Patent Law FAQ

Numbering of new claims in patent reexamination follows these rules:

• Original patent claims retain their numbers, even if canceled.
• New claims are numbered sequentially starting after the last original patent claim number.
• If new claims are canceled, their numbers are not reused for other new claims.
• At the time of the Notice of Intent to Issue Reexamination Certificate (NIRC), remaining new claims are renumbered sequentially following the highest original patent claim number.

The MPEP states: “Even though an original claim may have been canceled, the numbering of the original claims does not change. Accordingly, any added claims are numbered beginning with the next higher number than the number of claims in the original patent.” This ensures clarity and consistency in claim numbering throughout the reexamination process.

To learn more:

• patent reexamination
• new claims
• claim numbering
• NIRC
• claim cancellation

Numbering of new claims in patent reexamination follows these rules:

• Original patent claims retain their numbers, even if canceled.
• New claims are numbered sequentially starting after the last original patent claim number.
• If new claims are canceled, their numbers are not reused for other new claims.
• At the time of the Notice of Intent to Issue Reexamination Certificate (NIRC), remaining new claims are renumbered sequentially following the highest original patent claim number.

The MPEP states: “Even though an original claim may have been canceled, the numbering of the original claims does not change. Accordingly, any added claims are numbered beginning with the next higher number than the number of claims in the original patent.” This ensures clarity and consistency in claim numbering throughout the reexamination process.

To learn more:

• patent reexamination
• new claims
• claim numbering
• NIRC
• claim cancellation

When correcting inventorship after an Office action on the merits has been given or mailed in the application, there are additional requirements:

• Pay the fee set forth in 37 CFR 1.17(d) in addition to the processing fee
• This additional fee is not required if inventors are being deleted due to claim cancellation

The MPEP states: 37 CFR 1.48(c) provides that the fee set forth in 37 CFR 1.17(d) (in addition to the processing fee) is required when requests under 37 CFR 1.48 are filed after the Office action on the merits has been given or mailed in the application. However, the fee will not be required when inventors are deleted if the request to correct or change inventorship is accompanied by a statement that the request to correct or change the inventorship is due solely to the cancelation of claims in the application.

To learn more:

• inventorship correction
• Office action
• fees
• claim cancellation

Numbering of new claims in patent reexamination follows these rules:

• Original patent claims retain their numbers, even if canceled.
• New claims are numbered sequentially starting after the last original patent claim number.
• If new claims are canceled, their numbers are not reused for other new claims.
• At the time of the Notice of Intent to Issue Reexamination Certificate (NIRC), remaining new claims are renumbered sequentially following the highest original patent claim number.

The MPEP states: “Even though an original claim may have been canceled, the numbering of the original claims does not change. Accordingly, any added claims are numbered beginning with the next higher number than the number of claims in the original patent.” This ensures clarity and consistency in claim numbering throughout the reexamination process.

To learn more:

• patent reexamination
• new claims
• claim numbering
• NIRC
• claim cancellation

When correcting inventorship after an Office action on the merits has been given or mailed in the application, there are additional requirements:

• Pay the fee set forth in 37 CFR 1.17(d) in addition to the processing fee
• This additional fee is not required if inventors are being deleted due to claim cancellation

The MPEP states: 37 CFR 1.48(c) provides that the fee set forth in 37 CFR 1.17(d) (in addition to the processing fee) is required when requests under 37 CFR 1.48 are filed after the Office action on the merits has been given or mailed in the application. However, the fee will not be required when inventors are deleted if the request to correct or change inventorship is accompanied by a statement that the request to correct or change the inventorship is due solely to the cancelation of claims in the application.

To learn more:

• inventorship correction
• Office action
• fees
• claim cancellation

Numbering of new claims in patent reexamination follows these rules:

• Original patent claims retain their numbers, even if canceled.
• New claims are numbered sequentially starting after the last original patent claim number.
• If new claims are canceled, their numbers are not reused for other new claims.
• At the time of the Notice of Intent to Issue Reexamination Certificate (NIRC), remaining new claims are renumbered sequentially following the highest original patent claim number.

The MPEP states: “Even though an original claim may have been canceled, the numbering of the original claims does not change. Accordingly, any added claims are numbered beginning with the next higher number than the number of claims in the original patent.” This ensures clarity and consistency in claim numbering throughout the reexamination process.

To learn more:

• patent reexamination
• new claims
• claim numbering
• NIRC
• claim cancellation