MPEP § 2813.01 — Amendments (Annotated Rules)
§2813.01 Amendments
This page consolidates and annotates all enforceable requirements under MPEP § 2813.01, 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
This section addresses Amendments. Primary authority: 35 U.S.C. 257(a), 35 U.S.C. 304, and 35 U.S.C. 257(b). Contains: 1 prohibition and 5 permissions.
Key Rules
Amendments Adding New Matter
An amendment may be submitted in an ex parte reexamination proceeding ordered under 35 U.S.C. 257. Patent owners, however, are reminded that 35 U.S.C. 257(b) expressly removes the right of the patent owner to file a statement under 35 U.S.C. 304, which includes any amendment that the patent owner may wish to file prior to an initial Office action on the merits. Because the ex parte reexamination proceeding does not exist prior to the order under 35 U.S.C. 257, and because the patent owner is precluded from filing a statement under 35 U.S.C. 304, no amendment may be filed from the time the request for supplemental examination is filed, until after the issuance of an initial Office action on the merits in any ex parte reexamination proceeding ordered under 35 U.S.C. 257.
An amendment may be submitted in an ex parte reexamination proceeding ordered under 35 U.S.C. 257. Patent owners, however, are reminded that 35 U.S.C. 257(b) expressly removes the right of the patent owner to file a statement under 35 U.S.C. 304, which includes any amendment that the patent owner may wish to file prior to an initial Office action on the merits. Because the ex parte reexamination proceeding does not exist prior to the order under 35 U.S.C. 257, and because the patent owner is precluded from filing a statement under 35 U.S.C. 304, no amendment may be filed from the time the request for supplemental examination is filed, until after the issuance of an initial Office action on the merits in any ex parte reexamination proceeding ordered under 35 U.S.C. 257.
An amendment may be submitted in an ex parte reexamination proceeding ordered under 35 U.S.C. 257. Patent owners, however, are reminded that 35 U.S.C. 257(b) expressly removes the right of the patent owner to file a statement under 35 U.S.C. 304, which includes any amendment that the patent owner may wish to file prior to an initial Office action on the merits. Because the ex parte reexamination proceeding does not exist prior to the order under 35 U.S.C. 257, and because the patent owner is precluded from filing a statement under 35 U.S.C. 304, no amendment may be filed from the time the request for supplemental examination is filed, until after the issuance of an initial Office action on the merits in any ex parte reexamination proceeding ordered under 35 U.S.C. 257.
Reexamination Order
37 CFR 1.620(f) provides that no amendment may be filed in a supplemental examination proceeding. Amendments are not “information believed to be relevant to the patent” under 35 U.S.C. 257(a) and a patent owner cannot file an amendment as part of a statement under 35 U.S.C. 304 because 35 U.S.C. 257(b) expressly excludes the filing of a statement pursuant to 35 U.S.C. 304 in a supplemental examination proceeding.
37 CFR 1.620(f) provides that no amendment may be filed in a supplemental examination proceeding. Amendments are not “information believed to be relevant to the patent” under 35 U.S.C. 257(a) and a patent owner cannot file an amendment as part of a statement under 35 U.S.C. 304 because 35 U.S.C. 257(b) expressly excludes the filing of a statement pursuant to 35 U.S.C. 304 in a supplemental examination proceeding.
Consent of Assignee
Patent owners are reminded that a statutory disclaimer under 35 U.S.C. 253 and 37 CFR 1.321(a) may be submitted in the file of the patent prior to filing any request for supplemental examination. See MPEP § 1490. Moreover, if the patent owner merely wishes to amend the patent claims, the patent owner may file a reissue application instead of a request for supplemental examination.
Citations
| Primary topic | Citation |
|---|---|
| Consent of Assignee | 35 U.S.C. § 253 |
| Amendments Adding New Matter | 35 U.S.C. § 257 |
| Reexamination Order | 35 U.S.C. § 257(a) |
| Amendments Adding New Matter Reexamination Order | 35 U.S.C. § 257(b) |
| Amendments Adding New Matter Reexamination Order | 35 U.S.C. § 304 |
| Consent of Assignee | 37 CFR § 1.321(a) |
| Reexamination Order | 37 CFR § 1.620(f) |
| Consent of Assignee | MPEP § 1490 |
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 § 2813.01 — Amendments
Source: USPTO2813.01 Amendments [R-11.2013]
37 CFR 1.620 Conduct of supplemental examination proceeding.
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- (f) No amendment may be filed in a supplemental examination proceeding.
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37 CFR 1.620(f) provides that no amendment may be filed in a supplemental examination proceeding. Amendments are not “information believed to be relevant to the patent” under 35 U.S.C. 257(a) and a patent owner cannot file an amendment as part of a statement under 35 U.S.C. 304 because 35 U.S.C. 257(b) expressly excludes the filing of a statement pursuant to 35 U.S.C. 304 in a supplemental examination proceeding.
Any paper containing an amendment that is filed in a supplemental examination proceeding is an unauthorized paper, and will be expunged from the file if inadvertently entered. Amendments are not items of information, and are not appropriate in a supplemental examination proceeding.
An amendment may be submitted in an ex parte reexamination proceeding ordered under 35 U.S.C. 257. Patent owners, however, are reminded that 35 U.S.C. 257(b) expressly removes the right of the patent owner to file a statement under 35 U.S.C. 304, which includes any amendment that the patent owner may wish to file prior to an initial Office action on the merits. Because the ex parte reexamination proceeding does not exist prior to the order under 35 U.S.C. 257, and because the patent owner is precluded from filing a statement under 35 U.S.C. 304, no amendment may be filed from the time the request for supplemental examination is filed, until after the issuance of an initial Office action on the merits in any ex parte reexamination proceeding ordered under 35 U.S.C. 257.
Patent owners are reminded that a statutory disclaimer under 35 U.S.C. 253 and 37 CFR 1.321(a) may be submitted in the file of the patent prior to filing any request for supplemental examination. See MPEP § 1490. Moreover, if the patent owner merely wishes to amend the patent claims, the patent owner may file a reissue application instead of a request for supplemental examination.