How are claim amendments handled in inter partes reexamination?

How are claim amendments handled in inter partes reexamination?

In inter partes reexamination, claim amendments are subject to specific rules and procedures. The MPEP states: “Amendments in reexamination proceedings are made by filing a paper in compliance with 37 CFR 1.530(d)-(k).” (MPEP 2666) This means that:

• Amendments must be made by filing a separate paper for each patent being reexamined.
• The amendment must include a complete listing of all claims ever presented in the reexamination proceeding.
• New claims must be presented as additional claims to the existing patent claims.
• Amendments must be made relative to the patent specification.

It’s important to note that amendments in inter partes reexamination are subject to intervening rights provisions under 35 U.S.C. 252.

To learn more:

• inter partes reexamination
• claim amendments
• patent claims