Can amendments be made after the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC)?
Can amendments be made after the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC)? Yes, limited amendments can be made after the Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC) is issued. The MPEP provides specific guidance on this: “In some instances, even after a NIRC has been issued, amendments affecting…
Read MoreWhat are the requirements for amendments after a final action in reexamination?
Amendments after a final action in reexamination proceedings are subject to strict requirements. According to MPEP 2260, the examiner’s first action should caution the patent owner that: “The requirements of 37 CFR 1.116(b) will be strictly enforced after final action and that any amendment after a final action must include ‘a showing of good and…
Read MoreCan amendments to a sequence listing XML file be made after the filing date?
Yes, amendments to a sequence listing XML file can be made after the filing date, but there are specific rules governing such amendments. According to MPEP 2414: “Any amendments to a sequence listing XML file must comply with the requirements of 37 CFR 1.835(b).” This means that: Amendments must not include any new matter beyond…
Read MoreCan a patent owner amend claims after a final rejection in reexamination?
While a patent owner can submit amendments after a final rejection in reexamination, they do not have an absolute right to amend claims at this stage. The MPEP states: It should be kept in mind that a patent owner cannot, as a matter of right, amend any finally rejected claims, add new claims after a…
Read MoreWhat additional requirements are there for amendments in reexamination?
Amendments in reexamination must meet several additional requirements: They must comply with the formal requirements of 37 CFR 1.52(a) and (b). Amendments must include all fees required by 37 CFR 1.20(c), including excess claim fees if applicable. Each amendment must set forth the status of all patent claims and all added claims as of the…
Read MoreCan adding new claims after March 16, 2013, make AIA laws applicable to a pre-AIA application?
No, adding new claims after March 16, 2013, does not make AIA laws applicable to a pre-AIA application. The MPEP 2159.01 states: “Additionally, adding claims after March 16, 2013 in an application filed before March 16, 2013 via an amendment which contains new matter does not make the changes to 35 U.S.C. 102 and 35…
Read MoreWhen is a rewritten specification required for a patent application?
A rewritten specification is required when interlineations or cancellations in the specification or amendments to the claims could lead to confusion and mistake during the issue and printing processes. The MPEP 1302.02 states: “Whenever interlineations or cancellations have been made in the specification or amendments which would lead to confusion and mistake, the examiner should…
Read MoreWhen does the primary examiner lose jurisdiction over a patent application?
The primary examiner retains jurisdiction over a patent application until the Notice of Allowance is mailed. As stated in MPEP 1305: “Jurisdiction of the application remains with the primary examiner until the Notice of Allowance is mailed.” However, even after the Notice of Allowance, the examiner may still permit certain limited amendments under 37 CFR…
Read MoreWhat is the role of Supervisory Patent Examiners in handling amendments under 37 CFR 1.312?
Supervisory Patent Examiners are responsible for deciding on the entry of amendments under 37 CFR 1.312 that involve more than just correcting formal matters without changing the scope of any claim. As stated in the MPEP: “Entry of amendments under 37 CFR 1.312 which embody more than merely the correction of formal matters without changing…
Read MoreHow does filing a reply brief with an amendment affect a patent appeal?
Filing a reply brief with an amendment can have significant implications for a patent appeal. The MPEP 1208 provides specific guidance on this situation: “If a reply brief is filed in response to a substitute examiner’s answer under 37 CFR 41.50(a) that was written in response to a remand by the Board for further consideration…
Read More