Can the USPTO examine claims not requested for reexamination under 35 U.S.C. 302?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 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. Yes, the USPTO can examine claims not specifically requested for reexamination under 35 U.S.C. 302 , but this is at the discretion of the Office. According to MPEP 2243 : The decision to reexamine any claim for which reexamination has not been requested under 35 U.S.C. 302 lies within the sole discretion of the Office, to be exercised based on the individual facts and situation of each individual case. Additionally, the Office can always initiate a reexamination on its own initiative for non-requested claims under 35 U.S.C. 303(a) . Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Office Has Sole Discretion to Reexamine Claims MPEP 2243 Claims Not Requested for Reexamination Generally Not Examined MPEP 2243 Required Claims for Which Reexamination is Requested Only MPEP 2243 Office May Reexamine Unrequested Claims Under 35 U.S.C. 302 MPEP 2243 Permitted Claims for Which Reexamination is Requested Only MPEP 2243 Office May Initiate Reexamination of Non-Requested Claims MPEP 2243 Permitted Examiner Can Examine Unrequested Claims MPEP 2243 Permitted Claim Basis for Substantial New Question of Patentability MPEP 2243 Third Party Requester Must Apply Art to All Claims MPEP 2243 Office May Initiate Reexamination of Non-Request Claim MPEP 2240 Permitted Other Related FAQs 5 FAQs Collapse What claims are considered when deciding a request for ex parte reexamination under 35 U.S.C. 302? What happens if a requester fails to apply cited prior art to all claims in a reexamination request? How does the USPTO handle amendments or new claims in copending reexamination or reissue proceedings? No more FAQs can be generated Can admissions be used as a basis for establishing a subst...