How does the USPTO handle amendments or new claims in copending reexamination or reissue 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. When deciding a request for reexamination, the USPTO does not consider or comment on amendments and/or new claims presented in any copending reexamination or reissue proceeding for the patent under consideration. As stated in MPEP 2243 : Amendments and/or new claims presented in any copending reexamination or reissue proceeding for the patent to be reexamined will not (see MPEP § 2240, subsection II.) be considered nor commented upon when deciding a request for reexamination. This approach ensures that the reexamination decision is based solely on the claims of the patent in effect at the time of the determination, as required by 35 U.S.C. 302 . Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Amendments and New Claims in Copending Proceedings Not Considered During Reexamination Request MPEP 2243 Claims Not Requested for Reexamination Generally Not Examined MPEP 2243 Required Office May Initiate Reexamination of Non-Requested Claims MPEP 2243 Permitted Claim Basis for Substantial New Question of Patentability MPEP 2243 Claims for Which Reexamination is Requested Only MPEP 2243 Third Party Requester Must Apply Art to All Claims MPEP 2243 Office Has Sole Discretion to Reexamine Claims MPEP 2243 Office May Reexamine Unrequested Claims Under 35 U.S.C. 302 MPEP 2243 Permitted Examiner Can Examine Unrequested Claims MPEP 2243 Permitted Ex Parte Reexamination Consideration Limited to Patents and Publications MPEP 2217 Other Related FAQs 5 FAQs Collapse What claims are considered when deciding a request for ex parte reexamination under 35 U.S.C. 302? What happens if a requester fails to apply cited prior art to all claims in a reexamination request? Can the USPTO examine...