How are amendments handled in inter partes reexamination proceedings?

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.

Amendments in inter partes reexamination proceedings are handled as follows:

• Amendments should be submitted in proper form
• If appropriate, amendments will be entered for the reexamination proceeding, even if they don’t have legal effect until the certificate is issued
• “New matter” amendments to the disclosure will be required to be canceled
• Claims containing new matter will be rejected under 35 U.S.C. 112
• “New matter” amendments to drawings are ordinarily not entered
• Amendments enlarging the scope of claims will be rejected under 35 U.S.C. 314(a)

For specific guidance, MPEP 2670 states: “See MPEP §§ 2234 and 2250 for manner of entering amendments. For entry of amendments in a merged inter partes reexamination proceeding (i.e., an inter partes reexamination proceeding merged with another reexamination proceeding or with a reissue application), see MPEP §§ 2686.01 and 2686.03.“