Can 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 claimed from the prior art cited under the provisions of section 301, or in response to a decision adverse to the patentability of a claim of a patent.”
However, it’s important to note that the same statute also states: “No proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding under this chapter.” This means that while amendments and new claims are allowed, they cannot expand the scope of the original patent claims.
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