How are proposed amendments treated in the decision on a reexamination request?

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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. When a patent owner includes proposed amendments with a reexamination request, the decision on the request is made based on the original patent claims, not the proposed amendments. MPEP 2221 states: “The request should be decided on the wording of the patent claims in effect at that time (without any proposed amendments). The decision on the request will be made on the basis of the patent claims as though the proposed amendment had not been presented.” However, if the reexamination request is granted, the subsequent examination process will consider the amended claims: “However, if the request for reexamination is granted, all subsequent reexamination prosecution and examination should be on the basis of the claims as amended.” Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Patent Owner Must Include Proposed Amendments MPEP 2221 Required Excess Claims Fees for Proposed Amendments During Reexamination MPEP 2214 Permitted Excess Claims Fees for Patent Owner Amendments During Ex Parte Reexamination MPEP 2250.03 Permitted Patent Owner Must Promptly Serve Reply to Requester MPEP 2246 Claims Basis for Reexamination Decision MPEP 2221 Recommended Amendments for Reexamination Must Comply with Rules MPEP 2270 Patent Owner Must File Statement Within Two Months MPEP 2246 Permitted Excess Claims Fees for Patent Owner's Request with Proposed Amendment MPEP 2215 Permitted Second Request Must Raise New Patentability Question MPEP 2240 Required Claims Must Reflect Requested Amendments MPEP 2221 Recommended Other Related FAQs 5 FAQs Collapse Are there additional fees for adding claims during reexamination? When can a patent owner propose amendments during the reexamination proc...