MPEP § 2221 — Amendments Included in Request Filed under 35 U.S.C. 302 by Patent Owner (Annotated Rules)
§2221 Amendments Included in Request Filed under 35 U.S.C. 302 by Patent Owner
This page consolidates and annotates all enforceable requirements under MPEP § 2221, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Amendments Included in Request Filed under 35 U.S.C. 302 by Patent Owner
This section addresses Amendments Included in Request Filed under 35 U.S.C. 302 by Patent Owner. Primary authority: 35 U.S.C. 2250, 37 CFR 1.510(e), and 37 CFR 1.530(d). Contains: 1 requirement, 2 guidance statements, 2 permissions, and 1 other statement.
Key Rules
New Claims in Reexamination
Under 37 CFR 1.510(e), a patent owner may include a proposed amendment with his or her request. Any such amendment must be in accordance with 37 CFR 1.530(d) through (j). See MPEP § 2250 as to the format and requirements of an amendment in a reexamination proceeding. If an amendment is submitted to add claims to the patent being reexamined, then excess claims fees pursuant to 37 CFR 1.20(c)(3) and (c)(4) may be applicable to the presentation of the added claims. See the discussion of excess claim fees in MPEP § 2250.03. Amendments may also be proposed by patent owners in a statement under 37 CFR 1.530(b) and (c) or during the actual ex parte reexamination prosecution (37 CFR 1.550(b)). See also MPEP § 2234 and § 2250.
Under 37 CFR 1.510(e), a patent owner may include a proposed amendment with his or her request. Any such amendment must be in accordance with 37 CFR 1.530(d) through (j). See MPEP § 2250 as to the format and requirements of an amendment in a reexamination proceeding. If an amendment is submitted to add claims to the patent being reexamined, then excess claims fees pursuant to 37 CFR 1.20(c)(3) and (c)(4) may be applicable to the presentation of the added claims. See the discussion of excess claim fees in MPEP § 2250.03. Amendments may also be proposed by patent owners in a statement under 37 CFR 1.530(b) and (c) or during the actual ex parte reexamination prosecution (37 CFR 1.550(b)). See also MPEP § 2234 and § 2250.
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 request for reexamination is granted, all subsequent reexamination prosecution and examination should be on the basis of the claims as amended.
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 request for reexamination is granted, all subsequent reexamination prosecution and examination should be on the basis of the claims as amended.
Amendments in Reexamination
Under 37 CFR 1.510(e), a patent owner may include a proposed amendment with his or her request. Any such amendment must be in accordance with 37 CFR 1.530(d) through (j). See MPEP § 2250 as to the format and requirements of an amendment in a reexamination proceeding. If an amendment is submitted to add claims to the patent being reexamined, then excess claims fees pursuant to 37 CFR 1.20(c)(3) and (c)(4) may be applicable to the presentation of the added claims. See the discussion of excess claim fees in MPEP § 2250.03. Amendments may also be proposed by patent owners in a statement under 37 CFR 1.530(b) and (c) or during the actual ex parte reexamination prosecution (37 CFR 1.550(b)). See also MPEP § 2234 and § 2250.
Request Content Requirements
Under 37 CFR 1.510(e), a patent owner may include a proposed amendment with his or her request. Any such amendment must be in accordance with 37 CFR 1.530(d) through (j). See MPEP § 2250 as to the format and requirements of an amendment in a reexamination proceeding. If an amendment is submitted to add claims to the patent being reexamined, then excess claims fees pursuant to 37 CFR 1.20(c)(3) and (c)(4) may be applicable to the presentation of the added claims. See the discussion of excess claim fees in MPEP § 2250.03. Amendments may also be proposed by patent owners in a statement under 37 CFR 1.530(b) and (c) or during the actual ex parte reexamination prosecution (37 CFR 1.550(b)). See also MPEP § 2234 and § 2250.
Citations
| Primary topic | Citation |
|---|---|
| Amendments in Reexamination New Claims in Reexamination Request Content Requirements | 35 U.S.C. § 2250 |
| Amendments in Reexamination New Claims in Reexamination Request Content Requirements | 37 CFR § 1.20(c)(3) |
| Amendments in Reexamination New Claims in Reexamination Request Content Requirements | 37 CFR § 1.510(e) |
| Amendments in Reexamination New Claims in Reexamination Request Content Requirements | 37 CFR § 1.530(b) |
| Amendments in Reexamination New Claims in Reexamination Request Content Requirements | 37 CFR § 1.530(d) |
| Amendments in Reexamination New Claims in Reexamination Request Content Requirements | 37 CFR § 1.550(b) |
| Amendments in Reexamination New Claims in Reexamination Request Content Requirements | MPEP § 2234 |
| Amendments in Reexamination New Claims in Reexamination Request Content Requirements | MPEP § 2250 |
| Amendments in Reexamination New Claims in Reexamination Request Content Requirements | MPEP § 2250.03 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2221 — Amendments Included in Request Filed under 35 U.S.C. 302 by Patent Owner
Source: USPTO2221 Amendments Included in Request Filed under 35 U.S.C. 302 by Patent Owner [R-07.2015]
Under 37 CFR 1.510(e), a patent owner may include a proposed amendment with his or her request. Any such amendment must be in accordance with 37 CFR 1.530(d) through (j). See MPEP § 2250 as to the format and requirements of an amendment in a reexamination proceeding. If an amendment is submitted to add claims to the patent being reexamined, then excess claims fees pursuant to 37 CFR 1.20(c)(3) and (c)(4) may be applicable to the presentation of the added claims. See the discussion of excess claim fees in MPEP § 2250.03. Amendments may also be proposed by patent owners in a statement under 37 CFR 1.530(b) and (c) or during the actual ex parte reexamination prosecution (37 CFR 1.550(b)). See also MPEP § 2234 and § 2250.
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 request for reexamination is granted, all subsequent reexamination prosecution and examination should be on the basis of the claims as amended.