250 Amendments Must Not Enlarge Claim Scope MPEP 2250 Prohibited Patent Owner Must Include Proposed Amendments MPEP 2221 Required Amendments Must Comply With Specific Requirements MPEP 2250 Required Amendments Must Comply with Formal Requirements MPEP 2250 Required Amendments Must Not Enlarge Claim Scope MPEP 2250 Amendments Considered Before Certificate Issuance MPEP 2250 Claims Must Not Broaden Patent Scope MPEP 2250 Recommended Amended Claim Must Not Enlarge Original Scope MPEP 2250 Amendments Must Follow Initial Request Date MPEP 2250 Required Other Related FAQs 5 FAQs Collapse Are there additional fees for adding claims during reexamination? When can a patent owner propose amendments during the reexamination process? What are the format requirements for amendments in reexamination proceedings? How are proposed amendments treated in the decision on a reexamination request? How are excess claim fees handled in ex parte reexamination requests?