How are “new matter” amendments handled in reexamination proceedings?

Question

Accepted Answer

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. “New matter” amendments are treated strictly in reexamination proceedings. According to MPEP 2270 : “Any ‘new matter’ amendment to the disclosure (35 U.S.C. 132) will be required to be canceled, and claims containing new matter will be rejected under 35 U.S.C. 112. A ‘new matter’ amendment to the drawing is ordinarily not entered.” This means that any amendment introducing new matter to the specification will be canceled, and claims containing new matter will be rejected. New matter in drawings is typically not allowed. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Drawing Amendments Not Entered Ordinarily MPEP 2270 New Matter Must Be Removed From Claims MPEP 2270 Required Rules for Ex Parte Reexamination of Patents MPEP 2201 Permitted Amendment Enlarging Claims Must Be Entered But Rejected MPEP 2270 Amendments for Reexamination Must Comply with Rules MPEP 2270 Amendment Entered for Reexamination Despite Lack of Legal Effect MPEP 2270 Ex Parte Reexamination Examination Conducted According to Specific Sections MPEP 2254 Rejection Must Be Based on Prior Art in Ex Parte Reexamination MPEP 2258 Prohibited Amendments Required for Merged Reissue-Reexamination MPEP 2270 Issues Relating to 35 U.S.C. 112 Addressed Only for New Claims MPEP 2258 Other Related FAQs 5 FAQs Collapse When are amendments entered in a reexamination proceeding? How are amendments handled in merged reissue-reexamination proceedings? What happens if an amendment enlarges the scope of claims in a reexamination? What is the role of legal instrument examiners and paralegals in reexamination proceedings? How does the examiner handle proposed amendments during reexamination?