MPEP § 2270 — Clerical Handling

Ninth Edition, Revision 01.2024 · last revised R-07.2015

The legal instrument examiners and paralegals will handle most of the initial clerical processing of the reexamination file. The Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS) provides oversight as to clerical processing.

Amendments submitted with a request filed under 35 U.S.C. 302, or after reexamination is ordered under 35 U.S.C. 304 or under 35 U.S.C. 257, and which comply with 37 CFR 1.530(d)-(j), will generally be entered for purposes of reexamination in the reexamination file if submitted prior to a final action. See MPEP § 2234 and § 2250 for the manner of entering amendments.

For entry of amendments in a merged reissue-reexamination proceeding, see MPEP § 2283 and § 2285.

Where an amendment is submitted in proper form prior to a final action and it is otherwise appropriate to enter the amendment, the amendment will be entered for purposes of the reexamination proceeding, even though the amendment does not have legal effect until the certificate is issued. Any “new matter” amendment to the disclosure (35 U.S.C. 132) will be required to be canceled, and claims containing new matter will be rejected under 35 U.S.C. 112. A “new matter” amendment to the drawing is ordinarily not entered. See MPEP §§ 608.04, 608.04(a), and 608.04(c). Where an amendment enlarges the scope of the claims of the patent, the amendment will be entered; however the appropriate claims will be rejected under 35 U.S.C. 305.

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