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Amendment Rights in Reexamination

By Matthew C. Phillips and Kevin B. Laurence of Stoel Rives LLP

The PTO is considering revisions to its rules for reexamination.1 Specifically, the PTO wants to streamline reexaminations, recognizing that they can be slow proceedings. To that end, the PTO has proposed numerous changes meant to impose a stricter compact prosecution model on the reexamination process and to allow examiners in the Central Reexamination Unit (CRU) to take certain shortcuts to more efficiently deal with issues in reexamination.

Some proposals would limit the ability of patent owners to amend their patents in reexamination. According to one proposal, “Claim amendments will not be entered unless accompanied by a statement explaining how the proposed new claim language renders the claims patentable in light of an SNQ [substantial new question of patentability].”2 This proposal is meant to exclude from reexamination extraneous amendments, which can complicate and prolong a reexamination.

The PTO relies on In re Freeman3 to support the premise underlying this proposal: That the only right to amend claims in reexamination is to address an SNQP To view the complete article you must be logged in
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