What claims are considered in the determination for patent reexamination?
The determination for patent reexamination is made based on the claims that are in effect at the time of the determination. This is explicitly stated in MPEP 2644:
“The determination should be made on the claims in effect at the time the determination is made. 37 CFR 1.923.”
This means that examiners consider the most current version of the claims when deciding whether there is a substantial new question of patentability or a reasonable likelihood that the requester will prevail. It’s important for both requesters and patent owners to be aware of this, as any amendments or changes to the claims prior to the determination could affect the outcome.
To learn more:
Topics:
MPEP 2600 - Optional Inter Partes Reexamination,
MPEP 2644 - Prior Art On Which The Determination Is Based,
Patent Law,
Patent Procedure