What are the restrictions on amendments in patent reexamination?
Amendments in patent reexamination are subject to several restrictions:
- They may not enlarge the scope of a claim of the patent or introduce new matter.
- Amended or new claims that broaden or enlarge the scope of a claim should be rejected under 35 U.S.C. 305.
- Amendments do not become effective in the patent until the reexamination certificate is issued and published.
- No amendment will be permitted where the certificate issues after expiration of the patent.
As stated in the MPEP: “Amended or new claims which broaden or enlarge the scope of a claim of the patent should be rejected under 35 U.S.C. 305.” This means that any amendment that expands the patent’s coverage is not allowed in reexamination.
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