How are proposed amendments treated in the decision on a reexamination request?

When a patent owner includes proposed amendments with a reexamination request, the decision on the request is made based on the original patent claims, not the proposed amendments. MPEP 2221 states:

“The request should be decided on the wording of the patent claims in effect at that time (without any proposed amendments). The decision on the request will be made on the basis of the patent claims as though the proposed amendment had not been presented.”

However, if the reexamination request is granted, the subsequent examination process will consider the amended claims:

“However, if the request for reexamination is granted, all subsequent reexamination prosecution and examination should be on the basis of the claims as amended.”

To learn more:

• reexamination request
• proposed amendments
• patent claims
• examination process