What are the requirements for amending claims in a reexamination proceeding?

Amending claims in a reexamination proceeding must follow specific guidelines as outlined in 37 CFR 1.530(d)(2):

• The amendment must include the entire text of each claim being changed.
• The entire text of any new claims being added must be provided.
• For changed claims, a parenthetical expression (e.g., “amended,” “twice amended”) should follow the claim number.
• Markings must show the changes: underlining for additions and brackets for deletions.
• Claims can be canceled by a statement without presenting the text of the claim.

The MPEP states: An amendment paper must include the entire text of each patent claim which is being proposed to be changed by such amendment paper and of each new claim being proposed to be added by such amendment paper.

It’s crucial to note that amendments must not enlarge the scope of a claim or introduce new matter, as this could lead to rejection under 35 U.S.C. 314(a).

To learn more:

• claim amendments
• reexamination
• patent claims
• MPEP 2666.01