When can a patent owner file an amendment in an ex parte reexamination ordered under 35 U.S.C. 257?

In an ex parte reexamination ordered under 35 U.S.C. 257, the patent owner’s ability to file amendments is more restricted compared to standard reexaminations. According to MPEP 2823:

“the patent owner cannot file an amendment to the patent until after supplemental examination is concluded and after the issuance of an initial Office action on the merits in any ex parte reexamination proceeding ordered under 35 U.S.C. 257“

This means that patent owners must wait until two conditions are met before filing amendments:

• The supplemental examination is concluded
• An initial Office action on the merits has been issued in the resulting ex parte reexamination

This restriction ensures that the reexamination process begins with the original patent claims as they were granted, without any immediate amendments from the patent owner.

To learn more:

• patent amendments
• ex parte reexamination
• supplemental examination