Can a reexamination be ordered for claims not specifically requested in the reexamination request?

Generally, the USPTO’s determination in both the order for reexamination and the examination stage will be limited to the claims for which reexamination was specifically requested. However, the Office has the discretion to reexamine any claim for which reexamination has not been requested. The MPEP states:

“The decision to reexamine any claim for which reexamination has not been requested under 35 U.S.C. 302 lies within the sole discretion of the Office, to be exercised based on the individual facts and situation of each individual case. If the Office chooses to reexamine any claim for which reexamination has not been requested under 35 U.S.C. 302, it is permitted to do so.“

Additionally, the Office can always initiate a reexamination on its own initiative for non-requested claims under 35 U.S.C. 303(a). It’s important for requesters to apply the cited prior art to all claims they wish to have reexamined, as required by 35 U.S.C. 302 and 37 CFR 1.510(b).

To learn more:

• reexamination request
• patent claims
• USPTO discretion