What is the examiner’s role in ensuring proper claim terminology?

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.

The examiner plays a crucial role in ensuring proper claim terminology by scrutinizing claims for new matter and new terminology. MPEP 608.01(o) states:

Note that examiners should ensure that the terms and phrases used in claims presented late in prosecution of the application (including claims amended via an examiner’s amendment) find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description, see 37 CFR 1.75(d)(1).

If the examiner finds that claims lack proper support or antecedent basis, they may require the applicant to amend the description or object to the specification using form paragraph 7.44.