How does the USPTO handle amendments or new claims in copending reexamination or reissue proceedings?
When deciding a request for reexamination, the USPTO does not consider or comment on amendments and/or new claims presented in any copending reexamination or reissue proceeding for the patent under consideration. As stated in MPEP 2243: Amendments and/or new claims presented in any copending reexamination or reissue proceeding for the patent to be reexamined will…
Read MoreCan the USPTO examine claims not requested for reexamination under 35 U.S.C. 302?
Yes, the USPTO can examine claims not specifically requested for reexamination under 35 U.S.C. 302, but this is at the discretion of the Office. According to MPEP 2243: 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…
Read MoreWhat happens if a requester fails to apply cited prior art to all claims in a reexamination request?
If a requester fails to apply cited prior art to all claims in a reexamination request, those claims not addressed may not be reexamined. The MPEP 2243 states: If the requester fails to apply the art to certain claims, then the requester is not statutorily entitled to reexamination of such claims. If a request fails…
Read MoreWhat claims are considered when deciding a request for ex parte reexamination under 35 U.S.C. 302?
When deciding a request for ex parte reexamination under 35 U.S.C. 302, the claims considered are those in effect at the time of the determination. As stated in the MPEP: The claims of the patent in effect at the time of the determination will be the basis for deciding whether “a substantial new question of…
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