MPEP § 2234 — MPEP § 2234
Current through: 2022-07-01

2234-Entry of Amendments 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2234 
 

 
 
 
 
 
 2234 Entry of Amendments [R-07.2022]

 
 37 CFR 1.121 Manner of making amendments in applications. 

 *****

 
 (j) Amendments in reexamination proceedings . Any
 proposed amendment to the description and claims in patents involved in
 reexamination proceedings must be made in accordance with § 1.530 .
 

 
 *****

 

 
 37 CFR 1.530 Statement by patent owner in ex parte reexamination; amendment by patent owner
 in ex parte or inter partes reexamination; inventorship change in ex parte or inter
 partes reexamination. 

 *****

 
 (d) Making amendments in a reexamination proceeding. A proposed
 amendment in an ex parte or an inter partes 
 reexamination proceeding is made by filing a paper directing that proposed
 specified changes be made to the patent specification, including the claims, or to
 the drawings. An amendment paper directing that proposed specified changes be made
 in a reexamination proceeding may be submitted as an accompaniment to a request
 filed by the patent owner in accordance with § 1.510(e) , as part of a patent
 owner statement in accordance with paragraph (b) of this section, or, where
 permitted, during the prosecution of the reexamination proceeding pursuant to §
 1.550(a) or § 1.937 .
 
 (1) Specification other than the claims, “Large Tables” (§
 1.58(c) ), a “Computer Program Listing Appendix” (§
 1.96(c) ), a “Sequence Listing” (§
 1.821(c) ), or a “Sequence Listing XML (§
 1.831(a) ). 
 (i) Changes to the specification, other
 than to the claims, “Large Tables” (§ 1.58(c) ), a “Computer Program Listing Appendix”
 (§ 1.96(c) ), a “Sequence Listing” (§
 1.821(c) ), or a “Sequence Listing XML” (§
 1.831(a) ), must be
 made by submission of the entire text of an added or rewritten
 paragraph, including markings pursuant to paragraph (f) of this
 section, except that an entire paragraph may be deleted by a statement
 deleting the paragraph, without presentation of the text of the
 paragraph. The precise point in the specification where any added or
 rewritten paragraph is located must be identified.
 

 (ii) Changes to “Large Tables,” a “Computer
 Program Listing Appendix,” a “Sequence Listing,” or a “Sequence
 Listing XML” must be made in accordance with § 1.58(g) for “Large Tables,” § 
 1.96(c)(5) for a “Computer Program Listing
 Appendix,” § 1.825 for a “Sequence
 Listing,” or § 1.835 for a
 “Sequence Listing XML.”
 

 
 

 (2) Claims . An amendment paper must include the
 entire text of each patent claim which is being proposed to be changed by
 such amendment paper and of each new claim being proposed to be added by
 such amendment paper. For any claim changed by the amendment paper, a
 parenthetical expression “amended,” “twice amended,” etc. , should follow the claim number. Each patent claim proposed to be
 changed and each proposed added claim must include markings pursuant to
 paragraph (f) of this section, except that a patent claim or proposed added
 claim should be canceled by a statement canceling the claim, without
 presentation of the text of the claim.
 

 (3) Drawings. Any change to the patent drawings must be
 submitted as a sketch on a separate paper showing the proposed changes in
 red for approval by the examiner. Upon approval of the changes by the
 examiner, only new sheets of drawings including the changes and in
 compliance with § 1.84 must be filed.
 Amended figures must be identified as “Amended,” and any added figure must
 be identified as “New.” In the event a figure is canceled, the figure must
 be surrounded by brackets and identified as “Canceled.” 
 

 (4) The formal requirements for papers making up the
 reexamination proceeding other than those set forth in this section are set
 out in §
 1.52 .
 

 
 

 (e) Status of claims and support for claim changes. Whenever there
 is an amendment to the claims pursuant to paragraph (d) of this section, there
 must also be supplied, on pages separate from the pages containing the changes,
 the status ( i.e., pending or canceled), as of the date of the
 amendment, of all patent claims and of all added claims, and an explanation of the
 support in the disclosure of the patent for the changes to the claims made by the
 amendment paper.
 

 (f) Changes shown by markings . Any changes relative to
 the patent being reexamined which are made to the specification, including the
 claims, must include the following markings:
 
 (1) The matter to be omitted by the reexamination proceeding
 must be enclosed in brackets; and
 

 (2) The matter to be added by the reexamination proceeding must
 be underlined.
 

 
 

 (g) Numbering of patent claims preserved . Patent
 claims may not be renumbered. The numbering of any claims added in the
 reexamination proceeding must follow the number of the highest numbered patent
 claim.
 

 (h) Amendment of disclosure may be required . The
 disclosure must be amended, when required by the Office, to correct inaccuracies
 of description and definition, and to secure substantial correspondence between
 the claims, the remainder of the specification, and the drawings.
 

 (i) Amendments made relative to patent. All amendments must be made
 relative to the patent specification, including the claims, and drawings, which
 are in effect as of the date of filing the request for reexamination.
 

 (j) No enlargement of claim scope . No amendment may
 enlarge the scope of the claims of the patent or introduce new matter. No
 amendment may be proposed for entry in an expired patent. Moreover, no amendment,
 other than the cancellation of claims, will be incorporated into the patent by a
 certificate issued after the expiration of the patent.
 

 (k) Amendments not effective until certificate . 
 Although the Office actions will treat proposed amendments as though they have
 been entered, the proposed amendments will not be effective until the
 reexamination certificate is issued and published.
 

 
 *****

 

 Amendments which comply with 37 CFR 1.530(d) through
 (j) 
 (and are formally presented pursuant to 37 CFR 1.52(a) and 37 CFR 1.52(b) , and
 contain all fees required by 37 CFR 1.20(c) ) are entered in the
 reexamination file.
 

 Patent claims must not be renumbered, and the numbering of the claims
 added during reexamination must follow the number of the highest numbered patent claim.
 

 ALL amendments in reexamination proceedings, including examiner’s
 amendments made at the time when the Notice of Intent to Issue Ex Parte 
 Reexamination Certificate (NIRC) is prepared ( 37 CFR 1.121(g) does not apply in
 reexamination proceedings), must be presented in the form of a full copy of the text of
 each claim which is amended and each paragraph of the description which is amended. In
 other words, the entire claim or paragraph must be presented for any amendment of the claim
 or paragraph.
 

 If a portion of the text is amended more than once, each amendment should
 indicate ALL of the changes (insertions and deletions) in relation to
 the current text of the patent under reexamination.
 

 Although amendments will be entered for purposes of examination, the
 amendments are not legally effective until the reexamination certificate is issued and
 published.
 

 See MPEP §
 2250 for manner of making amendments by patent owner and for
 examples of proper claim amendment format. For clerical handling of amendments, see
 MPEP §
 2270 . See also MPEP § 2221 for amendments included in the
 request filed under 35
 U.S.C. 302 by the patent owner. For entry of amendments in a merged
 proceeding, see MPEP §
 2283 and § 2285 .
 

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 2201-Introduction 

 2202-Citation of Prior Art and Written Statements 

 2203-Persons Who May Cite Prior Art or Written Statements 

 2204-Time for Filing Prior Art or Section 301 Written Statements 

 2205-Content of Prior Art or Section 301 Written Statements 

 2206-Submission and Handling of Prior Art or Section 301 Written Statements 

 2207-Entry of Court Decision in Patent File 

 2208-Service of Prior Art or Section 301 Written Statements on Patent Owner 

 2209-Ex Parte Reexamination 

 2210-Request for Ex Parte Reexamination under 35 U.S.C. 302 

 2211-Time for Requesting Ex Parte Reexamination under 35 U.S.C. 302 

 2212-Persons Who May File a Request for Ex Parte Reexamination under 35 U.S.C. 302 
 2212.01-Inquiries from Persons Other Than the Patent Owner 

 
 

 2213-Representative of Requester 

 2214-Content of Request for Ex Parte Reexamination Filed under 35 U.S.C. 302 

 2215-Fee for Requesting Ex Parte Reexamination under 35 U.S.C. 302 

 2216-Substantial New Question of Patentability 

 2217-Statement Applying Prior Art in a Request Filed under 35 U.S.C. 302 

 2218-Copies of Prior Art 

 2219-Copy of Printed Patent 

 2220-Certificate of Service 

 2221-Amendments Included in Request Filed under 35 U.S.C. 302 by Patent Owner 

 2222-Address of Patent Owner 

 2223-Withdrawal of Attorney or Agent 

 2224-Correspondence 

 2225-Untimely Paper Filed Prior to Order under 35 U.S.C. 304 

 2226-Initial Processing of Request for Ex Parte Reexamination Filed under 35 U.S.C. 302 

 2227-Incomplete Request for Ex Parte Reexamination Filed under 35 U.S.C. 302 

 2228-[Reserved] 

 2229-Notice of Request under 35 U.S.C. 302 for Ex Parte Reexamination in Official Gazette 

 2230-Constructive Notice to Patent Owner 

 2231-Processing of Request Corrections 

 2232-Public Access to Reexaminations Filed under 35 U.S.C. 302 
 2232.01-Determining if a Reexamination Request Was Filed under 35 U.S.C. 302 for a Patent 

 
 

 2233-Processing in Central Reexamination Unit and Technology Center 

 2234-Entry of Amendments 

 2235-Record Systems 

 2236-Assignment of Reexamination 

 2237-Transfer Procedure 

 2238-Time Reporting 

 2239-Reexamination Ordered at the Director’s Initiative 

 2240-Decision on Request Filed under 35 U.S.C. 302 

 2241-Time for Deciding Request Filed under 35 U.S.C. 302 

 2242-Criteria for Deciding Request Filed under 35 U.S.C. 302 

 2243-Claims Considered in Deciding Request Filed under 35 U.S.C. 302 

 2244-Prior Art on Which the Determination Is Based in Requests Filed under 35 U.S.C. 302 

 2245-Processing of Decision 

 2246-Decision Ordering Reexamination under 35 U.S.C. 304 

 2247-Decision under 35 U.S.C. 303 on Request for Reexamination filed Under 35 U.S.C. 302, Request Denied 
 2247.01-Examples of Decisions on Request for Reexamination 

 
 

 2248-Petition From Denial of Request Filed Under 35 U.S.C. 302 

 2249-Patent Owner’s Statement in Reexaminations Filed Under 35 U.S.C. 302 

 2250-Amendment by Patent Owner 
 2250.01-Correction of Patent Drawings 

 2250.02-Correction of Inventorship 

 2250.03-Fees for Adding Claims and for Filing a Petition 

 
 

 2251-Reply by Third Party Requester 

 2252-Consideration of Statement and Reply 

 2253-Consideration by Examiner 

 2254-Conduct of Ex Parte Reexamination Proceedings 

 2255-Who Reexamines 

 2256-Prior Art Patents and Printed Publications Reviewed by Examiner in Reexamination 

 2257-Listing of Prior Art 

 2258-Scope of Ex Parte Reexamination 
 2258.01-Use of Previously Cited/Considered Art in Rejections 

 2258.02-Claiming Foreign Priority and Domestic Benefit in Reexamination 

 
 

 2259-Res Judicata and Collateral Estoppel in Reexamination Proceedings 

 2260-Office Actions 
 2260.01-Dependent Claims 

 
 

 2261-Special Status for Action 

 2262-Form and Content of Office Action 

 2263-Time for Response 

 2264-Mailing of Office Action 

 2265-Extension of Time 

 2266-Responses 
 2266.01-Submission Not Fully Responsive to Non-Final Office Action 

 2266.02-Examiner Issues Notice of Defective Paper in Ex Parte Reexamination 

 2266.03-Service of Papers 

 
 

 2267-Handling of Inappropriate or Untimely Filed Papers 

 2268-Petition for Entry of Late Papers for Revival of Reexamination Proceeding 

 2269-Reconsideration 

 2270-Clerical Handling 

 2271-Final Action 
 2271.01-Panel Review 

 
 

 2272-After Final Practice 

 2273-Appeal in Ex Parte Reexamination 

 2274-Appeal Brief 

 2275-Examiner’s Answer 

 2276-Oral Hearing 

 2277-Board Decision 

 2278-Action Following Decision 

 2279-Appeal to Courts 

 2280-Information Material to Patentability in Reexamination Proceeding Filed under 35 U.S.C. 302 

 2281-Interviews in Ex Parte Reexamination Proceedings 

 2282-Notification of Existence of Prior or Concurrent Proceedings and Decisions Thereon 

 2283-Multiple Copending Ex Parte Reexamination Proceedings 

 2284-Copending Ex Parte Reexamination and Interference Proceedings 

 2285-Copending Ex Parte Reexamination and Reissue Proceedings 

 2286-Ex Parte Reexamination and Litigation Proceedings 
 2286.01-Reexamination and Inter Partes Review Proceedings, Post-Grant Review, and Covered Business Method Patent Review 

 
 

 2287-Conclusion of Ex Parte Reexamination Proceeding 
 2287.01-Examiner Consideration of Submissions After a NIRC 

 
 

 2288-Issuance of Ex Parte Reexamination Certificate 

 2289-Reexamination Review 

 2290-Format of Ex Parte Reexamination Certificate 

 2291-Notice of Ex Parte Reexamination Certificate Issuance in Official Gazette 

 2292-Distribution of Certificate 

 2293-Intervening Rights 

 2294-Concluded Reexamination Proceedings 

 2295-Reexamination of a Reexamination 

 2296-USPTO Forms To Be Used In Ex Parte Reexamination 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:50:43