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2670 Clerical Handling [Added R-2] - 2600 Optional Inter Partes Reexamination
2670 Clerical Handling [Added R-2]
I. CENTRAL REEXAMINATION UNIT PROCESSING
Central Reexamination Unit (CRU) support staff, will carry out clerical handling and processing of inter partes reexamination cases. When the case is in the Technology Center (TC), the TC support staff will do the clerical processing needed for the reexamination, and the Special Program Examiner (SPRE) and paralegal will oversee the clerical processing.
II. TECHNOLOGY CENTER PROCESSING
The TC clerical staff will provide support for the examiner's preparation of Office actions, and for handling the case as needed within the TC. The clerical staff will perform all PALM matters needed for the case in the TC, e.g., PALMing in the file and PALMing it to the examiner. After the examiner has completed a decision on the request for inter partes reexamination and/or an Office action, the TC clerical staff will make a copy of the decision and/or Office action for the patent owner and for the third party requester(s). The clerical staff will also make copies of any references which are needed. A transmittal form PTOL-2070 with the third party requester's address will be completed by the TC (if a copy for mailing is not already in the case file). The clerical staff will coordinate its activities with those of the examiner and the TC SPRE and paralegal.
III. AMENDMENT ENTRY
While amendments in an ex parte reexamination proceeding are entered by the TC clerical staff, amendments in an inter partes reexamination proceeding (which comply with 37 CFR 1.941) are entered by the CRU. Otherwise, the entry of amendments in an ex parte reexamination proceeding is the same as entry of amendments in an inter partes reexamination proceeding. See MPEP § 2234 and § 2250 for manner of entering amendments.
For entry of amendments in a merged inter partes reexamination proceeding (i.e., an inter partes reexamination proceeding merged with another reexamination proceeding or with a reissue application), see MPEP § 2686.01 and § 2686.03.
Where an amendment is submitted in proper form 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 claims will be rejected under 35 U.S.C. 314(a).
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