How are claims selected for reexamination in inter partes 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.

In inter partes reexamination, claims are selected for reexamination based on whether they raise a substantial new question of patentability (SNQ). The MPEP provides examples of this process:

Claims 1 – 3 of the Key patent will be reexamined. … Accordingly, claim 4 will not be reexamined. … Finally, reexamination has not been requested for claims 5 – 20 of the Key patent. Accordingly, claims 5 – 20 will not be reexamined.

Key points on claim selection:

• Only claims for which an SNQ is found will be reexamined
• Claims not raising an SNQ are excluded from reexamination
• Claims not requested for reexamination are not included
• The examiner determines which claims meet the SNQ standard

This selective approach ensures that the reexamination focuses only on claims with potential patentability issues not previously addressed.