Can the scope of patent claims be enlarged during ex parte reexamination?

Question

Accepted Answer

Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. The scope of patent claims cannot be enlarged during ex parte reexamination. The MPEP clearly states: “35 U.S.C. 305 states that ‘no proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding….'” A claim is considered to enlarge the scope if it is broader than each and every claim of the patent. If a claim is found to enlarge the scope, it should be rejected under 35 U.S.C. 305. This applies not only to amended claims but also to new claims introduced during reexamination. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Reexamination Proceeding Reviews Patent Claims Based on Prior Art MPEP 2258 Claims Cannot Enlarge Patent Scope MPEP 2258 Permitted Prior Art Rejections Based on 35 U.S.C. 102 After March 16, 2013 MPEP 2258 Required Rejection Must Be Based on Prior Art in Ex Parte Reexamination MPEP 2258 Prohibited Merits Examination Dictated by 35 U.S.C. 305 After Reexamination Order MPEP 2258 Claims Examined Only on Prior Art MPEP 2258 Requirement for Claim Scope Statements in Ex Parte Reexamination MPEP 2258 Claims Examined on Patent and Publication Basis MPEP 2258 Admissions Considered as Prior Art in Reexamination MPEP 2258 Prior Art Admissions Must Be Considered in Reexamination MPEP 2258 Other Related FAQs 5 FAQs Collapse How are claims construed in ex parte reexamination? How are claims interpreted in ex parte reexamination? Can double patenting rejections be made in ex parte reexamination? How does the scope of ex parte reexamination differ from inter partes review? What is the role of the examiner in ex parte reexamination?