What constitutes new matter in patent applications?
Amendments to an application which are supported in the original description are NOT considered new matter. The Manual of Patent Examining Procedure (MPEP) Section 2163.07 states: “Amendments to an application which are supported in the original description are NOT new matter.” This means that changes to the application that are already described or implied in…
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 MoreWhat additional information must accompany claim amendments in reexamination?
When submitting claim amendments in a patent reexamination, additional information must be provided to support the changes. According to 37 CFR 1.530(e): “Whenever there is an amendment to the claims pursuant to paragraph (d) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending…
Read MoreHow should patent owners submit amendments in a Reexamination of a Reexamination?
When submitting amendments in a Reexamination of a Reexamination, patent owners must present changes as if the modifications from the previous reexamination certificate are part of the original patent. MPEP 2295 states: “Any amendment to the claims (or specification) of the reexamination proceeding must be presented as if the changes made to the patent text…
Read MoreIs translating a “Sequence Listing XML” considered an amendment?
No, translating a “Sequence Listing XML” is not considered an amendment under certain conditions. According to MPEP 2414.04: “Compliance with paragraphs (a) through (c) of this section is not required for submission of a “Sequence Listing XML” that is solely an English translation of a previously submitted “Sequence Listing XML” that contains non-English values for…
Read MoreWhat should I include in a statement for replacing a sequence listing?
When replacing a sequence listing in a patent application, the MPEP provides guidance on what to include in your statement. The sample statement covers three key points: Identifying changes to the previous sequence listing Asserting support in the original application Declaring no new matter has been added Here’s the sample statement from the MPEP: “I…
Read MoreIs rephrasing a passage in a patent application considered new matter?
Mere rephrasing of a passage in a patent application does not constitute new matter, as long as the meaning remains intact. The MPEP Section 2163.07 clarifies: “Mere rephrasing of a passage does not constitute new matter. Accordingly, a rewording of a passage where the same meaning remains intact is permissible.” This guideline allows applicants to…
Read MoreWhat 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 MoreHow are amendments made in patent reexamination proceedings?
Amendments in patent reexamination proceedings are made according to specific rules outlined in 37 CFR 1.530. The key points are: Amendments are made by filing a paper specifying changes to the patent specification, claims, or drawings. For specification changes, the entire text of added or rewritten paragraphs must be submitted with markings. For claim changes,…
Read MoreWhat are the marking requirements for amendments in patent reexamination?
The marking requirements for amendments in patent reexamination are specified in 37 CFR 1.530(f). These requirements ensure clarity in identifying changes made to the patent. The MPEP states: “(f) Changes shown by markings. Any changes relative to the patent being reexamined which are made to the specification, including the claims, must include the following markings:…
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