How does the written description requirement apply to amended or new claims?
The written description requirement applies not only to original claims but also to amended and new claims introduced during prosecution. The MPEP 2163.01 states: “The fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the…
Read MoreHow does the written description requirement apply to new or amended claims?
For new or amended claims, the applicant must show support in the original disclosure. The MPEP states: “With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims.” The examiner has the initial burden of presenting evidence or reasoning why a person skilled in…
Read MoreWhat issues can arise with new or amended claims regarding written description?
New or amended claims can face written description issues if they introduce elements not supported by the original disclosure. The MPEP 2163.03 states: “To comply with the written description requirement of 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, or to be entitled to an earlier priority date or filing date under 35…
Read MoreHow 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 triggers intervening rights in inter partes reexamination?
Intervening rights in inter partes reexamination are triggered when a patent’s claims are amended or new claims are added during the reexamination process. The MPEP 2693 states: “Any proposed amended or new claim determined to be patentable and incorporated into a patent following an inter partes reexamination proceeding shall have the same effect as that…
Read MoreHow are new claims numbered in the ex parte reexamination certificate?
New claims in ex parte reexamination are numbered according to specific rules. The MPEP 2287 provides clear guidance: “If new claims have been added, the examiner should number them, starting with the number next higher than the number of claims in the patent.” For example, if the original patent had 20 claims, the first new…
Read MoreHow are amended or new claims numbered in an inter partes reexamination certificate?
The numbering of amended or new claims in an inter partes reexamination certificate follows specific rules as outlined in MPEP 2688: Amended or new claims are numbered consecutively starting with the number next higher than the number of the last claim in the original patent. The numbering starts with the lowest amended claim number. If…
Read MoreHow are new claims presented in an ex parte reexamination certificate?
New claims in an ex parte reexamination certificate are presented as follows: They are listed numerically in a double column format The full text of each new claim is included New claims are numbered starting after the highest number of any original patent claim As stated in MPEP 2290: “Any new claim added as a…
Read MoreHow are new claims numbered in patent reexamination?
Numbering of new claims in patent reexamination follows these rules: Original patent claims retain their numbers, even if canceled. New claims are numbered sequentially starting after the last original patent claim number. If new claims are canceled, their numbers are not reused for other new claims. At the time of the Notice of Intent to…
Read MoreCan new or amended claims be introduced during ex parte reexamination?
Yes, new or amended claims can be introduced during ex parte reexamination, but with certain limitations. According to 35 U.S.C. 305: “In any reexamination proceeding under this chapter, the patent owner will be permitted to propose any amendment to his patent and a new claim or claims thereto, in order to distinguish the invention as…
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