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.
- (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.”
In the reexamination proceeding, the copy of the patent drawings submitted pursuant to 37 CFR 1.510(b)(4) will be used for reexamination purposes, provided no change whatsoever is made to the drawings. If there is to be ANY change in the drawings, a new sheet of drawings for each sheet changed must be submitted. The change may NOT be made on the original patent drawings.
37 CFR 1.530(d)(3) sets forth the manner of making amendments to the drawings. Amendments to the original patent drawing sheets are not permitted, and any change to the patent drawings must be in the form of a new sheet of drawings for each drawing sheet that is changed. Any amended figure(s) must be identified as “Amended” and any added figure(s) must be identified as “New.” In the event a figure is canceled, the figure must be surrounded by brackets and identified as “Canceled.”
Where the patent owner wishes to change/amend the drawings, the patent owner should submit a sketch in permanent ink showing proposed change(s)/amendment(s), for approval by the examiner. The submitted sketch should be presented as a separate paper, which is clearly labeled as “Annotated Sheet,” and it will be made part of the record. Once the proposed changes are approved, sheets of substitute or new drawings must be submitted for each drawing sheet that is to be changed/amended. If a new drawing sheet contains multiple figures, each figure must be marked as “amended” or “new,” if applicable, to comply with the requirements of 37 CFR 1.530(d)(3). For example, if the new drawing sheet contains Figures 1-3 but only Figure 2 is amended, the new drawing sheet must identify Figure 2 as “Amended.” It is not sufficient to generally indicate that the entire sheet is amended by, e.g., placing the term “Amended” in the header of the drawing sheet.
The new sheets of drawings must be entered into the record in the reexamination file prior to the preparation of a Notice of Intent to Issue Ex Parte Reexamination Certificate (NIRC). If a proposed drawing correction has been approved but the new sheets of drawings have not been filed, and the proceeding is otherwise in condition for termination of the prosecution by means of a NIRC, an ex parteQuayle Office action should be prepared – setting an appropriate shortened statutory time period (SSP) for the filing of the new sheets of drawing. If the reexamination was requested by a third party requester, the examiner should set an SSP of ONE MONTH or thirty days, whichever is longer. If the reexamination was requested by the patent owner, if the reexamination was ordered under 35 U.S.C. 257, or if it is a Director ordered reexamination, the examiner should set an SSP of TWO MONTHS. If the new sheets of drawings are not timely filed in response to the Quayle action, the reexamination certificate will be issued with drawings that do not reflect the changes/amendments that were proposed by the patent owner.