How are “new matter” amendments handled in reexamination proceedings?
“New matter” amendments are treated strictly in reexamination proceedings. According to MPEP 2270: “Any ‘new matter’ amendment to the disclosure (35 U.S.C. 132) will be required to be canceled, and claims containing new matter will be rejected under 35 U.S.C. 112. A ‘new matter’ amendment to the drawing is ordinarily not entered.” This means that…
Read MoreWhat is the role of legal instrument examiners and paralegals in reexamination proceedings?
Legal instrument examiners and paralegals handle most of the initial clerical processing of the reexamination file. As stated in MPEP 2270: “The legal instrument examiners and paralegals will handle most of the initial clerical processing of the reexamination file.” This processing is overseen by the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) or…
Read MoreWhat happens if an amendment enlarges the scope of claims in a reexamination?
When an amendment enlarges the scope of claims in a reexamination, it is handled in a specific manner. According to MPEP 2270: “Where an amendment enlarges the scope of the claims of the patent, the amendment will be entered; however the appropriate claims will be rejected under 35 U.S.C. 305.” This means that while the…
Read MoreHow are amendments handled in merged reissue-reexamination proceedings?
Amendments in merged reissue-reexamination proceedings are handled differently from standard reexaminations. The MPEP 2270 directs examiners to specific sections for guidance: “For entry of amendments in a merged reissue-reexamination proceeding, see MPEP § 2283 and § 2285.” This means that examiners must refer to MPEP 2283 and MPEP 2285 for specific procedures on handling amendments…
Read MoreWhen are amendments entered in a reexamination proceeding?
Amendments in a reexamination proceeding are generally entered if they comply with certain conditions. According to MPEP 2270: “Amendments submitted with a request filed under 35 U.S.C. 302, or after reexamination is ordered under 35 U.S.C. 304 or under 35 U.S.C. 257, and which comply with 37 CFR 1.530(d) – (j), will generally be entered…
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