What does an examiner consider when reviewing a patent owner’s response with amendments?
When a patent owner’s response contains amendments, the examiner must consider specific legal issues. According to the MPEP: “If the patent owner response contains an amendment, the examiner will consider the amendment to determine whether the amendment raises issues of 35 U.S.C. 112 and/or broadening of the claims under 35 U.S.C. 314.” This means the…
Read MoreCan claims be broadened during inter partes reexamination?
No, claims cannot be broadened during inter partes reexamination. The MPEP clearly states: “Where new claims are presented, or where any part of the disclosure is amended, the claims of the inter partes reexamination proceeding should be examined under 35 U.S.C. 314, to determine whether they enlarge the scope of the original claims. 35 U.S.C.…
Read MoreWhat additional requirements exist for reissue applications seeking to broaden claims?
For reissue applications filed on or after September 16, 2012, that seek to broaden the scope of the patent claims, there are additional requirements for the reissue oath or declaration. The MPEP 1414 states: “For an application filed on or after September 16, 2012 that seeks to enlarge the scope of the claims of the…
Read MoreHow should errors be identified in a reissue oath/declaration?
When identifying errors in a reissue oath/declaration, it’s important to be specific. The MPEP 1414 provides guidance on this: “It is not necessary, however, to point out how (or when) the error arose or occurred. Further, it is not necessary to point out how (or when) the error was discovered. What is needed for the…
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