What happens if an amendment enlarges the scope of claims in inter partes 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.

In inter partes reexamination, amendments that enlarge the scope of the claims are not permitted and will be rejected. Specifically:

• If an amendment is found to enlarge the scope of the claims of the patent, those claims will be rejected under 35 U.S.C. 314(a).
• This rejection is based on the prohibition against broadening the scope of the claims in a reexamination proceeding.

MPEP 2670 clearly states: “Where an amendment enlarges the scope of the claims of the patent, the claims will be rejected under 35 U.S.C. 314(a).” This ensures that the reexamination process is not used to improperly expand the coverage of the patent beyond its original scope.