2250 Amendment by Patent Owner [R-01.2024]

Amendments to the patent (one which has not expired) may be filed by the patent owner with the request under 35 U.S.C. 302. See MPEP § 2221. Such amendments, however, may not enlarge the scope of a claim of the patent or introduce new matter. 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. The test for when an amended or “new claim enlarges the scope of an original claim under 35 U.S.C. 305 is the same as that under the 2-year limitation for reissue applications adding enlarging claims under 35 U.S.C. 251, last paragraph.” In re Freeman, 30 F.3d 1459, 1464, 31 USPQ2d 1444, 1447 (Fed. Cir. 1994). See MPEP § 2258 for a discussion of enlargement of claim scope. For handling of new matter, see MPEP § 2270. Amendments proposed in a reexamination will normally be entered and be considered to be entered for purposes of prosecution before the Office (if they are timely and comply with the rules); however, the amendments do not become effective in the patent until the reexamination certificate under 35 U.S.C. 307 is issued and published.

No amendment will be permitted where the certificate issues after expiration of the patent. See 37 CFR 1.530(d)(3). The patent expiration date for a utility patent, for example, is determined by taking into account the term of the patent, whether maintenance fees have been paid for the patent, whether any disclaimer was filed as to the patent to shorten its term, any patent term extensions or adjustments for delays within the USPTO under 35 U.S.C. 154 (see MPEP § 2710et seq.), and any patent term extensions under 35 U.S.C. 156 for premarket regulatory review (see MPEP § 2750et seq.). Any other relevant information should also be taken into account.

Amendment Entry — Amendments which comply with 37 CFR 1.530(d)-(j) (and are formally presented pursuant to 37 CFR 1.52(a) and (b), and contain all fees required by 37 CFR 1.20(c)) will be entered in the reexamination file pursuant to the guidelines set forth in MPEP § 2234.

I. MANNER OF MAKING AMENDMENTS IN REEXAMINATION PROCEEDINGS

Amendments made in a reexamination proceeding must comply with the formal requirements of 37 CFR 1.52(a) and (b), as do all papers that are to become a part of the permanent USPTO file records in a patent application or proceeding. If an amendment is submitted to add claims to the patent being reexamined (i.e., to provide new claims), then excess claim fees pursuant to 37 CFR 1.20(c)(3) and (4) may be applicable to the presentation of the added claims. See MPEP § 2250.03. In addition, the provisions of 37 CFR 1.530(d)-(k) uniquely apply to amendments in both ex parte and inter partes reexamination proceedings, as follows.

A. The Specification

37 CFR 1.530(d)(1)(i) relates to the manner of making amendments to the reexamination “specification” (other than the claims, “Large Tables” submitted in ASCII plain text (37 CFR 1.58(c)), a “Computer Program Listing Appendix” (37 CFR 1.96(c)), a “Sequence Listing” (37 CFR 1.821(c)), or a “Sequence Listing XML” (37 CFR 1.831(a))). It is not to be used for making amendments to the claims, the drawings, “Large Tables” submitted in ASCII plain text, a “Computer Program Listing Appendix”, a “Sequence Listing” or a “Sequence Listing XML.” 37 CFR 1.530(d)(1)(ii) states that changes to “Large Tables,” a “Computer Program Listing Appendix,” a “Sequence Listing,” or a “Sequence Listing XML” must be made in accordance with 37 CFR 1.58(g) for “Large Tables” submitted in ASCII plain text, 37 CFR 1.96(c)(5) for a “Computer Program Listing Appendix,” 37 CFR 1.825 for a “Sequence Listing,” and 37 CFR 1.835 for a “Sequence Listing XML.”

All amendments submitted under 37 CFR 1.530(d)(1)(i), which include any deletions or additions, must be made by submission of the entire text of each added or rewritten paragraph with markings (single brackets and underlining) showing the changes. It should be noted that examiner’s amendments made at the time when the Notice of Intent to Issue Reexamination Certificate (NIRC) is prepared also require the full text of any paragraph to be changed, with markings. The exception for examiner’s amendment set forth in 37 CFR 1.121(g) does not apply to examiner’s amendments in reexamination proceedings. The only exception to this requirement is that an entire paragraph of specification text may be deleted from the specification by a statement deleting the paragraph without the presentation of the text of the paragraph. However, presentation of the text of the paragraph to be deleted will assist the Office in proper entry of the amendment.

In accordance with 37 CFR 1.530(d)(1)(i), all paragraphs which are added to the specification must be submitted as completely underlined.

37 CFR 1.530(d)(1)(i) requires that the precise point where any added or rewritten paragraph is located must be indicated. This is important because uncertainty about the precise point for an amendment may cause delay in the publication of the reexamination certificate. Care should be taken to clearly identify the precise point for each change to the specification.

37 CFR 1.530(d)(1)(i) defines the “markings” by reference to 37 CFR 1.530(f) as being single brackets for deletion and underlining for addition. All bracketing and underlining is made in comparison to the original patent; not in comparison with the prior amendment.

Where a change is made in one sentence, paragraph or page of the patent, and the change increases or decreases the size of the sentence, paragraph or page, this will have no effect on the body of the reexamination “specification” (the copy of the patent). This is because all insertions are made as blocked additions of paragraphs. Therefore, a reexamination patent owner need not be concerned with page formatting considerations when presenting amendments to the Office.

B. The Claims

37 CFR 1.530(d)(2) relates to the manner of making amendments to the claims in a reexamination proceeding. It is not to be used for making amendments to the remainder of the specification or to the drawings.

37 CFR 1.530(d)(2) requires that:

• (A) for each claim that is proposed to be amended by the amendment paper being submitted (the current amendment paper), the entire text of the claim must be presented with appropriate markings showing the changes to the claim;
• (B) for each proposed new claim which is added in the reexamination by the amendment paper being submitted (the current amendment paper), the entire text of the proposed new claim must be presented and it must be underlined throughout;
• (C) a patent claim is canceled by a direction to cancel that claim, there is no need to present the text of the patent claim surrounded by brackets; and
• (D) a proposed new claim (previously added in the reexamination) is canceled by a direction to cancel that claim.

Examiner’s amendments made at the time when the Notice of Intent to Issue Reexamination Certificate (NIRC) is prepared also require the full text of any claim to be changed, with markings. The exception for examiner’s amendment set forth in 37 CFR 1.121(g) does not apply to examiner’s amendments in reexamination proceedings.

In accordance with 37 CFR 1.530(e), each amendment submitted must set forth the status of all patent claims and all added claims as of the date of the submission. The status to be set forth is whether the claim is pending, or canceled. The failure to submit the claim status will generally result in a notification to the patent owner of an informal response (see MPEP § 2266.02) prior to final rejection. Such an amendment submitted after final rejection will not be entered.

Also in accordance with 37 CFR 1.530(e), each claim amendment must be accompanied by an explanation of the support in the disclosure of the patent for the amendment (i.e., support for the changes made in the claim(s), support for any insertions and deletions). The failure to submit an explanation will generally result in a notification to the patent owner that the amendment prior to final rejection is not completely responsive since the failure to set forth the support in the disclosure goes to the merits of the case (see MPEP § 2266.01). Such an amendment submitted after final rejection will not be entered.

37 CFR 1.530(f) identifies the type of markings required in the claim to be amended as underlining for added material and single brackets for material deleted.

37 CFR 1.530(g) states that original patent claims may not be renumbered. A patent claim retains its number even if it is canceled in the reexamination proceeding, and the numbering of any added claims must begin after the last original patent claim.

C. The Drawings

With respect to amendment of the drawings in a reexamination proceeding, see MPEP § 2250.01.

Form paragraph 22.12 may be used to advise patent owner of the proper manner of making amendments in an ex parte reexamination proceeding.

D. Form Paragraphs - Ex Parte Reexamination

The cover sheet to be used for mailing the notification to the patent owner will be PTOL-473.

As an alternative to using form paragraph 22.13, it would also be appropriate to use form PTOL-475.

Note that if the informal amendment is submitted after final rejection, form paragraph 22.13 and form PTOL-475 should not be used. Rather an advisory Office action (using form PTOL-467) should be issued indicating that the amendment was not entered. In the “Other” section, it should be explained that the amendment was not entered because it does not comply with 37 CFR 1.530(d)-(j), which sets forth the manner of making amendments in reexamination proceedings.

E. Form Paragraphs - Inter Partes Reexamination

See MPEP § 2666.01 for the form paragraphs to use in inter partes reexamination proceedings, in advising the patent owner as to the manner of making amendments.

II. ALL CHANGES ARE MADE VIS-A-VIS THE PATENT BEING REEXAMINED

When a reexamination certificate is printed, all underlined matter is printed in italics and all brackets are printed as they were inserted in the proceeding in order to thereby show exactly which additions and deletions have been made in the patent via the reexamination proceeding. In accordance with 37 CFR 1.530(i), all amendments to the patent being reexamined must be made relative to the patent specification in effect as of the date of the filing of the request for reexamination. The patent specification includes the claims and drawings. If there was a prior change to the patent (made via a concluded post-patent proceeding, e.g., prior reexamination certificate, reissue of the patent, certificate of correction, PTAB trial certificate, etc.), the first amendment must be made relative to the patent specification as changed by the prior proceeding or other mechanism for changing the patent. All amendments subsequent to the first amendment must also be made relative to the patent specification in effect as of the date of the filing of the request for reexamination, and not relative to the prior amendment. In those rare instances where a concluded post-patent proceeding changes the patent while the reexamination proceeding is pending, amendments will be made relative to the patent, as revised by the concluded proceeding, and 37 CFR 1.530(i) is waived to that extent.

III. AMENDMENT AFTER THE PATENT HAS EXPIRED

Pursuant to 37 CFR 1.530(j), “[n]o amendment may be proposed for entry in an expired patent.” Thus, if a patent expires during the pendency of a reexamination proceeding for a patent, all amendments to the patent claims and all claims added during the proceeding are withdrawn. The patent owner should be notified of this in the next Office action. The Office action will hold the amendments to be improper, and state that all subsequent reexamination will be on the basis of the unamended patent claims. This procedure is necessary since no amendments will be incorporated into the patent by a certificate after the expiration of the patent.

37 CFR 1.530(j) further states that “[m]oreover, no amendment, other than the cancellation of claims, will be incorporated into the patent by a certificate issued after the expiration of the patent.”

Thus, at the time the NIRC is to be issued, the examiner should ensure that all rejected and objected to claims are canceled. The examiner should issue an examiner’s amendment canceling any such claims not already canceled.

The cancellation of the original patent claims is the only “amendatory” change permitted in an expired patent.

IV. EXAMPLES

A substantial number of problems arise in the Office because of improper submission of proposed amendments in reexamination proceedings. The following examples are provided to assist in the preparation of proper proposed amendments in reexamination proceedings. In regard to status identifiers, examiners may accept an amendment even if the status identifier used is not a status identifier recommended by 37 CFR 1.530(d)(2) or 1.121(c).

• (A) Original Patent Description or Patent Claim Amended.
  • (1) Specification - submit a copy of the entire paragraph (of the specification of the patent) being amended with underlining and bracketing. Thus, the amendment would be presented as follows:

    Replace the paragraph beginning at column 4, line 23 with the following:

    Scanning [is] are controlled by clocks which are, in turn, controlled from the display tube line synchronization. The signals resulting from scanning the scope of the character are delivered in parallel, then converted into serial mode through a shift register, wherein the shift signal frequency is controlled by a clock that is controlled from the display tube line synchronization.

  • (2) Claims - for changes to the patent claims, one must submit a copy of the entire patent claim with the amendments shown by underlining and single bracketing. Thus, the amendment would be presented as follows:

    Amend claim 6 as follows:

    Claim 6. (amended), The apparatus of claim [5] 1 wherein the [first] second piezoelectric element is parallel to the [second] third piezoelectric element.

    If the dependency of any original patent claim is to be changed by amendment, it is proper to make that original patent claim dependent upon a later filed higher numbered claim.

• (B) Cancellation of Entire Claim(s).
  • (1) Original patent claim canceled - in writing, direct cancellation of the entire patent claim.

    Cancel claim 6.

  • (2) Proposed new claim (previously added in the reexamination) canceled - in writing, direct cancellation of the entire claim.

    Cancel claim 15.

• (C) Re-presentation of Original Patent Claims (no underlining or bracketing).

  Amend claim 4 to read as original patent claim 4:

  Claim 4. The apparatus of claim 1 wherein the first piezoelectric element is perpendicular to the second piezoelectric element.

• (D) Presentation of New Claims.

  Each proposed new claim (i.e., a claim not found in the patent, that is newly presented in the reexamination proceeding) should be presented with underlining throughout the claim, including the claim number. The status identifier “(new)” may or may not be underlined. Examiners may accept an amendment even if the claim number is not underlined or the status identifier(s) used is not a status identifier recommended by 37 CFR 1.530(d)(2) or 1.121(c).

  The following is an example of a presentation of a new claim:

  Insert new claim 7 as follows:

  Claim 7 (New). The apparatus of claim 5 further comprising electrodes attaching to said opposite faces of the second and third piezoelectric elements.

  Even though an original claim may have been canceled, the numbering of the original claims does not change. Accordingly, any added claims are numbered beginning with the next higher number than the number of claims in the original patent. If new claims have been added to the reexamination proceeding which are later canceled prior to the issuance of the reexamination certificate, the examiner will renumber, at the time of preparing the NIRC for subsequent issuance of the certificate, any remaining new claims in numerical order to follow the highest number of the claims in the original patent.

  A claim number previously assigned to a new claim that has been canceled should not be reassigned to a different new claim during the reexamination proceeding. For example, if new claim 5 added in a prior amendment is canceled in a later amendment, a different new claim added in a later amendment during the reexamination proceeding would be claim 6. Of course, at the time of preparing the NIRC, claim 6 would be renumbered for issue of the reexamination certificate as claim 5.

• (E) Amendment of New Claims.

  An amendment of a new claim (i.e., a claim not found in the patent, that was previously presented in the reexamination proceeding) must present the entire text of the new claim containing the amendatory material, and it must be underlined throughout the claim, including the claim number. The status identifier(s) may or may not be underlined. Examiners may accept an amendment even if the claim number is not underlined or the status identifier(s) used is not a status identifier recommended by 37 CFR 1.530(d)(2) or 1.121(c). The presentation cannot contain any bracketing or other indication of what was in the previous version of the claim. This is because all changes in the reexamination are made vis-a-vis the original patent, and not in comparison with any prior amendment. Although the presentation of the amended claim does not contain any indication of what is changed from a previous version of the claim, patent owner must point out what is changed, in the “Remarks” portion of the amendment. Also, as per 37 CFR 1.530(e), each change made in the claim must be accompanied by an explanation of the support in the disclosure of the patent (i.e., the reexamination specification) for the change.

  The following is one example to illustrate a proper amendment of a new claim:

  First Amendment (wherein claim 11 was first presented):

  Claim 11 (New). A knife comprising a handle portion and a notched blade portion.

  In the Remarks (supplied on a separate page):

  Status: The present application includes pending claims 1-11, with claims 1 and 11 being independent. With this amendment, applicant has added new independent claim 11. Support for this new claim is found in column 4, lines 26-41, column 5, lines 3-18, and column 6, lines 5-15.

  Second Amendment (wherein claim 11 is amended):

  Claim 11 (New, amended). A fishing knife comprising a bone handle portion and a notched blade portion.

  In the Remarks (supplied on a separate page):

  Status: The present application includes pending claims 1-11, with claims 1 and 11 being independent. With this amendment, applicant has amended new independent claim 11 as described below.

  Claim 11: Claim 11 is amended to add “fishing” before “knife” and “bone” before “handle.” Support for these changes is found in column 4, lines 34-41 and column 6, lines 5-8, respectively.

• (F) Amendment of Original Patent Claims More Than Once.

  The following example illustrates proper claim amendment of original patent claims in reexamination proceedings, where more than one amendment to a claim is made:

  • (1) Patent claim.

    Claim 1. A cutting means having a handle portion and a blade portion.

  • (2) Proper first amendment format.

    Claim 1. (amended), A [cutting means] knife having a bone handle portion and a notched blade portion.

  • (3) Proper second amendment format.

    Claim 1. (twice amended), A [cutting means] knife having a handle portion and a serrated blade portion.

  Note that the second amendment must include (1) the changes previously presented in the first amendment; i.e., [cutting means] knife, as well as (2) the new changes presented in the second amendment; i.e., serrated.

  The word bone was presented in the first amendment and is now to be deleted in the second amendment. Thus, “bone” is NOT to be shown in brackets in the second amendment. Rather, the word “bone” is simply omitted from the claim, since “bone” never appeared in the patent.

  The word notched which was presented in the first amendment is replaced by the word serrated in the second amendment. The word notched is being deleted in the second amendment and did not appear in the patent; accordingly, “notched” is not shown in any form in the claim. The word serrated is being added in the second amendment, and accordingly, “serrated” is added to the claim and is underlined.

  It should be understood that in the second amendment, the deletions of “notched” and “bone” are not changes from the original patent claim text and therefore, are not shown in the second amendment. In both the first and the second amendments, the entire claim is presented only with the changes from the original patent text.

  If the patent expires during an ex parte or inter partes reexamination proceeding and the patent claims have been amended in that reexamination proceeding, the Office will hold the amendments as being improper, and all subsequent reexamination will be on the basis of the unamended patent claims. This procedure is necessary since no amendments will be incorporated into the patent by certificate after the expiration of the patent.

V. CROSS REFERENCES TO OTHER AREAS

• (A) For clerical handling of amendments, see MPEP § 2270 for ex parte reexamination proceedings, and see MPEP § 2670 for inter partes reexamination proceedings.
• (B) As to amendments in a merged proceeding, see MPEP § 2283 for an ex parte reexamination merged with another ex parte reexamination and MPEP § 2285 for an ex parte reexamination merged with a reissue application. If an inter partes reexamination proceeding is included in the merger, see MPEP § 2686.01 and § 2686.03.
• (C) As to amendments in a pending reexamination proceeding where a reexamination certificate has issued for the patent based on a prior concluded reexamination, pursuant to MPEP § 2295, any amendment made in the pending reexamination proceeding must be presented as if the changes made to the patent text via the reexamination certificate (for the prior concluded reexamination) are a part of the original patent. All italicized text of the certificate is considered as if the text was present without italics in the original patent. Further, any text of the reexamination certificate found in brackets is considered as if it were never present in the patent at all. Thus, for making an amendment in the pending reexamination, all italicized text of the reexamination certificate is presented in the amendment without italics. Further, any text found in brackets in the reexamination certificate is omitted in the amendment.
• (D) As to amendments in a pending reexamination proceeding where a reissue patent has been granted, pursuant to MPEP § 2285, subsection II.A., an amendment in a reexamination of a reissued patent is made the same way as in a reexamination of a reexamined patent (i.e., as per MPEP § 2295). Thus, all italicized text of the reissue patent is presented in the amendment (made in the pending reexamination proceeding) without italics. Further, any text found in brackets in the reissue patent is omitted in the amendment (made in the pending reexamination proceeding).
• (E) As to amendments in a pending reexamination proceeding where a PTAB trial certificate has issued for the patent under reexamination, an amendment must be presented as if the changes made to the patent via the PTAB trial certificate are a part of the original patent. Similar to amendments where a reexamination certificate has issued, text added by the PTAB trial certificate should be presented without any markings and text deleted by the PTAB trial certificate should not be presented at all. See paragraph (C) above.
• (F) For handling a dependent claim in reexamination proceedings, see MPEP § 2260.01.

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