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 More

Who can sign amendments and other papers in a patent reexamination proceeding?

According to MPEP 2622, amendments and other papers filed in a reexamination proceeding must be signed by specific individuals. The section states: “Amendments filed in a reexamination proceeding, and other papers filed in a reexamination or supplemental examination proceeding, on behalf of the patent owner must be signed by the patent owner, or if there…

Read More

How should amendments be formatted in patent reexamination?

Amendments in patent reexamination must follow specific formatting rules: Changes to the specification must be made by submission of the entire text of each added or rewritten paragraph with markings. For claims, the full text of any amended claim must be presented with markings. Underlining is used for additions, and single brackets for deletions. All…

Read More

How 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 More

How does the USPTO handle amendments or new claims in copending proceedings during reexamination?

The USPTO does not consider amendments or new claims from copending proceedings when deciding on a reexamination request. MPEP 2643 clearly states: “Amendments and/or new claims present in any copending reexamination or reissue proceeding for the patent to be reexamined will not (see MPEP § 2640, subsection II.(A)) be considered nor commented upon when deciding…

Read More