USPTO Limits Reexamination Only To Requested Claims

After 24 years of reexamination practice, the U.S. Patent and Trademark Office (USPTO) has made a major policy shift. The USPTO revised its policy by stating that it will only examine claims in which the requester requests examination and a substantial new question (SNQ) of patentability was raised. (NOTICE OF CLARIFICATION OF OFFICE POLICY TO EXERCISE DISCRETION IN REEXAMINING FEWER THAN ALL OF THE PATENT CLAIMS, October 5, 2006.) This policy is being implemented to facilitate the USPTO’s compliance with its statutory mandate for "special dispatch" of 35 U.S.C. §§ 305 and 314(c) in handling ex parte and inter partes reexaminations. According to the USPTO, "the non-requested claims may be claims that are currently being litigated, thus introducing complexities delaying the proceeding as to the requested claims." The USPTO noted that the Manual of Patent Examining Procedure (MPEP) states that each claim of a patent will be examined, citing MPEP § 2258 for ex parte reexaminations and