What are the requirements for amendments after a final action in reexamination?

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.

Amendments after a final action in reexamination proceedings are subject to strict requirements. According to MPEP 2260, the examiner’s first action should caution the patent owner that:

“The requirements of 37 CFR 1.116(b) will be strictly enforced after final action and that any amendment after a final action must include ‘a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented’ in order to be considered.”

This means that after a final action, any proposed amendment must be accompanied by a convincing explanation of why the amendment is necessary and why it couldn’t have been presented earlier in the reexamination process. The 37 CFR 1.116(b) requirements are designed to promote efficiency and prevent unnecessary delays in the reexamination process.