Can the USPTO examine claims not specifically requested for reexamination?
Yes, the USPTO can examine claims not specifically requested for reexamination, but it’s at their discretion. MPEP 2643 states: “The decision to reexamine any claim for which reexamination has not been requested lies within the sole discretion of the Office, to be exercised based on the individual facts and situation of each individual case.” However, the examination typically focuses on the requested claims: “While the examiner ordinarily concentrates on the claims for which reexamination is requested, the finding of ‘a substantial new question of patentability’ or ‘a reasonable likelihood that the requester will prevail’ can be based upon a claim of the patent other than the ones for which reexamination is requested.”
To learn more:
Topics:
MPEP 2600 - Optional Inter Partes Reexamination,
MPEP 2643 - Claims Considered In Deciding Request,
Patent Law,
Patent Procedure