What are the restrictions on amending the specification during ex parte reexamination?

What are the restrictions on amending the specification during ex parte reexamination?

During ex parte reexamination, amendments to the specification are subject to specific restrictions. According to MPEP 2250:

  • No new matter may be introduced into the specification.
  • Amendments must be made by adding, deleting, or replacing a paragraph, by replacing a section, or by a substitute specification.
  • Amendments must be accompanied by an explanation of support in the original disclosure.

The MPEP emphasizes: “The specification may not be amended to add new teaching of new matter” (MPEP 2250). This restriction ensures that the scope of the patent remains consistent with the original disclosure. Any amendments must be supported by the original specification as it existed at the time of the reexamination order.

To learn more:

Topics: MPEP 2200 - Citation Of Prior Art And Ex Parte Reexamination Of Patents, MPEP 2250 - Amendment By Patent Owner, Patent Law, Patent Procedure
Tags: ex parte reexamination, new matter, Patent Specification, Specification Amendments