How are “new matter” amendments treated in inter partes reexamination?
“New matter” amendments in inter partes reexamination are treated as follows: Amendments to the disclosure that introduce new matter ( 35 U.S.C. 132 ) will be required to be canceled. Claims containing new matter will be rejected under 35 U.S.C. 112. “New matter” amendments to drawings are ordinarily not entered. MPEP 2670 states: “Any ‘new…
Read MoreWhat is the process for mailing decisions and Office actions in inter partes reexamination?
The process for mailing decisions and Office actions in inter partes reexamination involves the following steps: The examiner completes a decision on the request for inter partes reexamination and/or an Office action. The CRU technical support staff processes the decision and/or Office action for mailing. The documents are mailed to the patent owner and the…
Read MoreHow are amendments handled in inter partes reexamination proceedings?
Amendments in inter partes reexamination proceedings are handled as follows: Amendments should be submitted in proper form If appropriate, amendments will be entered for the reexamination proceeding, even if they don’t have legal effect until the certificate is issued “New matter” amendments to the disclosure will be required to be canceled Claims containing new matter…
Read MoreWhat happens if an amendment enlarges the scope of claims in inter partes reexamination?
In inter partes reexamination, amendments that enlarge the scope of the claims are not permitted and will be rejected. Specifically: If an amendment is found to enlarge the scope of the claims of the patent, those claims will be rejected under 35 U.S.C. 314(a). This rejection is based on the prohibition against broadening the scope…
Read MoreWhat is the role of the Central Reexamination Unit (CRU) technical support staff in inter partes reexamination?
The Central Reexamination Unit (CRU) technical support staff plays a crucial role in the clerical handling and processing of inter partes reexamination cases. Their responsibilities include: Performing all PALM (Patent Application Locating and Monitoring) matters for the case Processing and mailing decisions and Office actions to the patent owner and third party requester(s) Mailing copies…
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