35 U.S.C. § 305
Conduct of reexamination proceedings
After the times for filing the statement and reply provided for by section 304 have expired, reexamination will be conducted according to the procedures established for initial examination under the provisions of sections 132 and 133. In any reexamination proceeding under this chapter, the patent owner will be permitted to propose any amendment to his patent and a new claim or claims thereto, in order to distinguish the invention as claimed from the prior art cited under the provisions of section 301, or in response to a decision adverse to the patentability of a claim of a patent. No proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding under this chapter. All reexamination proceedings under this section, including any appeal to the Patent Trial and Appeal Board, will be conducted with special dispatch within the Office.
Notes of Decisions
Cited in 113
cases (13 in the last 5 years), 1983–2026 · leading case: Quantum Corp. v. Rodime, Plc, 65 F.3d 1577 (Fed. Cir. 1995).
Quantum Corp. v. Rodime, Plc, 65 F.3d 1577 (Fed. Cir. 1995). “The question in this declaratory judgment action is whether amendments made during a prior reexamination proceeding impermissi-bly broadened the scope of the patent claims at issue in violation of 35 U.S.C. § 305 (1988), 1 and, if so, the legal effect thereof.”
Total Containment, Inc. v. Environ Prods., Inc., 921 F. Supp. 1355 (E.D. Pa. 1995). “The defendants assert that some of the claims added during reexamination are invalid because they violate 35 U.S.C. § 305 . TCI argues that, in addition to preventing the defendant from attacking the validity of the original claims, assignor estoppel also prevents the defendant…”
In Re Jerre M. Freeman, 30 F.3d 1459 (Fed. Cir. 1994). “90/001,235 (the ’235 application) 1 under 35 U.S.C. § 305 as impermissibly broadening the scope of the claims in a reexamination proceeding.”
Senju Pharm. Co. v. Apotex Inc., 746 F.3d 1344 (Fed. Cir. 2014). “According to Apotex, in order for Senju to comply with the statutory requirements for reexamination outlined in 35 U.S.C. § 305 , the claim scope of its reexamined ’045 claims had to be the same as or narrower than the claim scope of the original ’045 claims.”
Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). “See 35 U.S.C. § 305 . And in reissue proceedings, the patent owner is not required to come forward with affirm- ative evidence showing that it has not added new matter; instead, the PTO must evaluate this question.”
In Re Berwyn E. Etter, 756 F.2d 852 (Fed. Cir. 1985). “Review of the statutes, legislative history, regulations, and case law compels the view that § 282 is not applicable to claims about which “a substantial new question of patentability,” 35 U.S.C. § 305 , is under consideration in a reexamination proceeding.”
In Re Cuozzo Speed Tech., LLC, 793 F.3d 1268 (Fed. Cir. 2015). “” 35 U.S.C. § 305 . The focus of reexamination pro- ceedings “returns essentially to that present in an initial examination.”
In Re Swanson, 540 F.3d 1368 (Fed. Cir. 2008). “The focus on previous examinations rather than prior litigation follows from the fact that “reexamination[s are] conducted according to the procedures established for initial examination,” 35 U.S.C. § 305 , and PTO examination procedures have distinctly different standards,…”
Cordis Corp. v. Medtronic AVE, Inc., 194 F. Supp. 2d 323 (D. Del. 2002). “(2) Claim 44 of the ’762 patent: contributory infringement; invalid pursuant to 35 U.S.C. § 305 . (3) Claim 22 of the ’332 patent: no literal infringement; no infringement under the doctrine of equivalents; invalid for obviousness; not invalid for failure to comply with the…”
Simpleair, Inc. v. Google LLC, 884 F.3d 1160 (Fed. Cir. 2018). “This conclusion rested in part on 35 U.S.C. § 305 , which states "[n]o proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding under this chapter.”
In Re Cuozzo Speed Tech., LLC, 778 F.3d 1271 (Fed. Cir. 2015). “While the reexamination, interference, and reissue statutes and regulations refer to the “patentability” of a claim, 35 U.S.C. §§ 305 ; 135; 37 C.F.R. § 1.97 , the term 8 IN RE CUOZZO SPEED TECHNOLOGIES, LLC “validity” is used throughout the Inter Partes Review statute.”
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., A/K/A Smc Corp., & Smc Pneumatics, Inc., 344 F.3d 1359 (Fed. Cir. 2003). “Festo points out that if such a claim had been presented for reexamination it would have been subject to rejection as new matter or for enlarged claim scope prohibited by 35 U.S.C. § 305 . Judicial hindsight is not a basis for rewriting the prosecution record, and the points…”
Annotations are extracted automatically from the opinions in the
Syfert caselaw corpus and ranked by authority, recency, and
treatment. Dots show Syfertize treatment of the citing case itself.