What are the requirements for patent owners in merged reexamination proceedings?

When reexamination proceedings are merged, patent owners must adhere to specific requirements:

  • Maintain identical claims in all merged files.
  • Submit a single response addressed to all files, filed in duplicate, with signatures and identifying data for all files.
  • If claims are not identical at the time of merger, provide an amendment within one month to make the claims the same in each file.

MPEP § 2283 states: “Where merger is ordered, the patent owner is required to maintain identical amendments in the merged reexamination files for purposes of the merged proceeding.”

Failure to maintain identical claims may result in rejections under 35 U.S.C. 112, second paragraph, for indefiniteness.

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Topics: MPEP 2200 - Citation Of Prior Art And Ex Parte Reexamination Of Patents, MPEP 2283 - Multiple Copending Ex Parte Reexamination Proceedings, Patent Law, Patent Procedure
Tags: Identical Claims, Merged Reexamination Proceedings, Patent Owner Requirements