How does the examiner handle amendments submitted after final rejection in reexamination?
When handling amendments submitted after final rejection in reexamination, the examiner follows specific guidelines: The first proposed amendment after final action in a reexamination proceeding will be given sufficient consideration to determine whether it places all the claims in condition where they are patentable and/or whether the issues on appeal are reduced or simplified. If…
Read MoreWhat happens after a final rejection in a reexamination proceeding?
After a final rejection in a reexamination proceeding, the patent owner’s rights to unrestricted further prosecution are limited. The MPEP states: Once a final rejection that is not premature has been entered in a reexamination proceeding, the patent owner no longer has any right to unrestricted further prosecution. Amendments submitted after final rejection are subject…
Read MoreWho can sign amendments and papers on behalf of patent owners in ex parte reexamination proceedings?
In ex parte reexamination proceedings, the MPEP specifies who can sign amendments and other papers on behalf of patent owners: “Amendments and other papers filed on behalf of patent owners must be signed by the patent owners, or the registered attorney or agent of record in the patent file, or any registered attorney or agent…
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 MoreWho can sign amendments and other papers in a reexamination proceeding?
In a reexamination proceeding, amendments and other papers must be signed by specific individuals as outlined in MPEP 2222: The patent owner All owners if there is more than one An attorney or agent of record in the patent file A registered attorney or agent not of record who acts in a representative capacity under…
Read MoreHow are amendments treated in terminated reexamination proceedings?
In terminated reexamination proceedings, amendments are treated as follows: Amendments submitted during the reexamination proceeding are not printed or entered into the patent. The MPEP 2278 states: “The amendments are merely placed in the reexamination file wrapper.“ This treatment applies to all amendments, including those that were entered, not entered, and/or proposed during the reexamination…
Read MoreCan amendments be submitted with a supplemental examination request?
No, amendments cannot be submitted with a supplemental examination request. MPEP 2809 clearly states: “No amendment may be filed in a supplemental examination proceeding. 37 CFR 1.620(f). Any paper containing an amendment that is filed in a supplemental examination proceeding is an unauthorized paper, and will be expunged from the file if inadvertently entered.” However,…
Read MoreHow are amendments handled in international design applications?
Amendments in international design applications are subject to specific rules and procedures. According to MPEP 2920.04(b): “Amended reproductions that are submitted directly to the Office pursuant to 37 CFR 1.121 are not subject to review by the International Bureau and thus may be objected to under 37 CFR 1.1026 as to matters of form where…
Read MoreAre amendments or new claims considered during supplemental examination?
No, amendments and new claims presented in copending post-patent Office proceedings are not considered during the supplemental examination process. According to MPEP 2816.01: “Amendments and/or new claims presented in any copending post-patent Office proceeding for the patent to be examined will not be considered nor commented upon when deciding a request for supplemental examination.” However,…
Read MoreCan amendments be entered after a Right of Appeal Notice (RAN) in inter partes reexamination?
According to MPEP 2673, amendments filed after a Right of Appeal Notice (RAN) in inter partes reexamination are generally not allowed. The MPEP states: “An amendment filed after the RAN will not be entered at all, in the absence of a grantable petition under 37 CFR 1.183 because 37 CFR 1.953(c) prohibits an amendment after…
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