What are the requirements for making changes to the specification in a reexamination proceeding?
Changes to the specification in a reexamination proceeding must follow specific guidelines as outlined in 37 CFR 1.530(d)(1): Changes must be made by submitting the entire text of an added or rewritten paragraph. Markings must be included to show the changes: underlining for additions and brackets for deletions. An entire paragraph may be deleted by…
Read MoreWhat are the requirements for amending claims in a reexamination proceeding?
Amending claims in a reexamination proceeding must follow specific guidelines as outlined in 37 CFR 1.530(d)(2): The amendment must include the entire text of each claim being changed. The entire text of any new claims being added must be provided. For changed claims, a parenthetical expression (e.g., “amended,” “twice amended”) should follow the claim number.…
Read MoreWhen do amendments become effective in a reexamined patent?
Amendments proposed in a reexamination proceeding do not become immediately effective in the patent. The MPEP clearly states: Although the Office actions will treat proposed amendments as though they have been entered, the proposed amendments will not be effective until the reexamination certificate is issued and published. This means that while the amendments are considered…
Read MoreHow can a patent owner make amendments in an inter partes reexamination proceeding?
A patent owner can make amendments in an inter partes reexamination proceeding by filing a paper in compliance with 37 CFR 1.530(d)-(k) and 37 CFR 1.943. The MPEP states: Amendments to the patent being reexamined (where the patent has not expired) may be filed by the patent owner in the reexamination proceeding. Such amendments may…
Read MoreWhat happens if a proposed amendment in reexamination doesn’t comply with regulations?
If a proposed amendment in a reexamination proceeding doesn’t comply with the regulations set forth in 37 CFR 1.530(d)-(j), the patent owner will be notified and given an opportunity to correct the issue. The MPEP provides a standardized form paragraph (26.05.01) for examiners to use in such cases: The amendment filed [1] proposes amendments to…
Read MoreCan amendments be made to an expired patent during reexamination?
No, amendments cannot be made to an expired patent during reexamination. The MPEP clearly states: If the patent expires during the reexamination procedure, and the patent claims have been amended, the Office will hold the amendments as being improper and all subsequent reexamination will be on the basis of the unamended patent claims. This policy…
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