Can new claims be added during ex parte reexamination?

Can new claims be added during ex parte reexamination?

Yes, new claims can be added during ex parte reexamination, subject to certain conditions. According to MPEP 2250:

• New claims must be numbered consecutively beginning with the number next following the highest numbered patent claim.
• New claims must be completely underlined.
• New claims must not contain any bracketing.
• New claims must not introduce new matter.

The MPEP states: “A patent claim cannot be renumbered. A patent claim may be canceled and a new claim added in its place” (MPEP 2250). This means that while you can add new claims, you cannot simply renumber existing patent claims. Instead, you must cancel an existing claim and add a new one if you wish to effectively “replace” a claim.

To learn more:

• new claims
• ex parte reexamination
• claim numbering
• patent amendments