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 MoreWhat is the purpose of the statement required when submitting an amended sequence listing XML file?
When submitting an amended sequence listing XML file, a statement is required to ensure that no new matter has been introduced. The MPEP 2414 states: “The statement must be submitted with the amended sequence listing XML file. The statement must indicate that the XML file complies with 37 CFR 1.835(b)(5) and the content of the…
Read MoreWho 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 MoreWhat are the restrictions on amendments in patent reexamination?
Amendments in patent reexamination are subject to several restrictions: They may not enlarge the scope of a claim of the patent or introduce new matter. Amended or new claims that broaden or enlarge the scope of a claim should be rejected under 35 U.S.C. 305. Amendments do not become effective in the patent until the…
Read MoreHow 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 MoreWhat happens to amendments if a patent expires during reexamination?
If a patent expires during reexamination: All amendments to the patent claims and all claims added during the proceeding are withdrawn. The patent owner is notified in the next Office action. All subsequent reexamination will be on the basis of the unamended patent claims. No amendments, other than claim cancellations, will be incorporated into the…
Read MoreWhat happens if new matter is added to a pre-AIA application after March 16, 2013?
If new matter is added to a pre-AIA application after March 16, 2013, it does not change the application’s status, but it may lead to rejections. According to MPEP 2159.01: “If new matter is added via amendment, claims directed to the new matter will be rejected under pre-AIA 35 U.S.C. 112, first paragraph. See MPEP…
Read MoreHow 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 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 MoreHow 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…
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