MPEP - Chapter 2200 - Citation of Prior Art and Ex Parte ... 2200 Citation of Prior Art and Ex Parte Reexamination of Patents 2201 Introduction Citation of Prior Art and Written Statements

Chapter 2200 Citation of Prior Art and Ex ParteReexamination of Patents

Introduction2201 Citation of Prior Art and WrittenStatements

2202

Persons Who May Cite Prior Art orWritten Statements

2203

Time for Filing Prior Art or Section 301Written Statements

2204

Content of Prior Art or Section 301Written Statements

2205

Submission and Handling of Prior Artor Section 301 Written Statements

2206

Entry of Court Decision in Patent File2207 Service of Prior Art or Section 301Written Statements on Patent Owner

2208

Ex Parte Reexamination2209 Request for Ex Parte Reexaminationunder 35 U.S.C. 302

2210

Time for Requesting Ex ParteReexamination under 35 U.S.C. 302

2211

Persons Who May File a Request forEx Parte Reexamination under 35U.S.C. 302

2212

Inquiries from Persons Other Thanthe Patent Owner

2212.01

Representative of Requester2213 Content of Request for Ex ParteReexamination Filed under 35 U.S.C.302

2214

Fee for Requesting Ex ParteReexamination under 35 U.S.C. 302

2215

Substantial New Question ofPatentability

2216

Statement Applying Prior Art in aRequest Filed under 35 U.S.C. 302

2217

Copies of Prior Art2218 Copy of Printed Patent2219 Certificate of Service2220 Amendments Included in Request Filedunder 35 U.S.C. 302 by Patent Owner

2221

Address of Patent Owner2222 Withdrawal of Attorney or Agent2223 Correspondence2224 Untimely Paper Filed Prior to Orderunder 35 U.S.C. 304

2225

Initial Processing of Request for ExParte Reexamination Filed under 35U.S.C. 302

2226

Incomplete Request for Ex ParteReexamination Filed under 35 U.S.C.302

2227

[Reserved]2228 Notice of Request under 35 U.S.C. 302for Ex Parte Reexamination in OfficialGazette

2229

Constructive Notice to Patent Owner2230 Processing of Request Corrections2231 Public Access to Reexaminations Filedunder 35 U.S.C. 302

2232

Determining if a ReexaminationRequest Was Filed under 35 U.S.C.302 for a Patent

2232.01

Processing in Central ReexaminationUnit and Technology Center

2233

Entry of Amendments2234 Record Systems2235 Assignment of Reexamination2236 Transfer Procedure2237 Time Reporting2238 Reexamination Ordered at theDirector’s Initiative

2239

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

2240

Time for Deciding Request Filed under35 U.S.C. 302

2241

Criteria for Deciding Request Filedunder 35 U.S.C. 302

2242

Claims Considered in Deciding RequestFiled under 35 U.S.C. 302

2243

Prior Art on Which the DeterminationIs Based in Requests Filed under 35U.S.C. 302

2244

Processing of Decision2245 Decision Ordering Reexaminationunder 35 U.S.C. 304

2246

Decision under 35 U.S.C. 303 onRequest for Reexamination filed Under35 U.S.C. 302, Request Denied

2247

Examples of Decisions on Requestfor Reexamination

2247.01

Petition From Denial of Request FiledUnder 35 U.S.C. 302

2248

Patent Owner’s Statement inReexaminations Filed Under 35 U.S.C.302

2249

Amendment by Patent Owner2250 Correction of Patent Drawings2250.01

Rev. 08.2017, January 20182200-1

Correction of Inventorship2250.02 Fees for Adding Claims and for Filinga Petition

2250.03

Reply by Third Party Requester2251 Consideration of Statement and Reply2252 Consideration by Examiner2253 Conduct of Ex Parte ReexaminationProceedings

2254

Who Reexamines2255 Prior Art Patents and PrintedPublications Reviewed by Examiner inReexamination

2256

Listing of Prior Art2257 Scope of Ex Parte Reexamination2258

Use of Previously Cited/ConsideredArt in Rejections

2258.01

Claiming Foreign Priority andDomestic Benefit in Reexamination

2258.02

Res Judicata and Collateral Estoppelin Reexamination Proceedings

2259

Office Actions2260 Dependent Claims2260.01

Special Status for Action2261 Form and Content of Office Action2262 Time for Response2263 Mailing of Office Action2264 Extension of Time2265 Responses2266

Submission Not Fully Responsive toNon-Final Office Action

2266.01

Examiner Issues Notice of DefectivePaper in Ex Parte Reexamination

2266.02

Service of Papers2266.03 Handling of Inappropriate or UntimelyFiled Papers

2267

Petition for Entry of Late Papers forRevival of Reexamination Proceeding

2268

Reconsideration2269 Clerical Handling2270 Final Action2271

Panel Review2271.01 After Final Practice2272 Appeal in Ex Parte Reexamination2273 Appeal Brief2274 Examiner’s Answer2275 Oral Hearing2276 Board Decision2277 Action Following Decision2278 Appeal to Courts2279

Information Material to Patentabilityin Reexamination Proceeding Filedunder 35 U.S.C. 302

2280

Interviews in Ex Parte ReexaminationProceedings

2281

Notification of Existence of Prior orConcurrent Proceedings and DecisionsThereon

2282

Multiple Copending Ex ParteReexamination Proceedings

2283

Copending Ex Parte Reexaminationand Interference Proceedings

2284

Copending Ex Parte Reexaminationand Reissue Proceedings

2285

Ex Parte Reexamination and LitigationProceedings

2286

Reexamination and Inter PartesReview Proceedings, Post-Grant

2286.01

Review, and Covered BusinessMethod Patent Review

Conclusion of Ex Parte ReexaminationProceeding

2287

Examiner Consideration ofSubmissions After a NIRC

2287.01

Issuance of Ex Parte ReexaminationCertificate

2288

Reexamination Review2289 Format of Ex Parte ReexaminationCertificate

2290

Notice of Ex Parte ReexaminationCertificate Issuance in Official Gazette

2291

Distribution of Certificate2292 Intervening Rights2293 Concluded Reexamination Proceedings2294 Reexamination of a Reexamination2295 USPTO Forms To Be Used In Ex ParteReexamination

2296

2201 Introduction [R-07.2015]

Statutory basis for citation of prior art patents orprinted publications in patent files and ex partereexamination of patents became available on July1, 1981, as a result of new sections 301-307 of title35, United States Code, which were added by PublicLaw 96-517, enacted on December 12, 1980. Therules of practice in patent cases relating toreexamination were initially promulgated on April30, 1981, at 46 FR 24179-24180 and on May 29,1981, at 46 FR 29176-29187.

2200-2Rev. 08.2017, January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 2201

The reexamination statute was amended onNovember 2, 2002, by Public Law 107-273, 116Stat. 1758, 1899-1906 (2002) to expand the scopeof what qualifies for a substantial new question ofpatentability upon which an ex parte reexaminationmay be based (see MPEP § 2242, subsection II.A),and made technical corrections to the statute. Seethe 21st Century Department of JusticeAppropriations Authorization Act, TITLE III-INTELLECTUAL PROPERTY, Subtitle A - Patentand Trademark Office, Section 13105, of the “Patentand Trademark Office Authorization Act of 2002”- Enacted as part of Public Law 107-273 onNovember 2, 2002.

On September 16, 2012, the Leahy-Smith AmericaInvents Act (the AIA), Public Law 112-29, 125 Stat.284, was enacted. The AIA expanded the scope ofinformation that any party may cite in a patent fileto include written statements of a patent owner filedin a proceeding before a federal court or the UnitedStates Patent and Trademark Office (Office)regarding the scope of any claim of the patent, andprovides for how such information may beconsidered in ex parte reexamination, inter partesreview, and post grant review. The AIA alsoprovided for an estoppel that may attach with respectto the filing of an ex parte reexamination requestsubsequent to a final written decision in an interpartes review or post grant review proceeding.

The AIA also provided for a first-inventor-to-fileprior art regime to replace the first-to-invent priorart regime, with respect to prior art available to beapplied to claims. The prior art regime under whichthe application for the patent was examined (thefirst-inventor-to-file prior art regime, or thefirst-to-invent prior art regime) will generally beapplied in the reexamination of the patent. However,there are rare exceptions. For example, a situationmay arise in which a benefit claim to an applicationfiled before March 16, 2013, is added in areexamination proceeding based on an AIA patent.If all of the claims that have ever been presented inthe reexamination proceeding and the underlyingpatent are fully supported by the prior applicationfiled before March 16, 2013, and the applicationwhich resulted in the patent subject to thereexamination proceeding did not claim, directly orindirectly, the benefit of an application filed in the

United States that presented at any time a claim thathad an effective filing date on or after March 16,2013, then the reexamination proceeding would beexamined under the pre-AIA, first to invent,provisions.

This chapter is intended to primarily be a guide forU.S. Patent and Trademark Office (Office) personnelon the processing of prior art citations and ex partereexamination requests under 35 U.S.C. 302, as wellas handling ex parte reexamination proceedings.Second, it serves as a guide to the formalrequirements for filing such documents in the Office.It is noted that all citations in this chapter to 35U.S.C. discussing the first-to-invent prior art regime(as opposed to the first-inventor-to-file prior artregime) are to the relevant statute in effect prior toMarch 16, 2013.

Ex Parte Reexamination Proceedings Resultingfrom Supplemental Examination Proceedings:Section 12 of the AIA added new 35 U.S.C. 257,which provides for a proceeding titled "supplementalexamination" that may be requested by the patentowner to consider, reconsider, or correct informationbelieved to be relevant to the patent in accordancewith requirements which have been established bythe Office. The information that may be presentedin a request for supplemental examination is notlimited to patents and printed publications, and mayinclude, for example, issues of patentability under35 U.S.C. 101 and 35 U.S.C. 112. If thesupplemental examination certificate, which is issuedunder 35 U.S.C. 257(a), states that a substantial newquestion of patentability is raised by one or moreitems of information in the request, ex partereexamination of the patent will be ordered under35 U.S.C. 257. See MPEP Chapter 2800 for guidanceon the procedures for supplemental examinationproceedings, and for procedures regarding the orderand first Office action mailed in any ex partereexamination proceeding ordered as a result of asupplemental examination proceeding.

Inter Partes Reexamination Proceedings: OnNovember 29, 1999, the American InventorsProtection Act of 1999 (the AIPA), Public Law106-113 was enacted, and expanded reexaminationby providing an “ inter partes” option. The AIPAauthorized the extension of reexamination

Rev. 08.2017, January 20182200-3

§ 2201CITATION OF PRIOR ART AND EX PARTE REEXAMINATION OF PATENTS

proceedings via an optional inter partesreexamination procedure in addition to ex partereexamination. 35 U.S.C. 311 - 318 (in effect for inter partes reexaminations filed prior to September16, 2012) are directed to the optional inter partesreexamination procedures. The final rules toimplement the optional inter partes reexaminationwere published in the Federal Register on December7, 2000 at 65 FR 76756 and in the Official Gazetteon January 2, 2001 at 1242 OG 12. EffectiveSeptember 16, 2012, section 6(c) of the Leahy-SmithAmerica Invents Act (the AIA), Public Law 112-29,125 Stat. 284, replaced the inter partesreexamination process that was established by theAIPA with an inter partes review process, such that(on or after September 16, 2012) the Office no longerentertains requests for inter partes reexamination

but instead accepts petitions to conduct inter partesreview before the Board, where appropriate. For any inter partes reexamination filed prior to September16, 2012, the provisions of 35 U.S.C. 311 - 318 asthey were in effect prior to September 16, 2012,continue to apply to the inter partes reexaminationproceedings. See MPEP Chapter 2600 for guidanceon the procedures for inter partes reexaminationproceedings, as well as with respect to an ex partereexamination proceeding merged (consolidated)with an inter partes reexamination proceeding.

Flowcharts: The flowcharts show the generalprovisions of both the citation of prior art and exparte reexamination proceedings, including referenceto the pertinent rule sections.

2200-4Rev. 08.2017, January 2018


Rev. 08.2017, January 20182200-5


2200-6Rev. 08.2017, January 2018


2202 Citation of Prior Art and WrittenStatements [R-08.2017]

35 U.S.C. 301 Citation of prior art.

(a) IN GENERAL.—Any person at any time may cite tothe Office in writing—

(1) prior art consisting of patents or printed publicationswhich that person believes to have a bearing on the patentabilityof any claim of a particular patent; or

(2) statements of the patent owner filed in a proceedingbefore a Federal court or the Office in which the patent ownertook a position on the scope of any claim of a particular patent.

(b) OFFICIAL FILE.—If the person citing prior art orwritten statements pursuant to subsection (a) explains in writingthe pertinence and manner of applying the prior art or writtenstatements to at least 1 claim of the patent, the citation of theprior art or written statements and the explanation thereof shallbecome a part of the official file of the patent.

(c) ADDITIONAL INFORMATION.—A party that submitsa written statement pursuant to subsection (a)(2) shall includeany other documents, pleadings, or evidence from the proceedingin which the statement was filed that addresses the writtenstatement.

(d) LIMITATIONS.—A written statement submittedpursuant to subsection (a)(2), and additional informationsubmitted pursuant to subsection (c), shall not be considered bythe Office for any purpose other than to determine the propermeaning of a patent claim in a proceeding that is ordered orinstituted pursuant to section 304, 314, or 324. If any suchwritten statement or additional information is subject to anapplicable protective order, such statement or information shallbe redacted to exclude information that is subject to that order.

(e) CONFIDENTIALITY.—Upon the written request ofthe person citing prior art or written statements pursuant tosubsection (a), that person’s identity shall be excluded from thepatent file and kept confidential.

37 CFR 1.501 Citation of prior art and written statements inpatent files.

(a) Information content of submission: At any time duringthe period of enforceability of a patent, any person may file awritten submission with the Office under this section, which isdirected to the following information:

(1) Prior art consisting of patents or printed publicationswhich the person making the submission believes to have abearing on the patentability of any claim of the patent; or

(2) Statements of the patent owner filed by the patentowner in a proceeding before a Federal court or the Office inwhich the patent owner took a position on the scope of any claimof the patent. Any statement submitted under this paragraphmust be accompanied by any other documents, pleadings, orevidence from the proceeding in which the statement was filedthat address the written statement, and such statement andaccompanying information under this paragraph must besubmitted in redacted form to exclude information subject to anapplicable protective order.

(3) Submissions under paragraph (a)(2) of this sectionmust identify:

(i) The forum and proceeding in which patentowner filed each statement;

(ii) The specific papers and portions of the paperssubmitted that contain the statements; and

(iii) How each statement submitted is a statementin which patent owner took a position on the scope of any claimin the patent.

(b) Explanation: A submission pursuant to paragraph (a)of this section:

(1) Must include an explanation in writing of thepertinence and manner of applying any prior art submitted underparagraph (a)(1) of this section and any written statement andaccompanying information submitted under paragraph (a)(2) ofthis section to at least one claim of the patent, in order for thesubmission to become a part of the official file of the patent;and

(2) May, if the submission is made by the patent owner,include an explanation of how the claims differ from any priorart submitted under paragraph (a)(1) of this section or anywritten statements and accompanying information submittedunder paragraph (a)(2) of this section.

(c) Reexamination pending : If a reexamination proceedinghas been requested and is pending for the patent in which thesubmission is filed, entry of the submission into the official fileof the patent is subject to the provisions of §§ 1.502 and 1.902.

(d) Identity: If the person making the submission wisheshis or her identity to be excluded from the patent file and keptconfidential, the submission papers must be submittedanonymously without any identification of the person makingthe submission.

(e) Certificate of Service : A submission under this sectionby a person other than the patent owner must include acertification that a copy of the submission was served in itsentirety upon patent owner at the address as provided for in §1.33(c). A submission by a person other than the patent ownerthat fails to include proper proof of service as required by §1.248(b) will not be entered into the patent file.

37 CFR 1.502 Processing of prior art citations during an exparte reexamination proceeding.

Citations by the patent owner under § 1.555 and by an ex parte reexamination requester under either § 1.510 or § 1.535 will beentered in the reexamination file during a reexaminationproceeding. The entry in the patent file of citations submittedafter the date of an order to reexamine pursuant to § 1.525 bypersons other than the patent owner, or an ex parte reexamination requester under either § 1.510 or § 1.535, willbe delayed until the reexamination proceeding has beenconcluded by the issuance and publication of a reexaminationcertificate. See § 1.902 for processing of prior art citations inpatent and reexamination files during an inter partes reexamination proceeding filed under § 1.913.

37 CFR 1.902 Processing of prior art citations during aninter partes reexamination proceeding.

Rev. 08.2017, January 20182200-7


Citations by the patent owner in accordance with § 1.933 andby an inter partes reexamination third party requester under §1.915 or § 1.948 will be entered in the inter partes reexamination file. The entry in the patent file of other citationssubmitted after the date of an order for reexamination pursuantto § 1.931 by persons other than the patent owner, or the thirdparty requester under either § 1.913 or § 1.948, will be delayeduntil the inter partes reexamination proceeding has beenconcluded by the issuance and publication of a reexaminationcertificate. See § 1.502 for processing of prior art citations inpatent and reexamination files during an ex parte reexaminationproceeding filed under § 1.510.

Prior art in the form of patents or printed publicationsmay be cited to the Office for placement into thepatent files. Written statements made by the patentowner concerning the scope of the claims can alsobe cited to the Office for placement into the patentfiles. Submission may be made without payment ofa fee. These citations may be made separate fromand without a request for reexamination.

The basic purpose for citing prior art in patent filesis to inform the patent owner and the public ingeneral that such patents or printed publications arein existence and should be considered whenevaluating the validity of the patent claims. The basicpurpose for citing written claim scope statements isto ensure that the patent owner takes consistentpositions regarding the scope of the claims of aparticular patent in the courts and the before theOffice. Placement in the patent file also ensuresconsideration thereof during any subsequent reissueapplication, reexamination proceeding, or otherpost-patent proceeding.

The citation of prior art and written statementprovisions of 35 U.S.C. 301 and 37 CFR 1.501 donot apply to citations or protests filed in pendingapplications.

2203 Persons Who May Cite Prior Art orWritten Statements [R-07.2015]

The patent owner, or any member of the public, maysubmit prior art patents or printed publications and/orwritten statements and additional information to theOffice. 35 U.S.C. 301 states that “[a]ny person atany time may cite to the Office. . . .”

“Any person” may be a corporate or governmentalentity as well as an individual.

“Any person” includes patentees, licensees,reexamination requesters, real parties in interest tothe patent owner or requester, persons without a realinterest, and persons acting for real parties in interestwithout a need to identify the real party of interest.

If a person citing prior art or written statementsdesires his or her identity to be kept confidential,such a person need not identify himself or herself.Persons other than reexamination requesters whodesire to remain confidential are therefore advisedto not identify themselves anywhere in their papers.

For reexamination requesters, the certificationrequirement of 37 CFR 1.510(b)(6), coupled with aparty’s 37 CFR 11.18 certification obligations whentransacting business before the Office, are consideredsufficient to ensure compliance with the inter partes review and post grant statutory estoppelrequirements. A real party in interest that wishes toremain anonymous when filing a request forreexamination under 37 CFR 1.510 can do so byutilizing the services of a registered practitioner. Insuch an instance, the registered practitionersubmitting a request for reexamination on behalf ofthe real party in interest would be certifying that thereal party in interest was not estopped from filingthe request. Conversely, an individual filing a requestfor reexamination under 37 CFR 1.510 on behalf ofhimself cannot remain anonymous, as he is requiredto sign the document that includes the 37 CFR1.510(b)(6) certification.

Confidential submissions should include properproof of service as required by 37 CFR 1.248(b) thatthe patent owner has been sent a copy of thesubmission; otherwise the submission will not beentered into the patent file.

Patent examiners should not, at their own initiative,create a submission under 35 U.S.C. 301 and placeit in a patent file or forward it for placement in thepatent file. Patent examiners are delegated by theDirector with the responsibility of making decisionsas to patentability. Any activity by examiners whichwould appear to indicate that patent claims are notpatentable, outside of those cases pending beforethem, is inappropriate.

2200-8Rev. 08.2017, January 2018


2204 Time for Filing Prior Art or Section301 Written Statements [R-07.2015]

Submissions may be filed “at any time” under 35U.S.C. 301. However, this period has been definedby rule (37 CFR 1.501(a)) to be “any time duringthe period of enforceability of a patent.” The periodof enforceability is generally the length of the termof the patent plus the 6 years under the statute oflimitations for bringing an infringement action (35U.S.C. 286). In addition, if litigation is institutedwithin the period of the statute of limitations,submissions may be filed after the statute oflimitations has expired, as long as the patent is stillenforceable against someone. While submissionunder 35 U.S.C. 301 may be filed at any time duringthe period of enforceability of the patent,submissions filed after the date of any order toreexamine will not be entered into the patent fileuntil the pending reexamination proceeding has beenconcluded (37 CFR 1.501(c)), unless the submissionsare submitted (A) by the patent owner, (B) by an exparte reexamination requester who also submits thefee and other documents required under 37 CFR1.510, (C) in an ex parte third party requester’s replyunder 37 CFR 1.535, or (D) as an enterablesubmission pursuant to 37 CFR 1.948 in an interpartes reexamination proceeding.

The purpose of this rule is to prevent harassment ofthe patent owner due to frequent submissions of priorart citations during reexamination proceedings.

2205 Content of Prior Art or Section 301Written Statements [R-07.2015]

Information that may be submitted under 35 U.S.C.301 is limited to prior art consisting of patents orprinted publications or written statements of thepatent owner filed in a proceeding before a federalcourt or the Office by the patent owner in which thepatent owner took a position on the scope of anyclaim of the patent.

Pursuant to 35 U.S.C. 301, an explanation is requiredof how the person submitting the prior art or writtenstatement considers it to be pertinent and applicableto the patent. The submission must, at a minimum,contain some broad statement of the pertinence and

manner of applying the prior art or written statementsubmitted as to the patentability of the claims of thepatent. The explanation of how the person submittingthe prior art or written statement considers it to bepertinent and applicable to the patent would set forth,for at least one of the patent claims, how each itemcited shows or teaches at least one limitation of theclaim. Submissions by patent owners may alsoinclude an explanation of how the claims of thepatent differ from the submitted prior art or writtenstatement.

Copies of all the submitted prior art patents, printedpublications or section 301 written statements andany necessary English translation must be includedso that the value of the information may be readilydetermined by persons inspecting the patent filesand by the examiner during any subsequent reissue,reexamination proceeding, or other post patentproceeding.

All submissions filed by persons other than thepatent owner must include proper proof of serviceas required by 37 CFR 1.248(b) reflecting that acopy of the submission has been mailed to, orotherwise served upon, the patent owner at thecorrespondence address as defined under 37 CFR1.33(c).

All submissions filed should identify the patent towhich the citation pertains by identifying the patentnumber, issue date, and patentee using a cover sheet.The documents themselves should also contain, orhave placed thereon, an identification of the patentfor which they are intended.

A submission that includes written statements mustalso include any other additional information, e.g.documents, pleadings, or evidence from theproceeding, in which the statement was filed thataddress the written statement, and such statementand accompanying information under this paragraphmust be submitted in redacted form to excludeinformation subject to any applicable protectiveorder.

A submission that includes section 301 writtenstatements must, pursuant to 37 CFR 1.501(a)(3),further include the identification of: (1) The forumand proceeding in which patent owner filed each

Rev. 08.2017, January 20182200-9


statement; (2) The specific papers and portions ofthe papers submitted that contain the statement; and(3) How each statement submitted is a statement inwhich patent owner took a position on the scope ofany claim in the patent. Identification of the portionsof the papers required by 37 CFR 1.501(a)(3)(ii) canbe satisfied, for example, by citing to the documentsand specific pages of those documents where thepatent owner claim scope statements are found. Therequirement of 37 CFR 1.501(a)(3)(iii) ensures thatthe statement is one in which patent owner has takena position on claim scope in a proceeding and notmerely a restatement of a position asserted byanother party. Other information can be provided bythe submitter to assist the Office in readilyidentifying the patent owner claim scope statement,such as (1) information regarding the status of theproceeding and (2) the relationship of the proceedingto the patent.

Affidavits or declarations or other written evidencerelating to the submitted documents may accompanythe 37 CFR 1.501 submission to explain the contentsor pertinent dates in more detail. A commercialsuccess affidavit tied in with a particular documentmay also be acceptable. For example, the patentowner may wish to cite a patent or printedpublication which raises the issue of obviousness ofat least one patent claim. Together with the cited art,the patent owner may file (A) an affidavit ofcommercial success or other evidence ofnonobviousness, or (B) an affidavit which questionsthe enablement of the teachings of the cited priorart.

No fee is required for the submission under 37 CFR1.501.

A submission under 37 CFR 1.501 is limited topatents, printed publications, or patent owner writtenclaim scope statements, additional information andan explanation of the pertinency and applicabilityof them. This may include an explanation by thepatent owner as to how the claims differ from theprior art patents or printed publications or writtenclaim scope statement and additional information.It may also include affidavits and declarations. Thesubmission cannot include any issue which is notdirected to patents, printed publications or writtenclaim scope statements and additional information.

Thus, for example, a submission cannot include astatement as to the claims violating 35 U.S.C. 112,a statement as to the public use of the claimedinvention, or a statement as to the conduct of thepatent owner. The submission must be directed topatents, printed publications and/or written claimscope statements and additional information andcannot discuss what the patent owner did, or failedto do, with respect to submitting and/or describingpatents and printed publications during examination,because that would be a statement as to the conductof the patent owner. The submission also should notcontain argument and discussion of referencespreviously treated in the prosecution of theapplication which matured into the patent orreferences previously treated in a reexaminationproceeding as to the patent.

If the submission contains any issue not directed topatents, printed publications or patent owner writtenclaim scope statements, it should not be entered intothe patent file, despite the fact that it may otherwisecontain a complete submission of patents, printedpublications and/or written statements and additionalinformation with an explanation of the pertinencyand applicability. Rather, the submission should bereturned to the sender, discarded, or closed asdescribed in MPEP § 2206.

Examples of letters submitting prior art under37 CFR 1.501 follow.

EXAMPLE I

Submission by a third party:

IN THE UNITED STATES PATENT ANDTRADEMARK OFFICEIn re patent of Joseph Smith Patent No. 9,999,999Issued: July 7, 2000 For: Cutting ToolSubmission of Prior Art Under 37 CFR 1.501Hon. Commissioner for Patents P.O. Box 1450Alexandria, VA 22313-1450

Sir:The undersigned herewith submits in theabove-identified patent the following prior art(including copies thereof) which is pertinent andapplicable to the patent and is believed to have a

2200-10Rev. 08.2017, January 2018


bearing on the patentability of at least claims 1 – 3thereof:Weid et al. U.S. 2,585,416 April 15, 1933; McGeeU.S. 2,722,794 May 1, 1934; Paulk et al. U.S.3,625,291 June 16, 1936Each of the references discloses a cutting tool strikinglysimilar to the device of Smith in having pivotal handleswith cutting blades and a pair of dies. It is believed thateach of the references has a bearing on the patentabilityof claims 1 – 3 of the Smith patent.Insofar as claims 1 and 2 are concerned, each of thereferences anticipates the claimed subject matter under35 U.S.C. 102. See Figure 2 and column 2 lines 20-45of Weid et al., Figure 4 and column 3 lines 10-35 ofPaulk et al., and Figure 2 and column 2 lines 12-25 ofMcGee.As to claim 3, only Weid et al. is a relevant primaryreference, and the differences between the subjectmatter of this claim and the cutting tool of Weid et alare shown in the device of Paulk et al. Further, Weidet al suggests that different cutting blades can be usedin their device. A person of ordinary skill in the art atthe time the invention was made would have been ledby the suggestion of Weid et al to the cutting bladesof Paulk et al. as obvious substitutes for the blades ofWeid et al.Respectfully submitted, (Signed)

Certificate of ServiceI hereby certify on this first day of June 1982, that atrue and correct copy of the foregoing “Submission ofPrior Art” was mailed by first-class mail, postage paid,to:John Roe, 555 Any Lane Anytown,VA 22202(Signed)/John Jones/

EXAMPLE II

Submission by the patent owner:

IN THE UNITED STATES PATENT ANDTRADEMARK OFFICEIn re patent of Joseph Smith Patent No. 9,999,999Issued: July 7, 2000 For: Cutting ToolSubmission of Prior Art Under 37 CFR 1.501Hon. Commissioner for Patents P.O. Box 1450Alexandria, VA 22313-1450

Sir: The undersigned herewith submits in the aboveidentified patent the following prior art (includingcopies thereof) which is pertinent and applicable to thepatent and is believed to have a bearing on thepatentability of at least claims 1-3 thereof:

Weid et al. U.S. 2,585,416 April 15, 1933; McGeeU.S. 2,722,794 May 1, 1934; Paulk et al. U.S.3,625,291 June 16, 1936Each of the references discloses a cutting tool strikinglysimilar to the device of Smith in having pivotal handleswith cutting blades and a pair of dies. See Figure 2 andcolumn 2 lines 20-45 of Weid et al., Figure 4 andcolumn 3 lines 10-35 of Paulk et al., and Figure 2 andcolumn 2 lines 12-25 of McGee; limitations (a) – (c)and (e) of Smith claim 1 are visible in the figures, andare described in the disclosures. While it is believedthat each of the references has a bearing on thepatentability of claims 1 – 3 of the Smith patent, thesubject matter claimed differs from the references andis believed patentable thereover.Insofar as claims 1 and 2 are concerned, none of thereferences show the particular die (limitation (d) ofSmith claim 1) claimed and the structure of theseclaimed dies would not have been obvious to a personof ordinary skill in the art at the time the invention wasmade.

As to claim 3, only Weid et al is a relevant primaryreference, and the cutting blades required by claim 3are shown in Paulk et al.; however, the remainder ofthe claimed structure is found only in Weid et al. Aperson of ordinary skill in the art at the time theinvention was made would not have found it obviousto substitute the cutting blades of Paulk et al. for thoseof Weid et al. In fact, the disclosure of Weid et al.would lead a person of ordinary skill in the art awayfrom the use of cutting blades such as shown in Paulket al.

Respectfully submitted,(Signed) John Doe Attorney for Patent Owner Reg.No. 29760

Rev. 08.2017, January 20182200-11


2206 Submission and Handling of Prior Artor Section 301 Written Statements[R-08.2017]

A submission of prior art patents, or printedpublications and/or written statements under 37 CFR1.501 may be submitted to the Office via mail,hand-delivery, or via the Office’s Electronic FilingSystem (EFS, currently EFS-Web) if the submissionis properly filed as a prior art submission under 37CFR 1.501 and not as a follow-on document or otherpaper. Both registered and unregistered eFilers maymake a submission for a patent under 37 CFR 1.501via EFS. A submission under 37 CFR 1.501 cannotbe filed via EFS for design or plant patents. Allsubmissions under 37 CFR 1.501 are reviewed forcompliance prior to entry into the patent file. Asubmission submitted via EFS may not be submittedas a follow-on paper into the patent (similar to ThirdParty Preissuance submissions) because thesubmission would be directly entered into the patentfile without review. The limitations on the methodof submission allow staff to review the papers todetermine if they are compliant before they areentered into the patent file. Submitting papers ordocuments via EFS directly into the patent bysomeone other than patent owner’s representative isa violation of the Public Key Infrastructure (PKI)subscriber agreement and may lead to revocation ofthe PKI certificate used for the submission. Seewww.uspto.gov/patents/process/file/efs/guidance/501_QSG.pdffor more information on filing 37 CFR 1.501submissions via EFS.

Submissions under 37 CFR 1.501 received in theOffice will be forwarded to the Technology Center(TC) that currently examines the class and subclassof the patent to which the submission is directed.

It is the responsibility of the TC to promptlydetermine whether the submission meets therequirements of the statute and the rules and to enterit into the patent file at the appropriate time if proper.

If a proper submission is filed after the date of anorder for reexamination, the submission will bestored until the reexamination is concluded. Note 37CFR 1.502 and 1.902. After the reexaminationproceeding is concluded, the submission is enteredin the patent file. Submissions filed after the date of

an order for reexamination will not be consideredby the examiner during the reexamination.

I. SUBMISSION QUALIFIES FOR ENTRY UNDER37 CFR 1.501

A. Submission by Third Party

1. Prior to Order in Any Pending ReexaminationProceeding

If the 37 CFR 1.501 submission is proper (i.e., islimited to patents, printed publications, and/or patentowner written claim scope statements and additionalinformation and includes the requisite citationdescription and information and proof of service onthe patent owner), it should be entered into the patentfile.

2. After the Order in Any Pending ReexaminationProceeding

If the 37 CFR 1.501 submission is filed after an orderfor reexamination in a pending reexaminationproceeding, the submission must include proof ofservice of a copy of the submission on the patentowner. If the submission satisfies the conditions setforth in subsection I.A.1. above, and includes proofof service on the patent owner, the submission willbe deemed to be proper. A proper submission is notentered after an order for reexamination in a pendingreexamination because of the ongoing reexamination.It will be stored until the conclusion of thereexamination proceeding, after which thesubmission will be entered into the patent file. Thepatent owner and third party submitter (if known)should be alerted of this by a letter providingnotification. If there is a third party requester, thethird party requester should also be sent a copy ofthe notification letter pursuant to 37 CFR 1.550(f).Such notification is important to enable the patentowner to consider submitting the prior art under 37CFR 1.555 or 1.933 during the reexamination. Suchnotification will also enable the third party submitterto consider the desirability of filing a separaterequest for reexamination.

2200-12Rev. 08.2017, January 2018


https://www.uspto.gov/patents/process/file/efs/guidance/501_QSG.pdf

B. Submission Filed by Patent Owner

If a proper 37 CFR 1.501 submission is filed by thepatent owner, it should be entered in the file. Thisis true whether the submission is filed prior to orafter an order for reexamination has been mailed.No notification to the patent owner is necessary.

II. SUBMISSION DOES NOT QUALIFY FORENTRY UNDER 37 CFR 1.501

A. Submission by Third Party

If the 37 CFR 1.501 submission is not properbecause it is not limited to patents, printedpublications, and/or patent owner written claim scopestatements and additional information or it fails toinclude the requisite description and information orproof of service, it will not be entered into the patentfile. The third party submitter (if known) and thepatent owner may, as described below, be notifiedthat the citation submission is improper and that itis not being entered in the patent file. If the 37 CFR1.501 submission is submitted via the EFS interface,the third party submitter or the patent owner mayrequest to be notified that the citation submission isimproper by requesting notification and entry of anemail or postal address in the appropriate fieldprovided in the interface.

The handling of the submission will vary dependingon the particular following situations:

1. Service of Copy Included

Where the submission includes an indication ofservice of copy on the patent owner and the identityof the third party sender is known, the originalsubmission should be returned to the third partysender, discarded, or closed if inadvertently enteredinto the file, and the third party submitter will benotified. Patent owner should be notified ofnon-entry.

2. Service of Copy Not Included; Identity of ThirdParty Sender Known

Where the submission does not include an indicationof service on the patent owner and the identity of

the third party submitter is known, the submissionshould be returned to the third party submitter,discarded, or closed if inadvertently entered into thefile, and the third party submitter will be notified.Patent owner will not be notified.

3. Service of Copy Not Included; Identity of ThirdParty Sender Not Known

Where the submission does not include an indicationof service on the patent owner and the identity ofthe third party submitter is not known, the originalsubmission papers will be discarded. Patent ownerwill not be notified.

B. Citation Filed by the Patent Owner

If an improper submission under 37 CFR 1.501 isfiled by the patent owner prior to an order forreexamination, it should not be entered in the file.

The patent owner should be notified of the non-entry,and the submission should be returned to the patentowner, discarded, or closed if inadvertently enteredin the file. Proper submissions filed by the patentowner in a reexamination proceeding after an orderfor reexamination should be entered in the file under37 CFR 1.555 (for ex parte reexamination) or under37 CFR 1.933 (for inter partes reexamination).

2207 Entry of Court Decision in Patent File[R-07.2015]

The Solicitor’s Office processes notices requiredby 35 U.S.C. 290, received from the clerks of thevarious courts in the United States, and has thementered in the patent file. However, it is considereddesirable that the entire court decision be suppliedto the Office for entry into the patent file.Accordingly, the Office will accept at any time from any party for placement in the patent file,submissions of the following: copies of notices ofsuits, copies of notices regarding other proceedingsinvolving the patent and copies of decisions fromlitigation or other proceedings involving the patent.The Office will accept for entry into the patent fileother court papers, or papers filed in the court, fromlitigation or other proceedings involving the patent.The decisions from litigation or other proceedingsinclude final court decisions (even if the decision is

Rev. 08.2017, January 20182200-13


still appealable), decisions to vacate, decisions toremand, and decisions as to the merits of the patentclaims. Non-merit decisions (e.g., on motions for anew venue, a new trial/discovery date, or sanctions)will not be entered and will be expunged from thepatent file by closing the appropriate paper if theywere entered before recognizing their nature. Further,papers filed in the court from litigation or otherproceedings involving the patent will not be enteredinto the patent file (and will be expunged if alreadyentered) if they provide a party’s arguments (e.g., amemorandum in support of summary judgment). Ifthe argument has an entry right in the reexaminationproceeding, it must be submitted via the properprocedural vehicle (provision(s) of the rules) thatprovides for their entry. It is not required nor is itpermitted that parties submit copies of copendingreexamination proceedings and applications (whichcopies can be mistaken for a new request/filing);rather, submitters may provide a notice identifyingthe application/proceeding number and its status.Any submission that is not permitted entry will bereturned, expunged, or discarded, at the solediscretion of the Office.

It is noted that if the Office, in its sole discretion,deems the volume of the papers filed from litigationor other proceedings to be too lengthy, the Officemay return, expunge, or discard, at its sole discretion,all or part of the submission. In such an instance, aparty may limit the submission in accordance withwhat is deemed relevant, and resubmit the papers.Such submissions must be provided withoutadditional comment. Persons making suchsubmissions must limit the submission to thenotification and not include further arguments orinformation. Highlighting of certain text byunderlining, fluorescent marker, etc., goes beyondbare notice of the prior or concurrent proceedings.Any proper submission will be promptly placed onrecord (entered) in the patent file. Entry of thesesubmissions is performed by the Files Repositorypersonnel, unless a reexamination proceeding ispending, in which case, the Central ReexaminationUnit, the Technology Center, or other area of theOffice having responsibility for the reexaminationenters the submission.

It is to be further noted that 35 U.S.C. 290 is directedto “courts of the United States.” Accordingly, any

submission of papers from a court outside the UnitedStates (a foreign jurisdiction) will be returned,expunged or discarded, at the sole discretion of theOffice.

Where a request for reexamination has been filed,see MPEP § 2282 for ex parte reexamination andMPEP § 2686 for inter partes reexamination. SeeMPEP § 2240 and § 2242 for handling of requestsfor ex parte reexamination of patents involved inlitigation. See MPEP § 2640 and § 2642 for handlingof requests for inter partes reexamination of patentsinvolved in litigation.

2208 Service of Prior Art or Section 301Written Statements on Patent Owner[R-08.2017]

A copy of any submission of prior art patents, printedpublications, and/or section 301 written statementsand additional information in a patent file by aperson other than the patent owner must be servedon the patent owner so that the patent owner is keptfully informed as to the content of the patent filewrapper/file history. See MPEP § 2206 for handlingof prior art citations and written statements under35 U.S.C. 301.

The service to the patent owner should be addressedto the correspondence address as set forth in 37 CFR1.33(c). See MPEP § 2222 as to the correspondenceaddress.

A submission by a person other than the patentowner that fails to include proper proof of serviceas required by 37 CFR 1.248(b) will not be enteredinto the patent file.

2209 Ex Parte Reexamination [R-07.2015]

Procedures for reexamination of issued patents beganon July 1, 1981, the date when the reexaminationprovisions of Public Law 96-517 came into effect.

The reexamination statute, 35 U.S.C. 302, and rulespermit any person to file a request for an ex parte reexamination containing certain elements and thefee required under 37 CFR 1.20(c)(1). The Officeinitially determines if “a substantial new question

2200-14Rev. 08.2017, January 2018


of patentability” (35 U.S.C. 303(a)) is presented. Ifsuch a new question has been presented,reexamination will be ordered. The reexaminationproceedings which follow the order forreexamination are very similar to regularexamination procedures in patent applications;however, there are notable differences. For example,there are certain limitations as to the kind ofrejections which may be made in a reexaminationordered under 35 U.S.C. 304, special reexaminationforms to be used, and time periods set to provide“special dispatch.” When the prosecution of areexamination proceeding is terminated, areexamination certificate is issued which indicatesthe status of all claims following the reexamination.

The following sections of this chapter explain thedetails of reexamination.

The intent of the reexamination procedures coveredin this chapter include the following:

(A) To provide procedures for reexamination ofpatents;

(B) To implement reexamination in anessentially ex parte manner;

(C) To minimize the processing costs andcomplexities of reexamination;

(D) To maximize respect for the reexaminedpatent;

(E) To provide procedures for prompt and timelydeterminations by the Office in accordance with the“special dispatch” requirements of 35 U.S.C. 305.

The basic characteristics of ex parte reexaminationare as follows:

(A) Anyone can request reexamination at anytime during the period of enforceability of the patent;

(B) In ex parte reexaminations ordered under35 U.S.C. 304, prior art considered duringreexamination is limited to prior art patents orprinted publications applied under the appropriateparts of 35 U.S.C. 102 and 103. Patents may also beapplied in a double patenting rejection as discussedin MPEP § 2258 subsection I.D. (However, in exparte reexaminations ordered under 35 U.S.C. 257,the prior art considered during reexamination is notlimited. See MPEP § 2801);

(C) A substantial new question of patentabilitymust be present for reexamination to be ordered;

(D) If ordered, the actual reexaminationproceeding is ex parte in nature;

(E) Decision on a request for reexaminationsubmitted under 35 U.S.C. 302 must be made nolater than 3 months from its filing, and the remainderof the proceeding must proceed with “specialdispatch” within the Office. (Similarly, a decisionon a request for supplemental examination submittedunder 35 U.S.C. 257 must be made no later than 3months from its filing (see MPEP § 2815), and any ex parte reexamination proceeding ordered as aresult of a supplemental examination proceedingmust proceed with “special dispatch” within theOffice);

(F) If ordered, a reexamination proceeding willnormally be conducted to its conclusion and theissuance of a reexamination certificate;

(G) The scope of a claim cannot be enlarged byamendment;

(H) All reexamination and patent files are opento the public, but see paragraph (I) below;

(I) The reexamination file is scanned into IFWto provide an electronic format copy of the file. Allpublic access to and copying of the reexaminationfile may be made from the electronic format copyavailable through PAIR. Any remaining paper filesare not available to the public. Images of non-patentliterature (NPL) cited in public files are not availablefor either viewing or downloading through PublicPAIR. Certified copies of the full contents of thefiles, including NPL, are available from the Officeof Public Records, and may be ordered online atwww.uspto.gov.

For a discussion of public access to papers filed ina supplemental examination proceeding, see MPEP§ 2803.02.

Parties are cautioned that the reexamination statute,regulations, and published examining procedures donot countenance so-called “litigation tactics” inreexamination proceedings. The parties are expectedto conduct themselves accordingly. For example, itis expected that submissions of papers that are notprovided for in the reexamination regulations and/orappear to be excluded by the regulation will either

Rev. 08.2017, January 20182200-15


http://www.uspto.gov

be filed with an appropriate petition to accept thepaper and/or waive the regulation(s), or not filed atall. Parties are advised that multiple submissions,such as a reply to a paper opposing a petition and asur-reply directed to such a reply are not providedfor in the reexamination regulations or examiningprocedures. It is expected that the parties will adhereto the provisions of 37 CFR 11.18(b) throughout thecourse of a reexamination proceeding.

2210 Request for Ex Parte Reexaminationunder 35 U.S.C. 302 [R-08.2017]

35 U.S.C. 302 Request for reexamination.

Any person at any time may file a request for reexamination bythe Office of any claim of a patent on the basis of any prior artcited under the provisions of section 301. The request must bein writing and must be accompanied by payment of areexamination fee established by the Director pursuant to theprovisions of section 41. The request must set forth thepertinency and manner of applying cited prior art to every claimfor which reexamination is requested. Unless the requestingperson is the owner of the patent, the Director promptly willsend a copy of the request to the owner of record of the patent.

37 CFR 1.510 Request for ex parte reexamination.

(a) Any person may, at any time during the period ofenforceability of a patent, file a request for an ex parte reexamination by the Office of any claim of the patent on thebasis of prior art patents or printed publications cited under §1.501, unless prohibited by 35 U.S.C. 315(e)(1) or 35 U.S.C.325(e)(1). The request must be accompanied by the fee forrequesting reexamination set in § 1.20(c)(1).

(b) Any request for reexamination must include thefollowing parts:

(1) A statement pointing out each substantial newquestion of patentability based on prior patents and printedpublications.

(2) An identification of every claim for whichreexamination is requested, and a detailed explanation of thepertinency and manner of applying the cited prior art to everyclaim for which reexamination is requested. For each statementof the patent owner and accompanying information submittedpursuant to § 1.501(a)(2) which is relied upon in the detailedexplanation, the request must explain how that statement is beingused to determine the proper meaning of a patent claim inconnection with the prior art applied to that claim and how eachrelevant claim is being interpreted. If appropriate, the partyrequesting reexamination may also point out how claimsdistinguish over cited prior art.

(3) A copy of every patent or printed publication reliedupon or referred to in paragraph (b)(1) and (2) of this sectionaccompanied by an English language translation of all thenecessary and pertinent parts of any non-English language patentor printed publication.

(4) A copy of the entire patent including the front face,drawings, and specification/claims (in double column format)for which reexamination is requested, and a copy of anydisclaimer, certificate of correction, or reexamination certificateissued in the patent. All copies must have each page plainlywritten on only one side of a sheet of paper.

(5) A certification that a copy of the request filed by aperson other than the patent owner has been served in its entiretyon the patent owner at the address as provided for in § 1.33(c).The name and address of the party served must be indicated. Ifservice was not possible, a duplicate copy must be supplied tothe Office.

(6) A certification by the third party requester that thestatutory estoppel provisions of 35 U.S.C. 315(e)(1) or 35 U.S.C.325(e)(1) do not prohibit the requester from filing the ex partereexamination request.

(c) If the request does not include the fee for requesting exparte reexamination required by paragraph (a) of this sectionand meet all the requirements by paragraph (b) of this section,then the person identified as requesting reexamination will beso notified and will generally be given an opportunity tocomplete the request within a specified time. Failure to complywith the notice will result in the ex parte reexamination requestnot being granted a filing date, and will result in placement ofthe request in the patent file as a citation if it complies with therequirements of § 1.501.

(d) The filing date of the request for ex partereexamination is the date on which the request satisfies all therequirements of this section.

(e) A request filed by the patent owner may include aproposed amendment in accordance with § 1.530.

(f) If a request is filed by an attorney or agent identifyinganother party on whose behalf the request is being filed, theattorney or agent must have a power of attorney from that partyor be acting in a representative capacity pursuant to § 1.34.

Any person, at any time during the period ofenforceability of a patent, may file a request for exparte reexamination by the U.S. Patent andTrademark Office of any claim of the patent basedon prior art patents or printed publications, unlessprohibited by the estoppel provisions of AIA 35U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1). Theestoppel provisions of AIA 35 U.S.C. 315(e)(1) or35 U.S.C. 325(e)(1) are based on inter partes reviewand post grant review, respectively, and they onlyprohibit the filing of a subsequent request for exparte reexamination, once estoppel attaches; thereis no estoppel as to the Office maintaining anexisting ex parte reexamination proceeding. Therequest must include the elements set forth in 37CFR 1.510(b) (see MPEP § 2214) and must beaccompanied by the fee as set forth in 37 CFR1.20(c)(1). If a request filed by the patent ownerincludes a proposed amendment in accordance with

2200-16Rev. 08.2017, January 2018


37 CFR 1.530, excess claims fees under 37 CFR1.20(c)(3) and (c)(4) may also apply; see MPEP §2250.03. No attempt will be made to maintain arequester’s name in confidence.

A request for reexamination under 37 CFR 1.510may be submitted to the Office via mail,hand-delivery, or via the Office’s Electronic FilingSystem (EFS, currently EFS-Web). See MPEP §2224 for more information on submission via mailand hand-delivery. For submission via EFS, bothregistered and unregistered eFilers may submit arequest for reexamination. A request forreexamination submitted via EFS must be submittedby selecting the option for a "new" reexaminationproceeding in the EFS interface and not submittedas a follow-on paper into the patent. The Office mayrefer third-party inquiries, or submissions notprovided for that are improperly submitted via EFS,by registered practitioners in applications and anyother Office proceedings to the Office of Enrollmentand Discipline for appropriate action.

After the request for reexamination, including theentire fee for requesting reexamination, is receivedin the Office, no abandonment, withdrawal, orstriking of the request is possible, regardless of whorequests the same. In some limited circumstances,such as after a final court decision where all of theclaims are finally held invalid, a reexamination ordermay be vacated if the decision was rendered priorto the order, and the reexamination may beterminated if the decision was rendered subsequentto the order, see MPEP § 2286.

2211 Time for Requesting Ex ParteReexamination under 35 U.S.C. 302[R-07.2015]

Under 37 CFR 1.510(a), any person may, at any timeduring the period of enforceability of a patent, filea request for ex parte reexamination. This periodwas set by rule, since the Office considered thatCongress could not have intended expending Officeresources on deciding patent validity questions inpatents which cannot be enforced. See Patlex Corp.v. Mossinghoff, 758 F.2d 594, 225 USPQ 243, 249(Fed. Cir. 1985). The period of enforceability isgenerally determined by adding 6 years to the dateon which the patent expires but the period may be

extended if there is pending litigation. Specifically,if litigation is instituted within the period of thestatute of limitations, requests for reexaminationmay be filed after the statute of limitations hasexpired, as long as the patent is still enforceable.

The patent expiration date for a utility patent, forexample, is determined by taking into account theterm of the patent, whether maintenance fees havebeen paid for the patent, whether any disclaimer wasfiled as to the patent to shorten its term, any patentterm extensions or adjustments for delays within theOffice under 35 U.S.C. 154 (see MPEP § 2710, etseq.), and any patent term extensions available under35 U.S.C. 156 for premarket regulatory review (seeMPEP § 2750 et. seq.). Any other relevantinformation should also be taken into account.

2212 Persons Who May File a Request for Ex Parte Reexamination under 35 U.S.C. 302[R-07.2015]



*****

35 U.S.C. 302 and 37 CFR 1.510(a) both indicatethat “any person” may file a request for ex parte reexamination of a patent, unless prohibited by AIA35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1).Accordingly, there are no types of “persons” whoare excluded from being able to seek reexaminationunder 35 U.S.C. 302. Corporations and/orgovernmental entities are included within the scopeof the term “any person.” The only “person” who isbarred from filing a request for ex parte reexamination of a patent under 35 U.S.C. 302 isone who is barred from doing so by the estoppelprovisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C.325(e)(1) based on inter partes review and postgrant review, respectively, once the estoppelattaches. The patent owner can ask for reexaminationwhich will be limited to an ex parte considerationof prior art patents or printed publications. If thepatent owner wishes to have a wider consideration

Rev. 08.2017, January 20182200-17


of issues by the Office, including matters such asprior public use or on sale, the patent owner mayfile a reissue application (see, e.g., MPEP § 1401 -§ 1403), or, where appropriate, a supplementalexamination proceeding (see, e.g., MPEP § 2801 –§ 2803). It is also possible for the Director of theOffice to initiate reexamination on the Director’sown initiative under 37 CFR 1.520. Some of thepersons likely to use reexamination under 35 U.S.C.302 are patentees, licensees, potential licensees,attorneys without identification of their real clientin interest, infringers, potential exporters, patentlitigants, interference applicants, and InternationalTrade Commission respondents. The name of theperson who files the request will not be maintainedin confidence.

2212.01 Inquiries from Persons Other Thanthe Patent Owner [R-11.2013]

Examiners should not discuss or answer inquiriesfrom third parties (i.e., parties who are not the patentowner) in reexamination proceedings. A party whois not the patent owner should be referred by theexaminer to the Technology Center (TC) QualityAssurance Specialist (QAS) or CentralReexamination Unit (CRU) Supervisory PatentReexamination Specialist (SPRS) for the examiner’sart unit. The CRU SPRS or TC QAS will addressany such questions. Only questions on strictlyprocedural matters, i.e., not directed to any specificreexamination proceeding, may be discussed by theCRU SPRS or TC QAS with that party.

Employees of the Office, particularly patentexaminers who conducted a concluded reexaminationproceeding, should not discuss or answer inquiriesfrom any person outside the Office as to whether acertain reference or other particular evidence wasconsidered during the proceeding and whether aclaim would have been allowed over that referenceor other evidence had it been considered during theproceeding.

Patent practitioners must not make improperinquiries of members of the patent examining corpsand the Office as a whole. See 37 CFR 11.804.Inquiries from members of the public relating to thematters discussed above must, of necessity, berefused and such refusal should not be considered

discourteous or an expression of opinion by theOffice as to the validity, patentability, orenforceability of the patent.

The definitions set forth in 37 CFR 104.1 and theexceptions in 37 CFR 104.21 are applicable to thissection.

2213 Representative of Requester[R-07.2015]

37 CFR 1.510 Request for ex parte reexamination.*****

(f) If a request is filed by an attorney or agent identifyinganother party on whose behalf the request is being filed, theattorney or agent must have a power of attorney from that partyor be acting in a representative capacity pursuant to § 1.34.

Where an attorney or agent files a request for anidentified client (the requester), he or she may actunder either a power of attorney from the client, oract in a representative capacity under 37 CFR 1.34,see 37 CFR 1.510(f). While the filing of the powerof attorney is desirable, processing of thereexamination request will not be delayed due to itsabsence.

In order to act in a representative capacity under 37CFR 1.34, an attorney or agent must set forth his orher registration number, his or her name, and his orher signature. In order to act under a power ofattorney from a requester, an attorney or agent mustbe provided with a power of attorney. 37 CFR1.32(c) provides that a “power of attorney may onlyname as representative” the inventors or registeredpatent practitioners. Thus, an attorney or agentrepresenting a requester must be a registered patentpractitioner.

If any question of authority to act is raised, proof ofauthority may be required by the Office.

All correspondence for a requester that is not thepatent owner is addressed to the representative ofthe requester, unless a specific indication is made toforward correspondence to another address.

If the request is filed by a person on behalf of thepatent owner, correspondence will be directed to thepatent owner at the address as indicated in 37 CFR1.33(c), regardless of the address of the person filing

2200-18Rev. 08.2017, January 2018

MANUAL OF PATENT EXAMINING PROCEDURE§ 2212.01

the request. See MPEP § 2222 for a discussion ofwho receives correspondence on behalf of a patentowner and how changes in the correspondenceaddress are to be made.

A patent owner may not be represented during areexamination proceeding by any person who is notregistered to practice before the Office, since thoseindividuals are prohibited by 37 CFR 1.33(c) fromsigning amendments and other papers filed in areexamination proceeding on behalf of the patentowner.

2214 Content of Request for Ex ParteReexamination Filed under 35 U.S.C. 302[R-08.2017]




(1) A statement pointing out each substantial newquestion of patentability based on prior patents and printedpublications.

(2) An identification of every claim for whichreexamination is requested, and a detailed explanation of thepertinency and manner of applying the cited prior art to everyclaim for which reexamination is requested. For each statementof the patent owner and accompanying information submittedpursuant to § 1.501(a)(2) which is relied upon in the detailedexplanation, the request must explain how that statement is beingused to determine the proper meaning of a patent claim inconnection with the prior art applied to that claim and how eachrelevant claim is being interpreted. If appropriate, the partyrequesting reexamination may also point out how claimsdistinguish over cited prior art.

(3) A copy of every patent or printed publication reliedupon or referred to in paragraph (b)(1) and (2) of this sectionaccompanied by an English language translation of all thenecessary and pertinent parts of any non-English language patentor printed publication.

(4) A copy of the entire patent including the front face,drawings, and specification/claims (in double column format)for which reexamination is requested, and a copy of anydisclaimer, certificate of correction, or reexamination certificateissued in the patent. All copies must have each page plainlywritten on only one side of a sheet of paper.

(5) A certification that a copy of the request filed by aperson other than the patent owner has been served in its entirety

on the patent owner at the address as provided for in § 1.33(c).The name and address of the party served must be indicated. Ifservice was not possible, a duplicate copy must be supplied tothe Office.

(6) A certification by the third party requester that thestatutory estoppel provisions of 35 U.S.C. 315(e)(1) or 35 U.S.C.325(e)(1) do not prohibit the requester from filing the ex partereexamination request.

*****

37 CFR 1.510(a) requires the payment of the feespecified in 37 CFR 1.20(c)(1) for a request forreexamination filed under 35 U.S.C. 302. See MPEP§ 2215. If a request filed under 35 U.S.C. 302 by thepatent owner includes a proposed amendment inaccordance with 37 CFR 1.530, excess claims feesunder 37 CFR 1.20(c)(3) and (c)(4) may also apply;see MPEP § 2250.03.

37 CFR 1.510(b) sets forth the required elements ofa request for ex parte reexamination. The elementsare as follows:

“(1) a statement pointing out each substantialnew question of patentability based on priorpatents and printed publications.”

This statement should clearly point out what therequester considers to be the substantial new questionof patentability which would warrant areexamination. The cited prior art should be listedon a form PTO/SB/08A or 08B, or PTO/SB/42 (oron a form having a format equivalent to one of theseforms) by the requester. See also MPEP § 2217.

A request for reexamination must assert a substantialnew question of patentability. For each identifiedsubstantial new question of patentability and eachidentified proposed ground of rejection, the requestmust explain how the cited documents identified forthat substantial new question ofpatentability/proposed ground of rejection raise asubstantial new question of patentability. See MPEP§ 2216. A requester must not, in a request forreexamination, argue that the submitted referencesdo not raise a substantial new question ofpatentability, and that no order for reexaminationshould be issued.

Rev. 08.2017, January 20182200-19


“(2) An identification of every claim for whichreexamination is requested, and a detailedexplanation of the pertinency and manner ofapplying the cited prior art to every claim forwhich reexamination is requested. For eachstatement of the patent owner andaccompanying information submitted pursuantto § 1.501(a)(2) which is relied upon in thedetailed explanation, the request must explainhow that statement is being used to determinethe proper meaning of a patent claim inconnection with the prior art applied to thatclaim and how each relevant claim is beinginterpreted. If appropriate, the party requestingreexamination may also point out how claimsdistinguish over cited prior art.”

The request must identify each substantial newquestion of patentability raised and proposed groundof rejection separately. The request must apply allof the cited prior art to the claims for whichreexamination is requested. For each identifiedsubstantial new question of patentability and eachidentified proposed ground of rejection, the requestmust explain how the cited documents identified forthat substantial new question ofpatentability/proposed ground of rejection areapplied to meet or teach the patent claim limitationsto thus establish the identified substantial newquestion of patentability or proposed ground ofrejection. See MPEP § 2217. If the request is filedby the patent owner, the patent owner may alsoindicate how the claims distinguish from the citedprior art patents and printed publications. If anystatement of the patent owner submitted pursuant to37 CFR 1.501(a)(2) is relied upon in the detailedexplanation, requester must explain how thatstatement is being used to determine the propermeaning of a patent claim in connection with priorart applied to that claim. 37 CFR 1.510(b)(2) requiresthat the “detailed explanation” of applying prior artprovided in the request for ex parte reexaminationmust explain how each patent owner claim scopestatement is being used to determine the propermeaning of each patent claim in connection with theprior art applied to that claim. The explanation willbe considered by the Office during the examinationstage, if reexamination is ordered. At the order stage,the Office will not consider any patent owner claim

scope statement discussed in the detailed explanationof the request. See 35 U.S.C. 301(d).

“(3) A copy of every patent or printedpublication relied upon or referred to inparagraph (b)(1) and (2) of this sectionaccompanied by an English language translationof all the necessary and pertinent parts of anynon-English language patent or printedpublication.”

A copy of each cited patent or printed publication,as well as a translation of each non-Englishdocument (or a translation of at least the portion(s)relied upon) is required so that all materials will beavailable to the examiner for full consideration. Alisting of the patents and printed publications asprovided for in 37 CFR 1.98 must also be provided.A comprehensive listing is required, since theidentification of the cited art in reexamination bythe requester is no less important than that of a patentowner or applicant, and furthers the statutorymandate of 35 U.S.C. 305 that reexaminationproceedings must be “conducted with specialdispatch within the Office.” The requirement for thesubmission of a copy of every patent or printedpublication relied upon or referred to in the request,pursuant to 37 CFR 1.510(b)(3), is waived to theextent that copies of U.S. patents and U.S. patentapplication publications which are relied upon orreferred to in the request are not required to besubmitted with the request, unless specificallyrequired by the Office. See MPEP § 2218.

“(4) A copy of the entire patent including thefront face, drawings, and specification/claims(in double column format) for whichreexamination is requested, and a copy of anydisclaimer, certificate of correction, orreexamination certificate issued in the patent.All copies must have each page plainly writtenon only one side of a sheet of paper.”

A copy of the patent, for which reexamination isrequested, should be provided with the specificationand claims submitted in a double column format.The drawing pages of the printed patent arepresented as they appear in the printed patent; thesame is true for the front page of the patent. Thus,

2200-20Rev. 08.2017, January 2018


a full copy of the printed patent (including the frontpage) can be used to provide the abstract, drawings,specification, and claims of the patent for thereexamination request. The printed patent is to bereproduced on only one side of the paper; a two sidedcopy of the patent is not proper. See MPEP § 2219.

Any disclaimer, certificate of correction, orreexamination certificate issued in the patentbecomes a part of the patent. Thus, a copy of eachmust be supplied in order to provide the completepatent. The copy must have each page plainly writtenon only one side of a sheet of paper.

“(5) A certification that a copy of the requestfiled by a person other than the patent ownerhas been served in its entirely on the patentowner at the address as provided for in §1.33(c). The name and address of the partyserved must be indicated. If service was notpossible, a duplicate copy must be supplied tothe Office.”

If the request is filed under 35 U.S.C. 302 by aperson other than the patent owner, a certificationthat a copy of the request papers has been served onthe patent owner must be included. The certificationmust set forth the name and address employed inserving the patent owner. If service was not possibleafter a reasonable effort to do so, a duplicate copyof the request must be supplied to the Office togetherwith a cover letter including an explanation of whateffort was made to effect service, and why that effortwas not successful. To avoid the possibility of theOffice erroneously charging a duplicate filing fee,requesters are strongly encouraged to clearly wordthe cover letter by stating, for example, in bold printin the heading “Duplicate Copy of Request Filedunder 37 CFR 1.510(b)(5) When Service on thePatent Owner Was Not Possible.” The requestshould be as complete as possible, since there is noguarantee that the examiner will consider other priorart when making the decision on the request. Also,this may be the third party requester’s onlyopportunity to participate in the proceeding since,if no statement under 37 CFR 1.530(b) is filed bythe patent owner, no later reply under 37 CFR 1.535or other submission may be filed by the requester inthe ex parte reexamination proceeding. See alsoMPEP § 2220.

“(6) A certification by the third party requesterthat the statutory estoppel provisions of 35U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) do notprohibit the requester from filing the ex partereexamination request.”

37 CFR 1.510(b)(6) requires that the request containa certification by the third party requester that thestatutory estoppel provisions of inter partes reviewand post grant review do not bar the third party fromrequesting ex parte reexamination under 35 U.S.C.302. The basis for this requirement is the estoppelprovisions of inter partes review and post grantreview provided in AIA 35 U.S.C. 315(e)(1) and 35U.S.C. 325(e)(1), respectively, which identify whena petitioner for inter partes review or post grantreview, or a real party in interest or privy of thepetitioner, may not file a request for ex partereexamination.

The rules do not require ex parte reexaminationrequesters to identify themselves upon the filing ofthe request under 35 U.S.C. 302. The certificationrequirement of 37 CFR 1.510(b)(6), coupled with aparty’s 37 CFR 11.18 certification obligations whentransacting business before the Office, are consideredsufficient to ensure compliance with the inter partes review and post grant statutory estoppelrequirements. A real party in interest that wishes toremain anonymous when filing a request forreexamination under 37 CFR 1.510 can do so byutilizing the services of a registered practitioner. Insuch an instance, the registered practitionersubmitting a request for reexamination on behalf ofthe real party in interest would be certifying that thereal party in interest was not estopped from filingthe request. Conversely, an individual filing a requestfor reexamination under 37 CFR 1.510 on behalf ofthe individual cannot remain anonymous, as theindividual is required to sign the document thatincludes the 37 CFR 1.510(b)(6) certification.

In order to obtain a reexamination filing date, therequest papers must include the fee for requestingex parte reexamination required by 37 CFR 1.510(a)and all of the parts required by 37 CFR 1.510(b).Request papers that fail to satisfy all therequirements of 37 CFR 1.510(a) and (b) areincomplete and will not be granted a filing date. SeeMPEP § 2227.

Rev. 08.2017, January 20182200-21


An application data sheet (ADS) under 37 CFR 1.76cannot be submitted in a reexamination proceedingexcept as provided in MPEP § 2258.02.

Form PTO/SB/57 should be helpful to persons filingrequests for reexamination under 37 CFR 1.510. The

use of this form as the transmittal form and coversheet of a request for reexamination is encouraged,but its use is not a requirement of the law nor therules. Immediately following is a form PTO/SB/57and a sample of a request for reexamination thatwould be attached to the form PTO/SB/57 coversheet.

2200-22Rev. 08.2017, January 2018


Rev. 08.2017, January 20182200-23


2200-24Rev. 08.2017, January 2018


Rev. 08.2017, January 20182200-25


2200-26Rev. 08.2017, January 2018


2215 Fee for Requesting Ex ParteReexamination under 35 U.S.C. 302[R-07.2015]



(d) The filing date of the request for ex parte reexaminationis the date on which the request satisfies all the requirements ofthis section.

*****

In order for a request filed under 35 U.S.C. 302 tobe accepted, be given a filing date, and be publishedin the Official Gazette, the request papers mustsatisfy all the requirements of 37 CFR 1.510(a) and(b). The entire fee required under 37 CFR 1.20(c)(1)for filing a request for reexamination must be paid.If the request was filed under 35 U.S.C. 302 by thepatent owner and includes a proposed amendmentin accordance with 37 CFR 1.530, excess claimsfees under 37 CFR 1.20(c)(3) and (c)(4) may alsoapply; see MPEP § 2250.03.

Pursuant to 37 CFR 1.20(c)(1), there are differentfiling fees for a large entity, a small entity and amicro entity, when filing a request for ex parte reexamination under 35 U.S.C. 302. In order for arequester to pay small entity or micro entity fees, arequester must affirmatively state that it is eligiblefor small entity or micro entity status (respectively).For example, a requester can affirmatively assertsmall entity status by checking the appropriate boxin line 3 on the transmittal form (PTO/SB/57).However, only a patent owner requester can establishmicro entity status. A third party requester cannotestablish micro entity status, since a third partyrequester is not provided for in 37 CFR 1.29. See 37CFR 1.27 and MPEP §§ 509.02 and 509.03 for moreinformation about establishing small entity status.See 37 CFR 1.29 and MPEP § 509.04 et seq. formore information about establishing micro entitystatus.

If the request for ex parte reexamination under 35U.S.C. 302 is subsequently denied (see MPEP §2247 and § 2248), or vacated (see MPEP § 2227 and§ 2246, subsection I), a refund in accordance with37 CFR 1.26(c) will be made to the identifiedrequester. If the request for ex parte reexaminationunder 35 U.S.C. 302 is found to be incomplete andthe defect is not cured (see MPEP § 2227), a refundin accordance with 37 CFR 1.26(a) will be made tothe identified requester.

If the entire fee for ex parte reexamination is notpaid or all the requirements of 37 CFR 1.510(a) and(b) are not satisfied, the request will be consideredto be incomplete. See 37 CFR 1.510(c) and (d) andMPEP § 2227.

Where the entire filing fee is not paid after therequester has been given an opportunity to do so, nodetermination on the request will be made. Therequest papers will ordinarily be placed in the patentfile as a submission under 37 CFR 1.501, if theycomply with the requirements of the rule. See MPEP§ 2206 for handling of prior art citations or writtenstatements under 37 CFR 1.501.

2216 Substantial New Question ofPatentability [R-07.2015]

Under 35 U.S.C. 304, the Office must determinewhether “a substantial new question of patentability”affecting any claim of the patent has been raised.37 CFR 1.510(b)(1) requires that a request for exparte reexamination include “a statement pointingout each substantial new question of patentabilitybased on prior patents and printed publications.” Ifsuch a new question is found, an order for ex partereexamination of the patent is issued. It is thereforeimportant that the request clearly set forth in detailwhat the requester considers the “substantial newquestion of patentability” to be in view of patentsand printed publications cited under the provisionsof 35 U.S.C. 302. The request must point out howany questions of patentability raised are substantiallydifferent from those raised in the previousexamination of the patent before the Office.

For requests filed under 35 U.S.C. 302, it is notsufficient that a request for reexamination merelyproposes one or more rejections of a patent claim or

Rev. 08.2017, January 20182200-27


claims as a basis for reexamination. It must first bedemonstrated that a patent or printed publication thatis relied upon in a proposed rejection presents a new,non-cumulative technological teaching that was notpreviously considered and discussed on the recordduring the prosecution of the application that resultedin the patent for which reexamination is requested,and during the prosecution of any other priorproceeding involving the patent for whichreexamination is requested. See also MPEP § 2242.

The legal standard for ordering ex partereexamination, as set forth in 35 U.S.C. 303(a),requires a substantial new question of patentability.The substantial new question of patentability maybe based on art previously considered by the Officeif the reference is presented in a new light or adifferent way that escaped review during earlierexamination. The clarification of the legal standardfor determining obviousness under 35 U.S.C. 103in KSR International Co. v. Teleflex Inc. (KSR),550 U.S. 398, 82 USPQ2d 1385 (2007) does notalter the legal standard for determining whether asubstantial new question of patentability exists. Therequirement for a substantial new question ofpatentability remains in place even if it is clear fromthe record of a patent for which reexamination isrequested that the patent was granted because theOffice did not show “motivation” to combine, orotherwise satisfy the teaching, suggestion, ormotivation (TSM) test. Thus, a reexaminationrequest relying on previously applied prior art thatasks the Office to look at the art again based solelyon the Supreme Court’s clarification of the legalstandard for determining obviousness under 35U.S.C. 103 in KSR, without presenting the art innew light or different way, will not raise a substantialnew question of patentability as to the patent claims,and reexamination will not be ordered.

After the enactment of the Patent and TrademarkOffice Authorization Act of 2002 (“the 2002 Act”),a substantial new question of patentability can beraised by patents and printed publications“previously cited by or to the Office or consideredby the Office” (“old art”). The 2002 Act did notnegate the statutory requirement for a substantialnew question of patentability that requires raisingnew questions about pre-existing technology. In theimplementation of the 2002 Act, MPEP § 2242,

subsection II.A. was revised. The revision permitsraising a substantial new question of patentabilitybased solely on old art, but only if the old art is“presented/viewed in a new light, or in a differentway, as compared with its use in the earlierexamination(s), in view of a material new argumentor interpretation presented in the request.” Thus, arequest may properly raise a substantial new questionof patentability by raising a material new analysisof previously considered reference(s) under therationales authorized by KSR.

Questions relating to grounds of rejection other thanthose based on prior art patents or printedpublications should not be included in a request filedunder 35 U.S.C. 302 and will not be considered bythe examiner if included. Examples of such questionsthat will not be considered are public use, on sale,and conduct by parties.

Affidavits or declarations or other written evidencewhich explain the contents or pertinent dates of priorart patents or printed publications in more detail maybe considered in reexamination. See MPEP § 2258.

2217 Statement Applying Prior Art in aRequest Filed under 35 U.S.C. 302[R-07.2015]

The third sentence of 35 U.S.C. 302 indicates thatthe “request must set forth the pertinency and mannerof applying cited prior art to every claim for whichreexamination is requested.” 37 CFR 1.510(b)(2)requires that the request include “[a]n identificationof every claim for which reexamination is requested,and a detailed explanation of the pertinency andmanner of applying the cited prior art to every claimfor which reexamination is requested.” If the requestis filed by the patent owner, the request forreexamination may also point out how claimsdistinguish over cited prior art.

The prior art applied may only consist of prior artpatents or printed publications. The prior art regimeunder which the application for the patent wasexamined (the first-inventor-to-file prior art regime,or the first-to-invent prior art regime) will generallybe applied in reexamination of the patent, and anystatement in the request applying the prior art mustreflect that.

2200-28Rev. 08.2017, January 2018


With respect to the first-inventor-to-file prior artregime, substantial new questions of patentabilitymay be based upon the provisions of 35 U.S.C. 102as it is in effect on and after March 16, 2013,applicable to prior art patents and printedpublications. Thus “A person shall be entitled to apatent unless”:

(1) “the claimed invention was patented” or“described in a printed publication” “before theeffective filing date of the claimed invention”;or(2) “the claimed invention was described in apatent issued under section 151, or in anapplication for patent published or deemedpublished under section 122(b), in which thepatent or application, as the case may be, namesanother inventor and was effectively filedbefore the effective filing date of the claimedinvention.”

These provisions are subject to the exceptions of 35U.S.C. 102(b), and effective filing dates aredetermined pursuant to 35 U.S.C. 102(d). For furtherinformation as to the first-inventor-to-file prior artregime, see MPEP Chapter 700.

With respect to the first-to-invent prior art regime,substantial new questions of patentability may bebased upon the following portions of 35 U.S.C. 102(in effect on March 15, 2013):

“(a)...patented or described in a printedpublication in this or a foreign country, beforethe invention thereof by the applicant for patent,or”“(b) the invention was patented or described ina printed publication in this or a foreigncountry... more than one year prior to the dateof the application for patent in the UnitedStates, or”

*****“(d) the invention was first patented or causedto be patented, or was the subject of aninventor’s certificate, by the applicant or hislegal representatives or assigns in a foreigncountry prior to the date of the application forpatent in this country on an application forpatent or inventor’s certificate filed more than

twelve months before the filing of theapplication in the United States, or”“(e) the invention was described in — (1) anapplication for patent, published under section122(b), by another filed in the United Statesbefore the invention by the applicant for patentor (2) a patent granted on an application forpatent by another filed in the United Statesbefore the invention by the applicant for patent,except that an international application filedunder the treaty defined in section 351(a) shallhave the effects for the purposes of thissubsection of an application filed in the UnitedStates only if the international applicationdesignated the United States and was publishedunder Article 21(2) of such treaty in the Englishlanguage; or”

*****“(g)...(2) before such person’s inventionthereof, the invention was made in this countryby another inventor who had not abandoned,suppressed, or concealed it. ...”

Substantial new questions of patentability may alsobe presented under 35 U.S.C. 103 which are basedon the above indicated portions of 35 U.S.C. 102.

Substantial new questions of patentability in areexamination proceeding filed under 35 U.S.C. 302must be based on patents or printed publications.Other matters, such as public use or on sale,inventorship, 35 U.S.C. 101, 35 U.S.C. 112, conduct,etc., will not be considered when making thedetermination on the request and should not bepresented in the request. Further, a prior art patentor printed publication cannot be properly applied asa ground for reexamination if it is merely used asevidence of alleged prior public use or on sale,insufficiency of disclosure, etc. The prior art patentor printed publication must be applied directly toclaims under 35 U.S.C. 103 and/or an appropriateportion of 35 U.S.C. 102 or relate to the applicationof other prior art patents or printed publications toclaims on such grounds.

The statement applying the prior art may, whereappropriate, point out that claims in the patent forwhich reexamination is requested are entitled onlyto the filing date of the patent and are not supported

Rev. 08.2017, January 20182200-29


by an earlier foreign or United States patentapplication whose filing date is claimed. Forexample, the effective date of some of the claims ina patent which resulted from a continuing applicationunder 35 U.S.C. 120 could be the filing date of thecontinuing application since those claims were notsupported in the parent application. Therefore,intervening patents or printed publications areavailable as prior art. See In re Ruscetta, 255 F.2d687, 118 USPQ 101 (CCPA 1958), In re vanLangenhoven, 458 F.2d 132, 173 USPQ 426 (CCPA1972). See also MPEP § 211.05.

Typically, substantial new questions of patentabilityin a reexamination proceeding filed under 35 U.S.C.302 are based on “prior art” patents and publications.There are exceptions, however. For example, in Inre Lonardo, 119 F.3d 960, 43 USPQ2d 1262 (Fed.Cir. 1997), the Federal Circuit upheld a nonstatutorydouble patenting rejection in which the patent uponwhich the rejection was based and the patent underreexamination shared the same effective filing date.See also the discussion as to double patenting inMPEP § 2258. Analogously, for reexaminationproceedings examined under the first-to-invent priorart regime, a 35 U.S.C. 102(g)(2) rejection may beasserted in a reexamination proceeding based on theexamples illustrated below:

2200-30Rev. 08.2017, January 2018


Rev. 08.2017, January 20182200-31


I. EXPLANATION MUST BE COMPLETE

The mere citation of new patents or printedpublications without an explanation does not complywith 37 CFR 1.510(b)(2). Requester must presentan explanation of how the cited patents or printedpublications are applied to all claims which requesterconsiders to merit reexamination. This not only setsforth the requester’s position to the Office, but alsoto the patent owner (where the patent owner is notthe requester). A request for reexamination,including the citation form (form on which thereferences are listed), must not include citations tobackground references or other references which arenot used to support a SNQ or proposed rejection ofthe claims, and explained in the request as toproviding such support. Without explanation foreach of the references the request seeks to make ofrecord, the request lacks the requisite “detailedexplanation of the pertinency and manner of applyingthe cited prior art to every claim for whichreexamination is requested.”

Thus, for example, once the request has citeddocuments (patents and printed publications) andproposed combinations of the documents as to patentclaims 1-10 (for example), the request must explainhow each of the proposed combinations specificallyapplies to each claim that it is asserted against (i.e.,claims 1 – 10), explaining how each document(reference) identified for the combination is used.

Ideally, the required explanation can be providedusing an appropriately detailed claim chart thatcompares, limitation by limitation, each claim forwhich reexamination is requested with the relevantteachings of each reference cited in the request. Seethe sample request for reexamination in MPEP §2214.

For proposed obviousness rejections, requester mustprovide at least one basis for combining the citedreferences, and a statement of why the claim(s) underreexamination would have been obvious over theproposed reference combination. Preferably, therequester should quote the pertinent teachings in thereference, referencing each quote by page, columnand line number and any relevant figure numbers.The explanation must not lump together the

proposed rejections or proposed combinations ofreferences.

Examples of inappropriate language:

- Claim 1 is unpatentable under 35 U.S.C. 102 as beinganticipated by, or in the alternative, under 35 U.S.C. 103 asbeing obvious over the Smith reference.

- Claim 1 is unpatentable under 35 U.S.C. 103 as being obviousover Smith and/or Charles.

- Claim 2 is unpatentable under 35 U.S.C. 103 as being obviousover Smith in view of Jones or Harvey. (This could howeverbe used if both Jones and Harvey provide a minor teachingwhich can be articulated in a sentence or two.)

- Claims 3 - 10 are unpatentable under 35 U.S.C. 103 as beingobvious over Smith in view of either Jones and Cooper orHarvey and Cooper.

- Claims 3 - 10 are unpatentable under 35 U.S.C. 103 as beingobvious over Smith in view of Harvey, taken alone or furtherin view of Cooper.

Examples of appropriate language:

- Claim 1 is unpatentable under 35 U.S.C. 102 as beinganticipated by Smith.

- Claim 1 is unpatentable under 35 U.S.C. 103 as being obviousover Smith.

- Claim 1 is unpatentable under 35 U.S.C. 103 as being obviousover Charles.

- Claim 2 is unpatentable under 35 U.S.C. 103 as being obviousover Smith in view of Jones.

- Claim 2 is unpatentable under 35 U.S.C. 103 as being obviousover Smith in view of Harvey.

- Claims 3 - 10 are unpatentable under 35 U.S.C. 103 as beingobvious over Smith in view of Jones, and further in view ofCooper.

- Claims 3 - 10 are unpatentable under 35 U.S.C. 103 as beingobvious over Smith in view of Harvey, and further in view ofCooper.

Any failure to provide the required explanation forany document, combination, or claim will beidentified in a “Notice of Failure to Comply with Ex Parte Reexamination Request FilingRequirements” (see MPEP § 2227). If a requester

2200-32Rev. 08.2017, January 2018


receives such a notice that identifies one or moredocuments, combinations, or claims for which anexplanation was not given, the requester has theoption to respond by either:

(A) providing a separate explanation for eachcombination, document, and claim identified in thenotice as lacking explanation; or

(B) explicitly withdrawing any document,combination, or claim for which reexamination wasrequested for which there is no explanation.Obviously, once this is done, requester need notprovide an explanation for the withdrawn document,combination, or claim. Thus, for example, if therequester’s response to the notice explicitlywithdraws the request as to claims 6-10, then thedocuments and their combinations need only beapplied separately as to claims 1-5 of the patent.Likewise, if the requester’s response to the noticeexplicitly withdraws the Jones patent from therequest, then no explanation is required as to theJones reference, and all combinations advanced inthe request that contained Jones are deemed to bewithdrawn.

Even if the request fails to comply with one of theabove-identified requirements, the request may beaccepted if it is readily understood from theexplanation provided in the request as to how thecited patents or printed publications are applied toall claims which requester considers to meritreexamination.

II. AFFIDAVITS/DECLARATIONS/OTHERWRITTEN EVIDENCE

Affidavits or declarations or other written evidencewhich explain the contents or pertinent dates of priorart patents or printed publications in more detail maybe considered in reexamination. See MPEP § 2258.

III. ADMISSIONS

The consideration under 35 U.S.C. 303 of a requestfor ex parte reexamination filed under 35 U.S.C.302 is limited to prior art patents and printedpublications. See Ex parte McGaughey, 6 USPQ2d1334, 1337 (Bd. Pat. App. & Inter. 1988). Thus anadmission, per se, may not be the basis forestablishing a substantial new question of

patentability. However, an admission by the patentowner of record in the file or in a court record maybe utilized in combination with a patent or printedpublication.

For handling of admissions during the examinationstage of a proceeding (i.e., after reexamination hasbeen ordered), see MPEP § 2258.

The admission can reside in the patent file (made ofrecord during the prosecution of the patentapplication) or may be presented during thependency of the reexamination proceeding or inlitigation. Admissions by the patent owner as to anymatter affecting patentability may be utilized todetermine the scope and content of the prior art inconjunction with patents and printed publicationsin a prior art rejection, whether such admissionsresult from patents or printed publications or fromsome other source. An admission relating to anyprior art established in the record or in court may beused by the examiner in combination with patentsor printed publications in a reexaminationproceeding. The admission must stand on its own.Information supplementing or further defining theadmission would be improper.

Any admission submitted by the patent owner isproper. A third party, however, may not submitadmissions of the patent owner made outside therecord of the file or the court record, unless suchadmissions were entered into a court record. If anadmission made outside the record of the file or thecourt record is entered into a court record and a copythereof is then filed in a reexamination (as a copyof a paper filed in the court), such paper could beadmitted pursuant to MPEP § 2282; however, suchwould not be given weight as an admission withrespect to use in establishing a substantial newquestion of patentability, or as a basis in rejectingclaims. Such a submission would be outside thescope of reexamination.

2218 Copies of Prior Art [R-07.2015]

It is required that a copy of each patent or printedpublication relied on or referred to in the requestfiled under 35 U.S.C. 302, be filed with the request(37 CFR 1.510(b)(3)). If the copy provided is notlegible, or is such that its image scanned into the

Rev. 08.2017, January 20182200-33


Image File Wrapper system (IFW) will not belegible, it is deemed to not have been provided. Theappropriate “Notice of Failure to Comply with ExParte Reexamination Request Filing Requirements”(see MPEP § 2227) will identify this defect. Anexception is color photographs and like colorsubmissions, which, if legible as presented, will beretained in an “artifact” file and used as such. If anyof the documents are not in the English language,an English language translation of all necessary andpertinent parts is also required. See MPEP §609.04(a), subsection III. An English languagesummary or abstract of a non-English languagedocument is usually not sufficient. There is noassurance that the Office will consider thenon-English language patent or printed publicationbeyond the translation matter that is submitted.

The requirement for the submission of a copy ofevery patent or printed publication relied upon orreferred to in the request, pursuant to 37 CFR1.510(b)(3), is waived to the extent that copies ofU.S. patents and U.S. patent application publicationswhich are relied upon or referred to in the requestare not required to be submitted with the request,unless specifically required by the Office. Thiswaiver is in accordance with 37 CFR 1.98, whichexcludes U.S. patents and U.S. patent publicationsfrom the requirement for the submission of a legiblecopy of documents cited in an information disclosurestatement, unless specifically required by the Office.

In addition, it is not required nor is it permitted thatparties submit copies of copending reexaminationproceedings and applications (which copies can bemistaken for a new request/filing); rather, submittersmay provide the application/proceeding number andits status (note that a submission that is not permittedentry will be returned, expunged or discarded, at thesole discretion of the Office). For example, wherethe patent for which reexamination is requested is acontinuation-in-part of a parent application, therequester would notify the Office of the applicationnumber of the parent application and its status if theasserted substantial new question of patentabilityrelates to a proposed rejection based on anintervening art and the question of whether theclaimed subject matter in the patent has support inthe parent application is relevant.

2219 Copy of Printed Patent [R-07.2015]

Requesters are required under 37 CFR 1.510(b)(4)to include a copy of the patent for whichreexamination is requested, to serve as thespecification for the reexamination proceeding. Acopy of the patent for which reexamination isrequested should be provided in a double columnformat. Thus, a full copy of the printed patent(including the front page) would be used to providethe abstract, drawings, specification, and claims ofthe patent for the reexamination request and theresulting reexamination proceeding. A copy of anydisclaimer, certificate of correction, or reexaminationcertificate issued for the patent must also beincluded, so that a complete history of the patent isbefore the Office for consideration. A copy of anyfederal court decision, complaint in a pending civilaction, or interference or derivation decision shouldalso be submitted.

2220 Certificate of Service [R-07.2015]

If the requester of a request filed under 35 U.S.C.302 is a person other than the patent owner, theowner of the patent must be served with a copy ofthe request in its entirety. The service must be madeon the patent owner’s correspondence address asindicated in 37 CFR 1.33(c). The third partyrequester must set forth on the certificate of servicethe name and address of the party served and themethod of service. The certificate of service mustbe attached to the request submitted to the Office.Further, the copy of the request served on the patentowner must also include a copy of the certificate ofservice. If service was not possible after a reasonableeffort to do so, a duplicate copy of the request papersmust be supplied to the Office together with a coverletter including an explanation of what effort wasmade to effect service, and why that effort was notsuccessful. To avoid the possibility of the Officeerroneously charging a duplicate filing fee,requesters are strongly encouraged to clearly wordthe cover letter by stating, for example, in bold printin the heading “Duplicate Copy of Request Filedunder 37 CFR 1.510(b)(5) When Service on thePatent Owner Was Not Possible.”

See MPEP § 2266.03 regarding service on therequester and on the patent owner.

2200-34Rev. 08.2017, January 2018


2221 Amendments Included in Request Filedunder 35 U.S.C. 302 by Patent Owner[R-07.2015]

Under 37 CFR 1.510(e), a patent owner may includea proposed amendment with his or her request. Anysuch amendment must be in accordance with 37 CFR1.530(d) through (j). See MPEP § 2250 as to theformat and requirements of an amendment in areexamination proceeding. If an amendment issubmitted to add claims to the patent beingreexamined, then excess claims fees pursuant to 37CFR 1.20(c)(3) and (c)(4) may be applicable to thepresentation of the added claims. See the discussionof excess claim fees in MPEP § 2250.03.Amendments may also be proposed by patent ownersin a statement under 37 CFR 1.530(b) and (c) orduring the actual ex parte reexamination prosecution(37 CFR 1.550(b)). See also MPEP § 2234 and§ 2250.

The request should be decided on the wording of thepatent claims in effect at that time (without anyproposed amendments). The decision on the requestwill be made on the basis of the patent claims asthough the proposed amendment had not beenpresented. However, if the request for reexaminationis granted, all subsequent reexamination prosecutionand examination should be on the basis of the claimsas amended.

2222 Address of Patent Owner [R-07.2015]

37 CFR 1.33 Correspondence respecting patent applications,reexamination proceedings, and other proceedings.

*****

(c) All notices, official letters, and other communicationsfor the patent owner or owners in a reexamination orsupplemental examination proceeding will be directed to thecorrespondence address in the patent file. Amendments filed ina reexamination proceeding, and other papers filed in areexamination or supplemental examination proceeding, onbehalf of the patent owner must be signed by the patent owner,or if there is more than one owner by all the owners, or by anattorney or agent of record in the patent file, or by a registeredattorney or agent not of record who acts in a representativecapacity under the provisions of § 1.34. Double correspondencewith the patent owner or owners and the patent owner’s attorneyor agent, or with more than one attorney or agent, will not beundertaken.

*****

Address of Patent Owner: The correspondenceaddress for the patent to be reexamined, or beingreexamined is the correct address for all notices,official letters, and other communications for patentowners in reexamination proceedings. See 37 CFR1.33(c).

Representative of Patent Owner: As a general rule,the attorney-client relationship terminates whenthe purpose for which the attorney was employed isaccomplished; e.g., the issuance of a patent to theclient. However, under 37 CFR 11.104, as underformer 37 CFR 10.23(c)(8), a practitioner shouldnot fail to timely and adequately inform a client orformer client of correspondence received from theOffice when the correspondence: (i) could have asignificant effect on a matter pending before theOffice, (ii) is received by the practitioner on behalfof a client or former client, and (iii) iscorrespondence of which a reasonable practitionerwould believe under the circumstances the client orformer client should be notified.” (Emphasis added.)This responsibility of a practitioner to a former clientis not eliminated by withdrawing as an attorney oragent of record. See also 37 CFR 1.116(d). Thepractitioner if he/she so desires, can minimize theneed for forwarding correspondence concerningissued patents by having the correspondence addresschanged after the patent issues if the correspondenceaddress is the practitioner’s address, whichfrequently is the case where the practitioner is theattorney or agent of record.

If the patent owner desires that a different attorneyor agent receive correspondence, then a new powerof attorney must be filed. See MPEP § 324 forestablishing an assignee’s right to take action whensubmitting a power of attorney.

Submissions to the Office to change thecorrespondence address or power of attorney in therecord of the patent should be addressed as follows:

Where a request for ex parte reexamination has beenfiled:

Mail Stop “ Ex Parte Reexam”Attn: Central Reexamination UnitCommissioner for PatentsP.O. Box 1450Alexandria, VA 22313-1450

Rev. 08.2017, January 20182200-35


Where a request for inter partes reexamination hasbeen filed:

Mail Stop “ Inter Partes Reexam”Attn: Central Reexamination UnitCommissioner for PatentsP.O. Box 1450Alexandria, VA 22313-1450

Where no request for reexamination has been filedand the patent is in storage:

Mail Stop Document ServicesDirector of the U.S. Patent and Trademark OfficeP.O. Box 1450Alexandria, VA 22313-1450

It is strongly recommended that the Mail Stopinformation be placed in a prominent position on thefirst page of each paper being filed utilizing a

sufficiently large font size that will direct attentionto it.

Sample forms for changing the correspondenceaddress or power of attorney for the patent ownerand for the third party requester are set forth below.

Form PTO/AIA/81B Reexamination or SupplementalExamination – Patent Owner Power of Attorney orRevocation of Power of Attorney with a New Powerof Attorney and Change of Correspondence Addressfor Reexamination or Supplemental Examinationand Patent

Form PTO/SB/81C Reexamination – Third PartyRequester Power of Attorney or Revocation of Powerof Attorney with a New Power of Attorney andChange of Correspondence Address

2200-36Rev. 08.2017, January 2018


Rev. 08.2017, January 20182200-37


2200-38Rev. 08.2017, January 2018


Rev. 08.2017, January 20182200-39


2200-40Rev. 08.2017, January 2018


Rev. 08.2017, January 20182200-41


2223 Withdrawal of Attorney or Agent[R-07.2015]

For a practitioner to withdraw from a patent and/ora reexamination proceeding, the Office no longerrequires that there be at least 30 days remaining inany running period for response between theapproval of a request to withdraw fromrepresentation and the expiration date of any runningperiod for response. Instead, pursuant to 37 CFR11.116, the Office requires the practitioner(s) tocertify that he, she or they have: (1) given reasonablenotice to the client, prior to the expiration of theresponse period, that the practitioner(s) intends to

withdraw from employment; (2) delivered to theclient or a duly authorized representative of the clientall papers and property (including funds) to whichthe client is entitled; and (3) notified the client ofany responses that may be due and the time framewithin which the client must respond. “Reasonablenotice” would allow a reasonable amount of timefor the client to seek the services of anotherpractitioner prior to the expiration of any applicableresponse period. See also MPEP § 402.06.

A sample form for a request by an attorney or agentof record to withdraw from a patent is set forthbelow.

2200-42Rev. 08.2017, January 2018


Rev. 08.2017, January 20182200-43


2200-44Rev. 08.2017, January 2018


Rev. 08.2017, January 20182200-45


2224 Correspondence [R-08.2017]

All requests for ex parte reexamination filed under35 U.S.C. 302 (original request papers) and allsubsequent ex parte reexamination correspondencemailed to the U.S. Patent and Trademark Office viathe U.S. Postal Service Mail, other thancorrespondence to the Office of the General Counselpursuant to 37 CFR 1.1(a)(3) and 1.302(e), shouldbe addressed:

Mail Stop “ Ex Parte Reexam”Attn: Central Reexamination UnitCommissioner for PatentsP.O. Box 1450Alexandria, VA 22313-1450

All such correspondence hand carried to the Office,or submitted by delivery service (e.g., FederalExpress, DHL, etc., which are commercial mail ordelivery services) should be carried to:

Customer Service WindowRandolph Building401 Dulany StreetAlexandria, VA 22314

Hand-carried correspondence and correspondencesubmitted by delivery service should also be marked“Mail Stop Ex Parte Reexam.” Whether thecorrespondence is mailed via the U.S. Postal Servicemail or is hand-carried to the Office, it is stronglyrecommended that the Mail Stop information beplaced in a prominent position on the first page ofeach paper being filed utilizing a sufficiently largefont size that will direct attention to it.

A request for ex parte reexamination may not besent by facsimile transmission (FAX). See 37 CFR1.6(d)(5). This is also true for a corrected/completedrequest sent in response to a notice that the originalrequest was not filing date compliant, since thecorrected/completed request stands in place of, or isa completion of, the original request papers. Allsubsequent ex parte reexamination correspondence,however, may be FAXed to:

Central Reexamination Unit(571) 273-9900.

Effective July 9, 2007, the U.S. Patent andTrademark Office began accepting requests forreexamination, and “follow-on” papers (i.e.,

subsequent correspondence in reexaminationproceedings) submitted via the Office’s Web-basedelectronic filing system (EFS-Web). The Office hasupdated the Legal Framework for EFS-Web to setforth that requests for reexamination, and properreexamination “follow-on” papers (see MPEP §2267) are permitted to be submitted using EFS-Web.The current version of the Legal Framework forEFS-Web is at: www.uspto.gov/ebc/portal/efs/legal.htm.

After the filing of the request for ex partereexamination, any letters sent to the U.S. Patentand Trademark Office relating to the resulting exparte reexamination proceeding should identify theproceeding by the number of the patent undergoingreexamination, the reexamination request controlnumber assigned, the art unit, and the name of theexaminer.

The certificate of mailing and transmissionprocedures (37 CFR 1.8) may be used to file anypaper in an ex parte reexamination proceeding,except for a request for reexamination and acorrected/replacement request for reexamination.This includes the filing of a patent owner’s statementunder 37 CFR 1.530, and a requester’s reply under37 CFR 1.535. See MPEP § 512 as to the use of thecertificate of mailing and transmission procedures.The Priority Mail Express® mailing procedure (37CFR 1.10) may be used to file any paper in an exparte reexamination proceeding. See MPEP § 513as to the use of the Priority Mail Express® mailingprocedure. Again, the filing of a patent owner’sstatement under 37 CFR 1.530, and a requester’sreply under 37 CFR 1.535, are included.

Communications from the U.S. Patent andTrademark Office to the patent owner will bedirected to the correspondence address for the patentbeing reexamined. See 37 CFR 1.33(c).

Amendments and other papers filed on behalf ofpatent owners must be signed by the patent owners,or the registered attorney or agent of record in thepatent file, or any registered attorney or agent actingin a representative capacity under 37 CFR 1.34(a).See MPEP § 2213.

2200-46Rev. 08.2017, January 2018


http://www.uspto.gov/ebc/portal/efs/legal.htm

http://www.uspto.gov/ebc/portal/efs/legal.htm

Double correspondence with the patent owners andthe attorney or agent normally will not be undertakenby the Office.

Where no correspondence address is otherwisespecified, correspondence will be with the mostrecent attorney or agent made of record by the patentowner.

Note MPEP § 2220 on certificate of service.

See MPEP § 2624 for correspondence in inter partesreexamination proceedings.

2225 Untimely Paper Filed Prior to Orderunder 35 U.S.C. 304 [R-07.2015]

After filing of a request for ex parte reexaminationunder 35 U.S.C. 302, no papers directed to the meritsof the reexamination other than (A) citations ofpatents or printed publications under 37 CFR 1.501or 37 CFR 1.555, (B) another complete request under37 CFR 1.510 or 37 CFR 1.915, or (C) notificationspursuant to MPEP § 2282, should be filed with theOffice prior to the date of the decision on the requestfor reexamination. Any papers directed to the meritsof the reexamination other than those under 37 CFR1.501 or 1.555, or MPEP § 2282, filed prior to thedecision on the request will be returned to the senderby the Central Reexamination Unit or TechnologyCenter Director without consideration. If the papersare entered prior to discovery of the impropriety,such papers will be expunged from the record. Acopy of the letter providing notification of thereturned papers or expungement will be made ofrecord in the patent file. However, no copy of thereturned/expunged papers will be retained by theOffice. If the submission of the returned/expungedpapers is appropriate later in the proceedings, theymay be filed and accepted by the Office at that time.See Patlex Corp. v. Mossinghoff, 771 F.2d 480, 226USPQ 985, 989 (Fed. Cir. 1985); In re Knight, 217USPQ 294 (Comm’r Pat. 1982) and In re Amp, 212USPQ 826 (Comm’r Pat. 1981).

2226 Initial Processing of Request for ExParte Reexamination Filed under 35 U.S.C.302 [R-07.2015]

The opening of all mail marked “Mail Stop Ex ParteReexam,” and all initial clerical processing ofrequests for reexamination, will be performed in theOffice of Patent Application Processing (OPAP).

2227 Incomplete Request for Ex ParteReexamination Filed under 35 U.S.C. 302[R-08.2017]



(d) The filing date of the request for ex partereexamination is the date on which the request satisfies all therequirements of this section.

*****

Request papers that fail to satisfy all therequirements of 37 CFR 1.510(a) and (b) areincomplete and will not be granted a filing date.

OFFICE PROCEDURE WHERE THE REQUESTFAILS TO COMPLY WITH REQUIREMENTS FORA FILING DATE

A. Discovery of Non-Compliance with Filing DateRequirement(s) Prior to Assigning a Filing Date

1. Notice of Failure to Comply with ReexaminationRequest Filing Requirement

The Central Reexamination Unit (CRU) LegalInstrument Examiner (LIE) and CRU Paralegalcheck the request for compliance with thereexamination filing date requirements. If it isdetermined that the request fails to meet one or moreof the filing date requirements (see MPEP § 2214),the person identified as requesting reexaminationwill be so notified and will be given an opportunity

Rev. 08.2017, January 20182200-47


to complete the requirements of the request withina specified time (generally 30 days). FormPTOL-2077, “Notice of Failure to Comply with ExParte Reexamination Request Filing Requirements,”is used to provide the notification for ex partereexamination. If explanation is needed as to anon-compliance item, the box at the bottom of theform will be checked. An attachment will then becompleted to specifically explain why the requestdoes not comply. If there is a filing fee deficiency,a form, PTOL-2057, is completed and attached toform PTOL-2077.

2. Failure to Remedy Defect(s) in “Notice of Failureto Comply with Ex Parte Reexamination RequestFiling Requirements”

If after receiving a “Notice of Failure to Complywith Ex Parte Reexamination Request FilingRequirements,” the requester does not remedy thedefects in the request papers that are pointed out,then the request papers will not be given a filingdate, but the assigned control number will beretained. Examples of a failure to remedy thedefect(s) in the notice are (A) where the requesterdoes not timely respond to the notice, and (B) whererequester does respond, but the response does notcure the defect(s) identified to requester and/orintroduces a new defect or deficiency.

If the requester timely responds to the “Notice ofFailure to Comply with Ex Parte ReexaminationRequest Filing Requirements,” the CRU LIE andCRU Paralegal will check the request, assupplemented by the response, for correction of allnon-compliance items identified in the notice. If anyidentified non-compliance item has not beencorrected, a filing date will not be assigned to therequest papers. It is to be noted that a single failureto comply with the “Notice of Failure to Complywith Ex Parte Reexamination Request FilingRequirements” will ordinarily result in thereexamination request not being granted a filing date.37 CFR 1.510(c) provides that “[f]ailure to complywith the notice may result in the ex partereexamination request not being granted a filingdate.” Thus, absent extraordinary circumstances,requester will be given only one opportunity tocorrect the non-compliance. Similarly, if theresponse introduces a new defect or deficiency into

the request papers, the ex parte reexaminationrequest will not be granted a filing date absentextraordinary circumstances.

If the request papers are not madefiling-date-compliant in response to the Office’s“Notice of Failure to Comply with Ex ParteReexamination Request Filing Requirements,” theCRU LIE will prepare a “Notice of Termination ofPreprocessing of Ex Parte Reexamination Request,”form PTOL-2079, identifying what defects have notbeen corrected.

B. Non-Compliance with Filing Date Requirement(s)Discovered After Initial Issuance of Notice ofReexamination Request Filing Date

1. Decision Vacating Filing Date

After a filing date and control number are assignedto the request papers, the examiner reviews therequest to decide whether to grant or denyreexamination. If, in the process of reviewing therequest, the examiner notes a non-compliance itemnot earlier recognized, the examiner willcommunicate with the CRU Supervisory PatentReexamination Specialist (SPRS) detailing any suchnon-compliance item(s). The CRU SPRS will discussthe case with an appropriate OPLA Legal Advisor.Upon confirmation of the existence of any suchnon-compliant item(s), OPLA will issue a decisionvacating the assigned reexamination filing date. InOPLA’s decision, the requester will be notified ofthe non-compliant item(s) and given time to correctthe non-compliance. As noted above, 37 CFR1.510(c) provides that “[f]ailure to comply with thenotice may result in the ex parte reexaminationrequest not being granted a filing date.” Thus, absentextraordinary circumstances, requester will only begiven one opportunity to correct the non-compliantitem(s) identified in the Decision Vacating FilingDate. This category also includes instances wherethe Office becomes aware of a check returned forinsufficient fund or a stopped payment of a checkafter a filing date has been assigned, and prior to thedecision on the request for reexamination.

2200-48Rev. 08.2017, January 2018


2. Failure to Remedy Defect in Decision VacatingFiling Date

If the requester does not timely respond to theOffice’s notice, the CRU will draft a DecisionVacating the Proceeding, which will be reviewedand signed by OPLA.

If the requester timely responds to the DecisionVacating Filing Date, but the response fails to satisfyall the non-compliance items identified in thedecision or introduces a new defect into the requestpapers, the examiner will inform the CRU SPRS ofthe defects, and whether the non-compliant requestpapers qualify as a 37 CFR 1.501 submission or not(and why). Where the defects are not remedied or anew defect has been added, the Office will issue aDecision Vacating the Proceeding.

The Decision Vacating the Proceeding will identifythe items that do not comply with the filing daterequirements which were not rectified, or are newlyadded. The decision will also point out thedisposition of the request papers (treated as a 37CFR 1.501 submission or discarded) and why.

2228 [Reserved]

2229 Notice of Request under 35 U.S.C. 302for Ex Parte Reexamination in OfficialGazette [R-07.2015]

Notice of filing of all complete ex partereexamination requests filed under 35 U.S.C. 302will be published in the Official Gazette,approximately 4 - 5 weeks after filing.

Both reexamination requests filed under 35 U.S.C.302 that have been assigned a filing date andDirector-initiated orders to reexamine made withouta request will be announced in the Official Gazette.The reexamination preprocessing staff of the CentralReexamination Unit (CRU) will complete a formwith the information needed to print the notice. Theforms are forwarded at the end of each week to theOffice of Data Management for printing in the Official Gazette.

Office personnel may use the PALM system todetermine if a request for reexamination has beenfiled in a particular patent. The Official Gazette notice will appear in the notice section of the OfficialGazette under the heading of Requests for Ex Parte Reexamination Filed and will include the name ofany requestor along with the other items set forth in37 CFR 1.11(c).

2230 Constructive Notice to Patent Owner[R-07.2015]

In some instances, it may not be possible to delivermail to the patent owner because no current addressis available. If all efforts to correspond with thepatent owner fail, the reexamination proceeding willproceed without actual notice to the patent owner.The publication in the Official Gazette of (A) thenotice of the filing of a request for reexaminationfiled under 35 U.S.C. 302, or (B) the notice of theordering of reexamination at the initiative of theDirector of the Office, will serve as constructivenotice to the patent owner in such an instance.

2231 Processing of Request Corrections[R-07.2015]

All processing of submissions to cure an incompleterequest for ex parte reexamination filed under35U.S.C. 302 (see MPEP § 2227) is carried out by theCentral Reexamination Unit (CRU). Any suchsubmission should be marked “Mail Stop Ex ParteReexam” in the manner discussed in MPEP § 2224so that the submission may be promptly forwardedto the staff of the CRU.

2232 Public Access to Reexaminations Filedunder 35 U.S.C. 302 [R-07.2015]

Reexamination files are open to inspection by thegeneral public by way of the Public PAIR via theUSPTO Internet site. In viewing the images of thereexamination proceedings, members of the publicwill be able to view the entire content of thereexamination file with the exception of non-patentliterature. To access Public PAIR, a member of thepublic would go to the USPTO website atwww.uspto.gov.

Rev. 08.2017, January 20182200-49




If a copy of the reexamination file is requested, itmay be ordered from the Document ServicesDivision of the Office of Public Records (OPR).Orders for such copies must indicate the controlnumber of the reexamination proceeding. Ordersshould be addressed as follows:

Mail Stop Document ServicesDirector of the U.S. Patent & Trademark OfficeP.O. Box 1450Alexandria, VA 22313-1450

Requests for a copy of a request may also be sentvia email to: [email protected], and the cost of thecopy may be charged to a credit card or depositaccount. Alternatively, a copy may be obtained fromIFW via PAIR.

To obtain a “certified copy” of a reexamination file,a CD-ROM may be purchased from DocumentServices Division of OPR.

2232.01 Determining if a ReexaminationRequest Was Filed under 35 U.S.C. 302 fora Patent [R-07.2015]

TO DETERMINE FROM PAIR OR PALM IF AREEXAMINATION REQUEST HAS BEEN FILEDFOR A GIVEN PATENT NUMBER

Both the Internet (using PAIR) and the USPTOintranet (using PALM) can be accessed to determineif a reexamination request has been filed for aparticular patent.

Using the USPTO Intranet

- From the USPTO intranet s i tehttp://ptoweb/ptointranet/index.htm, Officepersonnel can click on “PALM” and then “GeneralInformation” which opens the PALM INTRANETGeneral Information Display.

- From here, enter the patent number in the boxlabeled Patent #.

- Click on “Search” and when the “Patent NumberInformation” appears, click on “Continuity Data” toobtain the reexamination number.

Any reexamination for the patent number will belisted.

There will be about a ten (10) day lag between filingand data entry into the PALM database.

2233 Processing in Central ReexaminationUnit and Technology Center [R-07.2015]

The working groups in the Central ReexaminationUnit (CRU) or Technology Centers (TCs) havedesignated the legal instrument examiners andparalegals to act as reexamination clerks, as part oftheir assigned duties, and thus to perform thoseclerical duties and responsibilities in the groupswhich are unique to reexamination. The TC QualityAssurance Specialists (QASs) or CRU SupervisoryPatent Reexamination Specialists (SPRSs) and CRUParalegal Specialists have the responsibility tooversee clerical processing and serve as a resourcefor questions.

I. FEES

Under reexamination pursuant to 35 U.S.C. 302,there are fees for the request (37 CFR 1.20(c)(1)),for addition of claims (excess claims fees under 37CFR 1.20(c)(3) and (c)(4)), for an extension of time,and for any appeal, appeal forwarding fee, and oralhearing fees under 37 CFR 41.20(b). No fee isrequired for issue of the reexamination certificate.

Any petitions relating to a reexamination proceedingrequire fees (37 CFR 1.17(m) and 1.20(c)(6)).

Micro entity reductions are available to patentowners only. Small entity and micro entityreductions are available to the patent owner forexcess claim fees, appeal, appeal forwarding, andoral hearing fees. For the request and petition fees,small entity reductions are available to both thirdparty requesters and patent owners; however, microentity reductions are available only to patent owners.

When a fee is required in a merged proceeding (seeMPEP § 2283 and § 2285), only a single fee isneeded even though multiple copies of thesubmissions (one for each file) are required.

2200-50Rev. 08.2017, January 2018


http://ptoweb/ptointranet/index.htm

II. MAILING

A transmittal form with the requester’s address willbe used to forward copies of Office actions (and anyreferences cited in the Office actions) to therequester. Whenever an Office action is issued, acopy of this form will be made and attached to acopy of the Office action. The use of this formremoves the need to retype the requester’s addresseach time a mailing is required. When the patentowner is the requester, no such form is needed.

2234 Entry of Amendments [R-07.2015]

37 CFR 1.121 Manner of making amendments inapplications.

*****

(j) Amendments in reexamination proceedings. Anyproposed amendment to the description and claims in patentsinvolved in reexamination proceedings must be made inaccordance with § 1.530.

*****

37 CFR 1.530 Statement by patent owner in ex partereexamination; amendment by patent owner in ex parte orinter partes reexamination; inventorship change in ex parteor 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 directingthat proposed specified changes be made to the patentspecification, including the claims, or to the drawings. Anamendment paper directing that proposed specified changes bemade in a reexamination proceeding may be submitted as anaccompaniment to a request filed by the patent owner inaccordance with § 1.510(e), as part of a patent owner statementin accordance with paragraph (b) of this section, or, wherepermitted, during the prosecution of the reexaminationproceeding pursuant to § 1.550(a) or § 1.937.

(1) Specification other than the claims. Changes tothe specification, other than to the claims, must be made bysubmission of the entire text of an added or rewritten paragraphincluding markings pursuant to paragraph (f) of this section,except that an entire paragraph may be deleted by a statementdeleting the paragraph, without presentation of the text of theparagraph. The precise point in the specification must beidentified where any added or rewritten paragraph is located.This paragraph applies whether the amendment is submitted onpaper or compact disc ( see §§ 1.96 and 1.825).

(2) Claims. An amendment paper must include theentire text of each patent claim which is being proposed to bechanged by such amendment paper and of each new claim beingproposed to be added by such amendment paper. For any claimchanged by the amendment paper, a parenthetical expression“amended,” “twice amended,” etc. , should follow the claimnumber. Each patent claim proposed to be changed and each

proposed added claim must include markings pursuant toparagraph (f) of this section, except that a patent claim orproposed added claim should be canceled by a statementcanceling the claim, without presentation of the text of the claim.

(3) Drawings. Any change to the patent drawings mustbe submitted as a sketch on a separate paper showing theproposed changes in red for approval by the examiner. Uponapproval of the changes by the examiner, only new sheets ofdrawings including the changes and in compliance with § 1.84must 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 surroundedby brackets and identified as “Canceled.”

(4) The formal requirements for papers making up thereexamination proceeding other than those set forth in thissection are set out in § 1.52.

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

(f) Changes shown by markings. Any changes relative tothe 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 reexaminationproceeding must be enclosed in brackets; and

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

(g) Numbering of patent claims preserved. Patent claimsmay not be renumbered. The numbering of any claims addedin the reexamination proceeding must follow the number of thehighest numbered patent claim.

(h) Amendment of disclosure may be required. Thedisclosure must be amended, when required by the Office, tocorrect inaccuracies of description and definition, and to securesubstantial correspondence between the claims, the remainderof the specification, and the drawings.

(i) Amendments made relative to patent. All amendmentsmust be made relative to the patent specification, including theclaims, and drawings, which are in effect as of the date of filingthe request for reexamination.

(j) No enlargement of claim scope. No amendment mayenlarge the scope of the claims of the patent or introduce newmatter. No amendment may be proposed for entry in an expiredpatent. Moreover, no amendment, other than the cancellationof claims, will be incorporated into the patent by a certificateissued after the expiration of the patent.

(k) Amendments not effective until certificate . Althoughthe Office actions will treat proposed amendments as thoughthey have been entered, the proposed amendments will not beeffective until the reexamination certificate is issued andpublished.

*****

Rev. 08.2017, January 20182200-51


Amendments which comply with 37 CFR 1.530(d)through (j) (and are formally presented pursuant to37 CFR 1.52(a) and 37 CFR 1.52(b), and contain allfees required by 37 CFR 1.20(c)) are entered in thereexamination file.

Patent claims must not be renumbered, and thenumbering of the claims added during reexaminationmust follow the number of the highest numberedpatent claim.

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

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 currenttext of the patent under reexamination.

Although amendments will be entered for purposesof examination, the amendments are not legallyeffective until the reexamination certificate is issuedand published.

See MPEP § 2250 for manner of makingamendments by patent owner and for examples ofproper claim amendment format. For clericalhandling of amendments, see MPEP § 2270. Seealso MPEP § 2221 for amendments included in therequest filed under 35 U.S.C. 302 by the patentowner. For entry of amendments in a mergedproceeding, see MPEP § 2283 and § 2285.

2235 Record Systems [R-07.2015]

PALM — MONITORING SYSTEMS

The Patent Application Locating and Monitoring(PALM) system is used to support the reexamination

process. The sections below delineate PALM relatedactivities.

(A) Reexamination File Data on PALM — Theroutine PALM retrieval transactions are used toobtain data on reexamination files. From the USPTOintranet site, Office staff can click on “PALM” andthen “General Information” which opens the PALMINTRANET General Information Display. Fromhere, enter the patent number in the box labeledPatent #. Then click on “Search” and when the“Patent Number Information” appears, click on“Continuity Data” to obtain the reexaminationnumber.

(B) Reexamination e-File — The papers of areexamination proceeding may be viewed on IFW.PALM provides information for the reexaminationproceeding as to the patent owner and requester,contents, status, and related Office proceedings(applications, patents and reexaminationproceedings). Some of the data entry forreexamination in PALM is different from that of aregular patent application. There are also differencesin the status codes – all reexamination proceedingsgenerally have status codes in the “400” range (thereare some in the “800” range for some inter partesdocuments and actions).

(C) Patent File Location Control for PatentsNot Available on IFW, i.e., Available Only in PaperFile — The movement of paper patent files relatedto requests for reexamination throughout the Officeis monitored by the PALM system. If the patent fileis in paper form, the paper file should be orderedand scanned into the Image File Wrapper (IFW) foraccess throughout the prosecution of thereexamination proceeding.

(D) Reporting Events to PALM — The PALMsystem is used to monitor major events that takeplace in processing reexamination proceedings.During initial processing all major pre- ex parteexamination events are reported. During the ex partephase, the mailing of examiner’s actions is reportedas well as owner’s responses thereto. The CentralReexamination Unit is responsible for reporting theseevents by, e.g., using the reexamination icon andwindow initiated in the PALM EXPO program.Examples of the events that may be reported (in thePALM system or in the tracking system of the Officeof Petitions) are as follows:

2200-52Rev. 08.2017, January 2018


(1) Determination Mailed — Denial ofrequest for reexamination.

(2) Determination Mailed — Grant of requestfor reexamination.

(3) Petition for reconsideration ofdetermination received.

(4) Decision on petition mailed — Denied.

(5) Decision on petition mailed — Granted.

(6) Owner response to determination(owner’s statement) received.

(7) Requester response to determination(requester’s reply) received.

(8) The mailing of all examiner actions.

(9) The receipt of owner’s responses toexaminer’s actions and Office receipt date.

Each of these events, as well as additional eventsreported by the Central Reexamination Unit (CRU)Technical Support Staff (TSS) will be permanentlyrecorded and displayed in the “Contents” portion ofPALM. In addition, status representative of theseevents will also be displayed.

(E) Status Reports — Various weekly reportscan be generated for the event reporting discussedabove. The primary purpose of these reports is toassure that reexaminations are, in fact, processedwith “special dispatch.”

PALM Reports — A number of automated reportsgenerated from the PALM system are provided tothe CRU and other appropriate TCs at the beginningof each week. These reports serve to indicate to theCRU and other appropriate TCs when certaindeadlines are approaching. Each report is subdividedby working group and lists the requests in controlnumber sequence. For example:

(1) Preexam Reexam — This report servesto highlight those requests which have not beenassigned to an examiner by the sixth week since theirfiling. Requests appearing on this report should belocated and docketed immediately.

(2) Reexams Awaiting FA – This report liststhose proceedings awaiting first action after themailing of the order granting reexamination. Thisreport includes ex parte reexaminations, including

reexaminations ordered under 35 U.S.C. 257, and inter partes reexaminations.

(3) Reexam Actions in CRU – This reportlists reexamination proceedings located in theCentral Reexamination Unit (CRU) with action typeand date.

(4) Reexam PTAB - status 143, 440, 441 and887-891 – This report lists the proceedings that havebeen forwarded to the Patent Trial and Appeal Board(PTAB).

2236 Assignment of Reexamination[R-07.2015]

Reexamination requests are generally assigned tothe Central Reexamination Unit (CRU) art unitwhich examines the technology (Chemical,Electrical, Mechanical, etc.) in which the patent tobe reexamined is currently classified as an original.In that art unit, the CRU Supervisory PatentReexamination Specialist (SPRS) will assign thereexamination request to a primary examiner, otherthan the examiner who originally examined thepatent application (see “Examiner AssignmentPolicy” below), who is most familiar with theclaimed subject matter of the patent. In an extremelyrare situation, where a proceeding is still in aTechnology Center (TC) rather than the CRU, thereexamination may be assigned to an assistantexaminer if no knowledgeable primary examiner isavailable. In such an instance a primary examinermust sign all actions, conference all actions with aSPRS or manager and another examiner, and takeresponsibility for all actions taken.

I. EXAMINER ASSIGNMENT POLICY

It is the policy of the Office that the CRU SPRS willassign the reexamination request to an examinerdifferent from the examiner(s) who examined thepatent application. Thus, under normalcircumstances, the reexamination request will notbe assigned to a primary examiner or assistantexaminer who was involved in any part of theexamination of the patent for which reexaminationis requested (e.g., by preparing/signing an action),or was so involved in the examination of the parentof the patent. This would preclude assignment of therequest to an examiner who was a conferee in an

Rev. 08.2017, January 20182200-53


appeal conference or panel review conference in anearlier concluded examination of the patent (e.g.,the application for patent, a reissue, or a priorconcluded reexamination proceeding). The confereeis considered to have participated in preparing theOffice action which is preceded by the conference.

Exceptions to this general policy include caseswhere the original examiner is the only examinerwith adequate knowledge of the relevant technologyto examine the case. In the unusual case where thereis a need to assign the request to the originalexaminer, the assignment must be approved by theCRU Director, and the fact that such approval wasgiven by the CRU Director must be stated by theexaminer in the decision on the request forreexamination or must be indicated with the CRUDirector’s signature affixed at the end of the orderor action.

It should be noted that while an examiner whoexamined an earlier concluded reexaminationproceeding is generally excluded from assignmentof a newly filed reexamination, if the earlierreexamination is still ongoing, the same examinerwill generally be assigned the new reexamination.

Copending reissue and reexamination proceedings:

(A) When a reissue application is pending for apatent, and a reexamination request is filed under35 U.S.C. 302 for the same patent, the reexaminationrequest is generally assigned to an examiner whodid not examine the original patent application evenif the examiner who examined the patent applicationis also examining the reissue application. If thereexamination request is granted and the reissue andreexamination proceedings are later merged (seeMPEP § 2285), the merged proceeding will behandled (upon return of the files from the Office ofPatent Legal Administration (OPLA)) by theexaminer who is handling the reissue application.However, if that examiner was involved in any partof the examination of the patent for whichreexamination is requested (e.g., bypreparing/signing an action), or was involved in theexamination of the parent application of the patent,a different examiner will be assigned. In thisinstance, the reissue application would be transferred(reassigned) from the originally assigned examiner.

(B) When a reexamination proceeding is pendingfor a patent, and a reissue application is filed for thesame patent:

(1) Where reexamination has already beenordered (granted) in the reexamination proceeding,OPLA should be notified as promptly as possibleafter the reissue application is available fordocketing, that the proceedings are ready forconsideration of merger. If any of the reexaminationfile, the reissue application, and the patent file arepaper files, they should be scanned into the ImageFile Wrapper (IFW) at the time of the notificationto OPLA. If the reissue and reexaminationproceedings are merged by OPLA, the reissueapplication will generally be assigned to theexaminer who would ordinarily handle the reissueapplication. However, if that examiner was involvedin any part of the examination of patent for whichreexamination is requested (e.g., bypreparing/signing an action), or was so involved inthe examination of the parent application of thepatent, a different examiner will be assigned. If thereissue and reexamination proceedings are notmerged by OPLA, the decision will provide guidanceas to assignment of the reissue proceeding dependingon the individual fact situation.

(2) If reexamination has not yet been ordered(granted) in the reexamination proceeding, theSupervisory Patent Reexamination Specialist (SPRS)will ensure that the reissue application is notassigned nor acted on, and the decision on thereexamination request under 35 U.S.C. 302 will bemade. If reexamination is denied, the reexaminationproceeding will be concluded pursuant to MPEP §2294, and the reissue application assigned inaccordance with MPEP § 1440. If reexamination isgranted, the SPRS will await the filing of anystatement under 37 CFR 1.530 and any reply under37 CFR 1.535, or the expiration of the time for same(see MPEP § 2249 – § 2251), and then OPLA shouldbe promptly notified that the proceedings are readyfor consideration of merger. If any of thereexamination file, the reissue application, and thepatent file are paper files, they should be scannedinto the Image File Wrapper (IFW) at the time ofthe notification to OPLA. If the reissue andreexamination proceedings are merged by OPLA,the reissue application will generally be assigned(upon return of the files from OPLA) to the examinerwho ordinarily handles the reissue application.

2200-54Rev. 08.2017, January 2018


However, if that examiner was involved in any partof the examination of the patent for whichreexamination is requested (e.g., bypreparing/signing an action), or was so involved inthe examination of the parent application of thepatent, a different examiner will be assigned. If thereissue and reexamination proceedings are notmerged by OPLA, the decision may provideguidance as to assignment of the reissue proceeding,if necessary, depending on the individual factsituation.

II. CONSEQUENCES OF INADVERTENTASSIGNMENT TO AN “ORIGINAL EXAMINER”

Should a reexamination be inadvertently assignedto an “original examiner” (in a situation where theTC or CRU Director’s approval is not stated in thedecision on the request), the patent owner or the thirdparty requester who objects must promptly file apaper alerting (notifying) the Office of this fact. Anypaper alerting (notifying) the Office to theassignment to an “original examiner” must be filedwithin two months of the first Office action or otherOffice communication indicating the examinerassignment, or reassignment based on the objectionwill not be considered. Reassignment of thereexamination to a different examiner will beaddressed on a case-by-case basis. In no event willthe assignment to the original examiner, by itself,be grounds for vacating any Office decision(s) oraction(s) and “restarting” the reexamination.

A situation may arise where a party timely (i.e.,within the two months noted above) files a paperalerting (notifying) the Office to the assignment ofa reexamination to the “original examiner,” but thatpaper does not have a right of entry under the rules.An example of this is where a third party requesterbecomes aware of the assignment to the “originalexaminer” via that examiner signing the order forreexamination, and the patent owner does not file astatement under 37 CFR 1.530. In that situation, thethird party requester cannot file a reply under 37CFR 1.535, and thus has no way to present the paperdirected to the examiner assignment (no right ofentry under the rules). In situations where a paperdirected to the examiner assignment has no right ofentry under the rules, the Office may waive the rules

to the extent that the paper directed to the examinerassignment will be entered and considered.

2237 Transfer Procedure [R-07.2015]

Although the number of reexamination requestswhich must be transferred should be very small, thefollowing procedures have been established for anexpeditious resolution of any such problems.

A reexamination request is normally assigned to aCentral Reexamination Unit (CRU) art unit whichexamines the technology (Chemical, Electrical,Mechanical, etc.) in which the patent to bereexamined is currently classified as an original. Ifthe CRU Supervisory Patent ReexaminationSpecialist (SPRS) (to whose art unit thereexamination has been assigned) believes that thereexamination should be assigned to another art unit,he or she must obtain the consent of the CRU SPRSof the art unit to which a transfer is desired. Pursuantto 35 U.S.C. 305, all ex parte reexaminationproceedings must be conducted with special dispatchwithin the Office. This applies to the transfer ofreexamination proceedings. Accordingly, the CRUSPRS to whose art unit the reexamination has beenassigned should expeditiously make any request fortransfer of a reexamination proceeding to the CRUSPRS of the art unit to which a transfer is desired(the “new” art unit). Any conflict which cannot beresolved by the SPRSs will be resolved by the CRUDirector.

If the “new” art unit accepts assignment of thereexamination request, the “new” CRU SPRS assignsthe request to an examiner in that unit.

2238 Time Reporting [R-11.2013]

It is essential that all time expended onreexamination activities be reported accurately. Thus,all USPTO personnel should report all time spenton reexamination on their individual Time andAttendance Reports. Even activities such assupervision, copying, typing, and docketing shouldbe included.

Rev. 08.2017, January 20182200-55


2239 Reexamination Ordered at theDirector’s Initiative [R-07.2015]

37 CFR 1.520 Ex parte reexamination at the initiative of theDirector.

The Director, at any time during the period of enforceability ofa patent, may determine whether or not a substantial newquestion of patentability is raised by patents or printedpublications which have been discovered by the Director orwhich have been brought to the Director’s attention, even thoughno request for reexamination has been filed in accordance with§ 1.510 or § 1.913. The Director may initiate ex parte reexamination without a request for reexamination pursuant to§ 1.510 or § 1.913. Normally requests from outside the Officethat the Director undertake reexamination on his own initiativewill not be considered. Any determination to initiate ex parte reexamination under this section will become a part of theofficial file of the patent and will be mailed to the patent ownerat the address as provided for in § 1.33(c).

The Director of the USPTO may initiatereexamination without a request being filed andwithout a fee being paid. Such reexamination maybe ordered at any time during the period ofenforceability of the patent.

A decision to order reexamination at the Director’sinitiative is, however, rare. Only in compellingcircumstances, after a review of all the factsconcerning the patent, would such a decision bemade. Authority to order reexamination at theDirector’s initiative has been delegated to the DeputyCommissioner for Patent Examination Policy. Adecision to order reexamination at the Director’sinitiative may also be made by the Director of theUSPTO, the Deputy Director or the Commissionerfor Patents.

If an Office employee becomes aware of an unusualfact situation in a patent which he or she considersto clearly warrant reexamination, a memorandumsetting forth these facts (including a proposedrejection of all appropriate claims) should beforwarded to the Office of Patent LegalAdministration (OPLA) through the CentralReexamination Unit (CRU) or Technology Center(TC) supervisory chain of command.

If an order to reexamine is to be issued, the decisionis prepared in OPLA in cooperation with the CRUor other appropriate Technology Center. Thedecision is signed by the Deputy Commissioner for

Patent Examination Policy and mailed by the CRU.The CRU technical support staff will prepare areexamination file and Official Gazette notice.Examination and prosecution will then proceedwithout further communication with anyone but thepatent owner.

If the Deputy Commissioner for Patent ExaminationPolicy refuses to issue an order for reexamination,no record of any consideration of the matter will bemaintained in the patent file or anywhere else in theOffice, and the patent owner will not be notified.

The Director of the USPTO will not normallyconsider requests to order reexamination at theDirector’s initiative received from members of thepublic. If a member of the public desiresreexamination of a patent, a request and fee shouldbe filed in accordance with 37 CFR 1.510.

2240 Decision on Request Filed under 35U.S.C. 302 [R-07.2015]

35 U.S.C. 303 Determination of issue by Director.

(a) Within three months following the filing of a requestfor reexamination under the provisions of section 302, theDirector will determine whether a substantial new question ofpatentability affecting any claim of the patent concerned is raisedby the request, with or without consideration of other patentsor printed publications. On his own initiative, and any time, theDirector may determine whether a substantial new question ofpatentability is raised by patents and publications discoveredby him or cited under the provisions of section 301 or 302 ofthis title. The existence of a substantial new question ofpatentability is not precluded by the fact that a patent or printedpublication was previously cited by or to the Office orconsidered by the Office.

(b) A record of the Director’s determination undersubsection (a) of this section will be placed in the official fileof the patent, and a copy promptly will be given or mailed tothe owner of record of the patent and to the person requestingreexamination, if any.

(c) A determination by the Director pursuant to subsection(a) of this section that no substantial new question ofpatentability has been raised will be final and nonappealable.Upon such a determination, the Director may refund a portionof the reexamination fee required under section 302.

37 CFR 1.515 Determination of the request for ex partereexamination.

(a) Within three months following the filing date of arequest for an ex parte reexamination, an examiner will considerthe request and determine whether or not a substantial newquestion of patentability affecting any claim of the patent israised by the request and the prior art cited therein, with orwithout consideration of other patents or printed publications.

2200-56Rev. 08.2017, January 2018


A statement and any accompanying information submittedpursuant to § 1.501(a)(2) will not be considered by the examinerwhen making a determination on the request. The examiner’sdetermination will be based on the claims in effect at the timeof the determination, will become a part of the official file ofthe patent, and will be given or mailed to the patent owner atthe address provided for in § 1.33(c) and to the person requestingreexamination.

(b) Where no substantial new question of patentability hasbeen found, a refund of a portion of the fee for requesting exparte reexamination will be made to the requester in accordancewith § 1.26(c).

(c) The requester may seek review by a petition to theDirector under § 1.181 within one month of the mailing date ofthe examiner’s determination refusing ex parte reexamination.Any such petition must comply with § 1.181(b). If no petitionis timely filed or if the decision on petition affirms that nosubstantial new question of patentability has been raised, thedetermination shall be final and nonappealable.

Before making a determination on the request forreexamination filed under 35 U.S.C. 302, a litigationsearch from the Technical Support Staff (TSS) ofthe Central Reexamination Unit (CRU) or theScientific and Technical Information Center (STIC)must be done to check if the patent has been, or is,involved in litigation. The “Litigation Review” boxon the reexamination IFW file jacket form(RXFILJKT) should be completed to indicate thatthe review was conducted and the results thereof. Acopy of the litigation search and the reexaminationfile jacket form are scanned into the IFWreexamination file history. In the rare instance wherethe record of the reexamination proceeding or thelitigation search indicates that additional informationis desirable, guidance as to making an additionallitigation search may be obtained from the libraryof the Office of the Solicitor. If the patent is or wasinvolved in litigation, and a paper referring to thecourt proceeding has been filed, reference to thepaper by number should be made in the “LitigationReview” box on the reexamination IFW file jacketform as, for example, “litigation; see paper filed7-14-2005.” If a litigation records search is alreadynoted on the file, the examiner need not repeat orupdate it before making a determination on therequest.

If litigation has concluded or is taking place in thepatent on which a request for reexamination has beenfiled, the request must be promptly brought to theattention of the Central Reexamination Unit (CRU)Supervisory Patent Reexamination Specialist

(SPRS), who should review the decision on therequest and any examiner’s action to ensure that itconforms to the current Office litigation policy andguidelines. See MPEP § 2286.

35 U.S.C. 303 requires that within 3 monthsfollowing the filing of a request for reexaminationfiled under 35 U.S.C. 302, the Director of theUSPTO will determine whether or not the requestraises a “substantial new question of patentability”affecting any claim of the patent of whichreexamination is desired. See also MPEP § 2241.Such a determination may be made with or withoutconsideration of other patents or printed publicationsin addition to those cited in the request. No inputfrom the patent owner is considered prior to thedetermination, unless the patent owner filed therequest. See Patlex Corp. v. Mossinghoff, 771 F.2d480, 226 USPQ 985 (Fed. Cir. 1985).

The patent claims in effect at the time of thedetermination will be the basis for deciding whethera substantial new question of patentability has beenraised. 37 CFR 1.515(a). Amendments which (1)have been presented with the request if filed under35 U.S.C. 302 by the patent owner, (2) have beenfiled in a pending reexamination proceeding in whichthe certificate has not been issued, or (3) have beensubmitted in a reissue application on which noreissue patent has been issued, will not be consideredor commented upon when deciding requests.

The decision on the request for reexamination filedunder 35 U.S.C. 302 has as its object either thegranting or denial of an order for reexamination.This decision is based on whether or not “asubstantial new question of patentability” is found.A determination as to patentability/unpatentabilityof the claims is not made in the decision on therequest; rather, this determination will be madeduring the examination stage of the reexaminationproceedings if reexamination is ordered.Accordingly, no prima facie case of unpatentabilityneed be found to grant an order for reexamination.If a decision to deny an order for reexamination ismade, the requester may seek review by a petitionunder 37 CFR 1.181. See 37 CFR 1.515(c). SeeMPEP § 2248. It should be noted that a decision todeny the request for reexamination is equivalent toa final holding (subject only to a petition pursuant

Rev. 08.2017, January 20182200-57


to 37 CFR 1.515(c) for review of the denial) that therequest failed to raise a substantial new question ofpatentability based on the cited art (patents andprinted publications).

It is only necessary to establish that a substantialnew question of patentability exists as to one of thepatent claims in order to grant reexamination. TheOffice’s determination in both the order forreexamination and the examination stage of thereexamination ordered under 35 U.S.C. 304 willgenerally be limited solely to a review of the claim(s)for which reexamination was requested. If therequester was interested in having all of the claimsreexamined, requester had the opportunity to includethem in its request for reexamination. However, ifthe requester chose not to do so, those claim(s) forwhich reexamination was not requested willgenerally not be reexamined by the Office. It isfurther noted that 35 U.S.C. 302 requires that “[t]herequest must set forth the pertinency and manner ofapplying cited prior art to every claim for whichreexamination is requested.” If the requester fails toapply the art to certain claims, then the requester isnot statutorily entitled to reexamination of suchclaims. If a requester chooses not to requestreexamination for a claim, and thus fails to set forththe pertinency and manner of applying the cited artto that claim as required by 37 CFR 1.510(b), thatclaim will generally not be reexamined. The decisionto reexamine any claim for which reexamination hasnot been requested under 35 U.S.C. 302 lies withinthe sole discretion of the Office, to be exercisedbased on the individual facts and situation of eachindividual case. If the Office chooses to reexamineany claim for which reexamination has not beenrequested under 35 U.S.C. 302, it is permitted to doso. In addition, the Office may always initiate areexamination on its own initiative of thenon-requested claim (35 U.S.C. 303(a)). See SonyComputer Entertainment America Inc. v. Dudas , 85USPQ2d 1594 (E.D. Va 2006). It is to be noted thatif a request fails to set forth the pertinency andmanner of applying the cited art to any claim forwhich reexamination is requested as required by 37CFR 1.510(b), a filing date will not be awarded tothe request. See MPEP § 2217 and § 2227.

One instance where reexamination was carried outonly for the claims requested occurred in

reexamination control numbers 95/000,093 and95/000,094, where reexamination was requested forpatent claims which were being litigated, but not forclaims which were not being litigated. In thatinstance, the entirety of the reexamination waslimited to the claims for which reexamination wasrequested, and which were also being litigated. TheOffice’s authority to carry out reexamination onlyfor the claims for which reexamination was requestedin reexamination control numbers 95/000,093 and95/000,094 was confirmed by the court in Sony, supra. See also MPEP § 2242 for the situation wherethere was a prior final federal court decision as tothe invalidity/unenforceability of some of the claims,as another example of non-examination of some ofthe patent claims in a reexamination proceeding.

The decision on the request for reexamination shoulddiscuss all of the patent claims requested forreexamination. The examiner should limit thediscussion of those claims in the order forreexamination as to whether a substantial newquestion of patentability has been raised. Theexaminer SHOULD NOT reject claims in the orderfor reexamination. Rather, any rejection of the claimswill be made in the first Office action (on thepatentability of the claims) that is issued after theexpiration of the time for submitting any patentowner statement and requester reply that follow theexaminer’s order.

A patent owner claim scope statement and anyaccompanying information submitted pursuant to37 CFR 1.501(a)(2) will not be considered by theexaminer when making the determination of whetherto order ex parte reexamination under 35 U.S.C.304. This is so, because 35 U.S.C. 301(d) providesthat a written statement submitted pursuant to 35U.S.C. 301(a)(2), and additional informationsubmitted pursuant to 35 U.S.C. 301(c) are not tobe considered by the Office for any purpose otherthan to determine the proper meaning of a patentclaim in a proceeding that is ordered pursuant to 35U.S.C. 304. In making the determination of whetherto order reexamination, the Office will determinethe proper meaning of the patent claims by givingthe claims their broadest reasonable interpretationconsistent with the specification (see In reYamamoto, 740 F.2d 1569 (Fed. Cir. 1984)), exceptin the case of an expired patent (in a reexamination

2200-58Rev. 08.2017, January 2018


involving claims of an expired patent, claimconstruction is pursuant to the principle set forth bythe court in Phillips v. AWH Corp., 415 F.3d 1303,1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005)(words of a claim “are generally given their ordinaryand customary meaning” as understood by a personof ordinary skill in the art in question at the time ofthe invention, see Ex parte Papst-Motoren, 1USPQ2d 1655 (Bd. Pat. App. & Inter. 1986)). Ifreexamination is ordered, the patent owner statement,if applicable, and any accompanying informationsubmitted pursuant to 37 CFR 1.501(a)(2) will beconsidered during the examination stage to the fullestextent possible when determining the scope of anyclaims of the patent which are subject toreexamination.

The examiner should indicate, insofar as possible,his or her initial position on all the issues identifiedin the request filed under 35 U.S.C. 302 or by therequester so that comment thereon may be receivedin the patent owner’s statement and in the requester’sreply.

The Director of the USPTO has the authority to orderreexamination only for a request which raises asubstantial new question of patentability. Thesubstantial new question of patentability requirementprotects patentees from having to respond to, orparticipate in unjustified reexaminations. PatlexCorp. v. Mossinghoff, 771 F.2d 480, 226 USPQ 985(Fed. Cir. 1985).

I. REQUEST FOR REEXAMINATION OF THEPATENT AFTER REISSUE OF THE PATENT

Where a request for reexamination is filed on apatent after a reissue patent for that patent hasalready issued, reexamination will be denied,because the patent on which the request forreexamination is based has been surrendered. Shouldreexamination of the reissued patent be desired, anew request for reexamination, including and basedon the specification and the claims of the reissuepatent, must be filed. Where the reissue patent issuesafter the filing of a request for reexamination, seeMPEP § 2285.

II. SECOND OR SUBSEQUENT REQUEST FILEDUNDER 35 U.S.C. 302 DURING REEXAMINATION

If a second or subsequent request for ex partereexamination is filed (by any party) under 35 U.S.C.302 while a first ex parte reexamination is pending,the presence of a substantial new question ofpatentability depends on the prior art (patents andprinted publications) cited by the second orsubsequent requester. If the requester includes in thesecond or subsequent request prior art which raiseda substantial new question in the pendingreexamination, reexamination should be orderedonly if the prior art cited raises a substantial newquestion of patentability which is different from thatraised in the pending reexamination proceeding. Ifthe prior art cited raises the same substantial newquestion of patentability as that raised in the pendingreexamination proceedings, the second or subsequentrequest should be denied.

Where the request raises a different substantial newquestion of patentability as to some patent claims,but not as to others, the request would be granted inpart; see the orders issued in reexamination controlnumber 90/007,843 and 90/007,844.

The second or subsequent request for reexaminationunder 35 U.S.C. 302 may provide information raisinga substantial new question of patentability withrespect to any new or amended claim which has beenproposed under 37 CFR 1.530(d) in the first (orprior) pending reexamination proceeding. However,in order for the second or subsequent request forreexamination to be granted, the second orsubsequent requester must independently provide asubstantial new question of patentability which isdifferent from that raised in the pendingreexamination for the claims in effect at the timeof the determination. The decision on the secondor subsequent request is based on the claims in effectat the time of the determination (37 CFR 1.515(a)).Thus, the second or subsequent request must bedirected to the claims of the patent, as modified byany disclaimer, or by any reexamination certificatethat has issued as of the time of the determination.If a “different” substantial new question ofpatentability is not provided by the second orsubsequent request for the claims in effect at thetime of the determination, the second or subsequent

Rev. 08.2017, January 20182200-59


request for reexamination must be denied since theOffice is only authorized by statute to grant areexamination proceeding based on a substantialnew question of patentability “affecting any claimof the patent.” See 35 U.S.C. 303. Accordingly, theremust be at least one substantial new question ofpatentability established for the existing claims inthe patent in order to grant reexamination.

Once the second or subsequent request has provideda “different” substantial new question of patentabilitybased on the claims in effect at the time of thedetermination, the second or subsequent request forreexamination may also provide information directedto any proposed new or amended claim in thepending reexamination, to permit examination ofthe entire patent package. The information directedto a proposed new or amended claim in the pendingreexamination is addressed during the later filedreexamination (where a substantial new question ofpatentability is raised in the later filed request forreexamination for the existing claims in the patent),in order to permit examination of the entire patentpackage. When a proper basis for the second orsubsequent request for reexamination is established,it would be a waste of resources to preventaddressing the proposed new or amended claims, byrequiring parties to wait until the certificate issuesfor the proposed new or amended claims, and onlythen to file a new reexamination request challengingthe claims as revised via the certificate. This alsoprevents a patent owner from simply amending allthe claims in some nominal fashion to preclude asubsequent reexamination request during thependency of the reexamination proceeding.

In certain situations, after a grant of a second orsubsequent request for ex parte reexamination,where (A) the patent owner files a petition under 37CFR 1.182 as part of the statement or as thestatement, and (B) it appears clear that the secondor subsequent request was filed for purposes ofharassment of the patent owner, if the petition isgranted, prosecution on the second or subsequentreexamination would be suspended. Merger of sucha second or subsequent request with the alreadypending reexamination proceeding(s) would undulyprolong the conclusion of the pending reexaminationand be inconsistent with the requirement that

reexamination proceeding be conducted with specialdispatch.

If the second or subsequent requester does notinclude the prior art which raised a substantial newquestion of patentability in the pendingreexamination, reexamination may or may not beordered depending on whether the different prior artraises a substantial new question of patentability.The second or subsequent request should bedetermined on its own merits without reference tothe pending reexamination.

For additional treatment of cases in which a first exparte reexamination is pending at the time a secondor subsequent request for ex parte reexamination isto be decided, see MPEP § 2283.

For additional treatment of cases in which either thefirst or subsequent request for reexamination, orboth, is/are an inter partes reexaminationproceeding, see MPEP § 2640 and § 2686.01.

2241 Time for Deciding Request Filed under35 U.S.C. 302 [R-07.2015]

The determination of whether or not to reexaminemust be made within 3 months following the filingdate of a request. See 35 U.S.C. 303(a) and 37 CFR1.515(a). If the 3-month period ends on a Saturday,Sunday, or federal holiday within the District ofColumbia, then the determination must be mailedby the preceding business day. See the last portionof MPEP § 2240 and also see MPEP § 2283 formultiple copending reexamination proceedings. Adetermination to reexamine may be made at any timeduring the period of enforceability of a patent.

2242 Criteria for Deciding Request Filedunder 35 U.S.C. 302 [R-08.2017]

I. SUBSTANTIAL NEW QUESTION OFPATENTABILITY

The presence or absence of “a substantial newquestion of patentability” determines whether or notreexamination is ordered. The meaning and scopeof the term “a substantial new question ofpatentability” is not defined in the statute and must

2200-60Rev. 08.2017, January 2018


be developed to some extent on a case-by-case basis,using the case law to provide guidance as will bediscussed in this section.

If the prior art patents and printed publications raisea substantial question of patentability of at least oneclaim of the patent, then a substantial new questionof patentability as to the claim is present, unless thesame question of patentability has already been: (A)decided in a final holding of invalidity by a federalcourt in a decision on the merits involving the claim,after all appeals; (B) decided in an earlier concludedexamination or review of the patent by the Office;or (C) raised to or by the Office in a pendingreexamination or supplemental examination of thepatent. If the request for reexamination includesissues involving 35 U.S.C. 325(d), the examinermust bring such issues to the attention of theappropriate SPRS or the Director of the CRU.Inquiries from the public regarding the treatment ofissues involving 35 U.S.C. 325(d) in ex partereexaminations should be referred to OPLA.

An earlier concluded examination or review of thepatent is: (A) the original examination of theapplication which matured into the patent; (B) theexamination of the patent in a reissue applicationthat has resulted in a reissue of the patent; (C) theexamination of the patent in an earlier concludedreexamination or supplemental examination; (D) thereview of the patent in an earlier concluded trial bythe Patent Trial and Appeal Board, such as apost-grant review, inter partes review, or coveredbusiness method review of the patent; or (E) anyother contested Office proceeding which has beenconcluded and which involved the patent. Theanswer to the question of whether a “substantial newquestion of patentability” exists, and thereforewhether reexamination may be had, is decided bythe examiner, and the examiner’s determination maybe reconsidered:

(a) If reexamination is denied – as set forth in MPEP§ 2248.

(b) If reexamination is granted – as set forth inMPEP § 2246, subsection II.

A prior art patent or printed publication raises asubstantial question of patentability where there is

a substantial likelihood that a reasonable examinerwould consider the prior art patent or printedpublication important in deciding whether or not theclaim is patentable. If the prior art patents and/orpublications would be considered important, thenthe examiner should find “a substantial new questionof patentability” unless the same question ofpatentability has already been decided as to the claimin a final holding of invalidity by a federal court orby the Office in an earlier concluded examinationor review of the patent, or unless the same questionof patentability has been raised to or by the Officein a pending reexamination or supplementalexamination of the patent. For example, the samequestion of patentability may have already beendecided by the Office where the examiner finds theadditional (newly provided) prior art patents orprinted publications are merely cumulative to similarprior art already fully considered by the Office in anearlier concluded examination or review of the claim.

For “a substantial new question of patentability” tobe present, it is only necessary that: (A) the prior artpatents and/or printed publications raise a substantialquestion of patentability regarding at least one claim,i.e., the teaching of the (prior art) patents and printedpublications is such that a reasonable examinerwould consider the teaching to be important indeciding whether or not the claim is patentable; and(B) the same question of patentability as to the claimhas not been decided by the Office in an earlierconcluded examination or review of the patent,raised to or by the Office in a pending reexaminationor supplemental examination of the patent, ordecided in a final holding of invalidity (after allappeals) by a federal court in a decision on the meritsinvolving the claim. If a reexamination proceedingwas terminated/vacated without resolving thesubstantial question of patentability question, it canbe re-presented in a new reexamination request. Itis not necessary that a "prima facie" case ofunpatentability exist as to the claim in order for “asubstantial new question of patentability” to bepresent as to the claim. Thus, “a substantial newquestion of patentability” as to a patent claim couldbe present even if the examiner would notnecessarily reject the claim as either fully anticipatedby, or obvious in view of, the prior art patents orprinted publications. As to the importance of thedifference between “a substantial new question of

Rev. 08.2017, January 20182200-61


patentability” and a "prima facie" case ofunpatentability see generally In re Etter, 756 F.2d852, 857 n.5, 225 USPQ 1, 4 n.5 (Fed. Cir. 1985).

Note that the clarification of the legal standard fordetermining obviousness under 35 U.S.C. 103 in KSR International Co. v. Teleflex Inc. (KSR), 550U.S. 398, 82 USPQ2d 1385 (2007) does not alterthe legal standard for determining whether asubstantial new question of patentability exists. Seethe discussion in MPEP § 2216.

Where a second or subsequent request forreexamination of a patent is made before theconclusion of an earlier filed reexaminationproceeding pending (ongoing) for that patent, thesecond or subsequent request for reexamination mayprovide information raising a substantial newquestion of patentability with respect to any new oramended claim which has been proposed under 37CFR 1.530(d) in the ongoing pending reexaminationproceeding. However, in order for the second orsubsequent request for reexamination to be granted,the second or subsequent requester mustindependently provide a substantial new question ofpatentability which is different from that raised inthe pending reexamination for the claims in effectat the time of the determination. The decision onthe second or subsequent request is based on theclaims in effect at the time of the determination (37CFR 1.515(a)). Thus, the second or subsequentrequest must be directed to the claims of the patent,as modified by any disclaimer, or by anyreexamination certificate that has issued as of thetime of the determination. If a “different” substantialnew question of patentability is not provided by thesecond or subsequent request for the claims in effectat the time of the determination, the second orsubsequent request for reexamination must be deniedsince the Office is only authorized by statute to granta reexamination proceeding based on a substantialnew question of patentability “affecting any claimof the patent.” See 35 U.S.C. 303. Accordingly, theremust be at least one substantial new question ofpatentability established for the existing claims inthe patent in order to grant reexamination.

Once the second or subsequent request has provideda “different” substantial new question of patentabilitybased on the claims in effect at the time of the

determination, the second or subsequent request forreexamination may also provide information directedto any proposed new or amended claim in thepending reexamination, to permit examination ofthe entire patent package. The information directedto a proposed new or amended claim in the pendingreexamination is addressed during the later filedreexamination (where a substantial new question israised in the later reexamination for the existingclaims in the patent), in order to permit examinationof the entire patent package. When a proper basisfor the subsequent reexamination is established, itwould be a waste of resources to prevent addressingthe proposed new or amended claims, by requiringparties to wait until the certificate issues for theproposed new or amended claims, and only then tofile a new reexamination request challenging theclaims as revised via the certificate. This alsoprevents a patent owner from simply amending allthe claims in some nominal fashion to preclude asubsequent reexamination request during thependency of the reexamination proceeding.

II. POLICY IN SPECIFIC SITUATIONS

In order to further clarify the meaning of “asubstantial new question of patentability” certainsituations are outlined below which, if present,should be considered when making a decision as towhether or not “a substantial new question ofpatentability” is present. Any issues involving 35U.S.C. 325(d) raised in the request must be referredto the examiner's SPRS or the director of the CRU.Any questions from the public regarding proceduresin regard to issues involving 35 U.S.C. 325(d) shouldbe referred to the Office of Patent LegalAdministration (OPLA).

A. Prior Favorable Decisions by the U.S. Patent andTrademark Office (Office) on the Same or SubstantiallyIdentical Prior Art in Relation to the Same Patent

A “substantial new question of patentability” is notraised by prior art presented in a reexaminationrequest if the Office has previously considered (inan earlier concluded examination or review of thepatent) the same question of patentability as to apatent claim favorable to the patent owner based onthe same prior art patents or printed publications.

2200-62Rev. 08.2017, January 2018


In re Recreative Technologies, 83 F.3d 1394, 38USPQ2d 1776 (Fed. Cir. 1996).

In deciding whether to grant a request forreexamination of a patent, the examiner should checkthe patent’s file history to ascertain whether any ofthe prior art now advanced by requester waspreviously cited/considered in an earlier concludedexamination or review of the patent or has beenraised to or by the Office in a pending reexaminationor supplemental examination of the patent. For thesake of expediency, such art is referred to as “oldart” throughout, since the term “old art” was coinedby the Federal Circuit in its decision of In reHiniker, 150 F.3d 1362,1365-66, 47 USPQ2d 1523,1526 (Fed. Cir. 1998).

In a decision to order reexamination made on or afterNovember 2, 2002, reliance on old art does notnecessarily preclude the existence of a substantialnew question of patentability that is basedexclusively on that old art. See Public Law 107-273,116 Stat. 1758, 1899-1906 (2002), which expandedthe scope of what qualifies for a substantial newquestion of patentability upon which a reexaminationmay be based. Determinations on whether asubstantial new question of patentability exists insuch an instance shall be based upon a fact-specificinquiry done on a case-by-case basis. For example,a substantial new question of patentability may bebased solely on old art where the old art is beingpresented/viewed in a new light, or in a differentway, as compared with its use in the earlierexamination(s), in view of a material new argumentor interpretation presented in the request. Suchmaterial new argument or interpretation may bebased solely on claim scope of the patent beingreexamined.

When it is determined that a substantial new questionof patentability based solely on old art is raised, formparagraph 22.01.01 should be included in the orderfor reexamination.

¶ 22.01.01 Criteria for Applying Old Art as Sole Basis forReexamination

The above [1] is based solely on patents and/or printedpublications already cited/considered in an earlier concludedexamination or review of the patent being reexamined, or hasbeen raised to or by the Office in a pending reexamination orsupplemental examination of the patent. On November 2, 2002,

Public Law 107-273 was enacted. Title III, Subtitle A, Section13105, part (a) of the Act revised the reexamination statute byadding the following new last sentence to 35 U.S.C. 303(a) and312(a):

"The existence of a substantial new question ofpatentability is not precluded by the fact that a patent orprinted publication was previously cited by or to theOffice or considered by the Office."

For any reexamination ordered on or after November 2, 2002,the effective date of the statutory revision, reliance on previouslycited/considered art, i.e., “old art,” does not necessarily precludethe existence of a substantial new question of patentability(SNQ) that is based exclusively on that old art. Rather,determinations on whether a SNQ exists in such an instanceshall be based upon a fact-specific inquiry done on acase-by-case basis.

In the present instance, there exists a SNQ based solely on [2].A discussion of the specifics now follows:

[3]

Examiner Note:

1. In bracket 1, insert “substantial new question ofpatentability” if the present form paragraph is used in an ordergranting reexamination (or a TC or CRU Director’s decision onpetition of the denial of reexamination). If this form paragraphis used in an Office action, insert “ground of rejection.”

2. In bracket 2, insert the old art that is being applied as thesole basis of the SNQ. For example, “the patent to J. Doe” or“the patent to J. Doe when taken with the Jones publication” or“the combination of the patent to J. Doe and the Smithpublication” could be inserted. Where more than one SNQ ispresented based solely on old art, the examiner would insert allsuch bases for SNQ.

3. In bracket 3, for each basis identified in bracket 2, explainhow and why that fact situation applies in the proceeding beingacted on. The explanation could be for example that the old artis being presented/viewed in a new light, or in a different way,as compared with its use in the earlier examination(s), in viewof a material new argument or interpretation presented in therequest. See Ex parte Chicago Rawhide Mfg. Co., 223 USPQ351 (Bd. Pat. App. & Inter. 1984).

4. This form paragraph is only used the first time the “alreadycited/considered” art is applied, and is not repeated for the sameart in subsequent Office actions.

See MPEP § 2258.01 for a discussion of the use of“old art” in the examination stage of an orderedreexamination (as a basis for rejecting the patentclaims).

Rev. 08.2017, January 20182200-63


B. Prior Adverse Decisions by the Office on the Sameor Substantially Identical Prior Art in the Same Patent

A prior decision adverse to the patentability of aclaim of a patent by the Office based upon prior artpatents or printed publications would usually meanthat “a substantially new question of patentability”is present. Such an adverse decision by the Officecould, for example, arise from a reissue applicationwhich was abandoned after rejection of the claimand without disclaiming the patent claim.

C. Prior Adverse Reissue Application Final Decisionby the Director of the USPTO or the Board Based UponGrounds Other Than Patents or Printed Publications

Any prior adverse final decision by the Director ofthe USPTO or the Patent Trial and Appeal Board orBoard of Patent Appeals and Interferences (Board),on an application seeking to reissue the same patenton which reexamination is requested will beconsidered by the examiner when determiningwhether or not a “substantial new question ofpatentability” is present. However, to the extent thatsuch prior adverse final decision was based upongrounds other than patents or printed publications,the prior adverse final decision will not be a basisfor determining whether or not a “substantial newquestion of patentability” is present.

D. Prior Favorable or Adverse Decisions on the Sameor Substantially Identical Prior Art Patents or PrintedPublications in Other Cases not Involving the Patent

While the Office would consider decisions involvingsubstantially identical patents or printed publicationsin determining whether a “substantial new questionof patentability” is raised, the weight to be givensuch decisions will depend upon the circumstances.

III. POLICY WHERE A FEDERAL COURTDECISION HAS BEEN ISSUED ON THE PATENT

A. Final Holding of Validity by the Courts

When the initial question as to whether the prior artraises a substantial new question of patentability asto a patent claim is under consideration, the existenceof a final court decision of claim validity in view ofthe same or different prior art does not necessarilymean that no new question is present, because of the

different standards of proof employed by the federaldistrict courts and the Office. While the Office mayaccord deference to factual findings made by thedistrict court, the determination of whether asubstantial new question of patentability exists willbe made independently of the court’s decision onvalidity, because it is not controlling on the Office.See In re Swanson et al., 540 F.3d 1368, 1378 (Fed.Cir. 2008), where the Federal Circuit approved ofthe Office’s interpretation in MPEP § 2242. See also In re Baxter International Inc., 678 F.3d 1357, 102USPQ2d 1925 (Fed. Cir. 2012) (patentreexamination should take notice of a court decisionbut the Office need not come to the same conclusionas the court).

B. Nonfinal Holding of Invalidity or Unenforceabilityby the Courts

A nonfinal holding of claim invalidity orunenforceability will not be controlling on thequestion of whether a substantial new question ofpatentability is present.

C. Final Holding of Invalidity or Unenforceabilityby the Courts

A final holding of claim invalidity orunenforceability, after all appeals, is controlling onthe Office. In such cases, a substantial new questionof patentability would not be present as to the claimsfinally held invalid or unenforceable.

As to subsections A, B, and C above, see Ethiconv. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir.1988).

Any situations requiring clarification should bebrought to the attention of the Office of Patent LegalAdministration.

2243 Claims Considered in Deciding RequestFiled under 35 U.S.C. 302 [R-07.2015]

The claims of the patent in effect at the time of thedetermination will be the basis for deciding whether“a substantial new question of patentability” ispresent. 37 CFR 1.515(a). The Office’sdetermination in both the order for reexaminationand the examination stage of the reexamination under

2200-64Rev. 08.2017, January 2018


35 U.S.C. 302 will generally be limited solely to areview of the claim(s) for which reexamination wasrequested. If the requester was interested in havingall of the claims reexamined, requester had theopportunity to include them in its request forreexamination. However, if the requester chose notto do so, those claim(s) for which reexamination wasnot requested will generally not be reexamined bythe Office. It is further noted that 35 U.S.C. 302requires that “[t]he request must set forth thepertinency and manner of applying cited prior art toevery claim for which reexamination is requested.”If the requester fails to apply the art to certain claims,then the requester is not statutorily entitled toreexamination of such claims. If a request fails toset forth the pertinency and manner of applying thecited art to any claim for which reexamination isrequested as required by 37 CFR 1.510(b), that claimwill generally not be reexamined. The decision toreexamine any claim for which reexamination hasnot been requested under 35 U.S.C. 302 lies withinthe sole discretion of the Office, to be exercisedbased on the individual facts and situation of eachindividual case. If the Office chooses to reexamineany claim for which reexamination has not beenrequested under 35 U.S.C. 302, it is permitted to doso. In addition, the Office may always initiate areexamination on its own initiative of thenon-requested claim (35 U.S.C. 303(a)). Thus, whilethe examiner will ordinarily concentrate on thoseclaims for which reexamination is requested, thefinding of “a substantial new question ofpatentability” can be based upon a claim of the patentother than the ones for which reexamination isrequested, if reexamination is requested under 35U.S.C. 302. For example, the request filed under 35U.S.C. 302 might seek reexamination of particularclaims, but the examiner is not limited to thoseclaims and can make a determination that “asubstantial new question of patentability” is presentas to other claims in the patent without necessarilyfinding “a substantial new question” with regard tothe claims for which reexamination was requested.

The decision on the request for reexamination shoulddiscuss all of the patent claims requested forreexamination. The examiner should limit thediscussion of those claims in the order forreexamination as to whether a substantial newquestion of patentability has been raised.

See MPEP § 2242 for a discussion of patent claimswhich have been the subject of a prior decision.

Amendments and/or new claims presented in anycopending reexamination or reissue proceeding forthe patent to be reexamined will not (see MPEP §2240, subsection II.) be considered nor commentedupon when deciding a request for reexamination.

2244 Prior Art on Which the DeterminationIs Based in Requests Filed under 35 U.S.C.302 [R-07.2015]

The determination under 35 U.S.C. 303(a) whetheror not “a substantial new question of patentability”is present can be based upon any prior art patents orprinted publications. 35 U.S.C. 303(a) and 37 CFR1.515(a) provide that the determination on a requestwill be made “with or without consideration of otherpatents or printed publications,” i.e., other than thoserelied upon in the request. The examiner is notlimited in making the determination based on thepatents and printed publications relied on in therequest. The examiner can find “a substantial newquestion of patentability” based upon the prior artpatents or printed publications relied on in therequest, a combination of the prior art relied on inthe request and other prior art found elsewhere, orbased entirely on different patents or printedpublications. The primary source of patents andprinted publications used in making thedetermination are those relied on in the request. Forreexamination ordered on or after November 2, 2002,see MPEP § 2242, subsection II.A. for a discussionof “old art.” The examiner can also consider anypatents and printed publications of record in thepatent file from submissions under 37 CFR 1.501which are in compliance with 37 CFR 1.98 inmaking the determination. If the examiner believesthat additional prior art patents and publications canbe readily obtained by searching to supply anydeficiencies in the prior art cited in the request, theexaminer can perform such an additional search.Such a search should be limited to that area mostlikely to contain the deficiency of the prior artpreviously considered and should be made onlywhere there is a reasonable likelihood that prior artcan be found to supply any deficiency necessary to“a substantial new question of patentability.”

Rev. 08.2017, January 20182200-65


The determination should be made on the claims ineffect at the time the decision is made (37 CFR1.515(a)).

The Director of the USPTO has the authority to orderreexamination only in those cases which raise asubstantial new question of patentability. Thesubstantial new question of patentability requirementprotects patentees from having to respond to, orparticipate in unjustified reexaminations. See, e.g., Patlex Corp. v. Mossinghoff, 771 F.2d 480, 226USPQ 985 (Fed. Cir. 1985).

2245 Processing of Decision [R-07.2015]

After the examiner has prepared the decision andproofread and signed the final version, thereexamination file and decision are forwarded to theCentral Reexamination Unit (CRU) Legal InstrumentExaminer (LIE) for coordinating the clericalprocessing carried out by the technical support staff.

A copy of the decision is then mailed to the patentowner and to any third party, along with any requiredcopies of prior art documents. The signed copy ofthe decision and a copy of any prior art enclosed ismade of record in the reexamination electronic file(file history).

2246 Decision Ordering Reexaminationunder 35 U.S.C. 304 [R-07.2015]

35 U.S.C. 304 Reexamination order by Director.

If, in a determination made under the provisions of subsection303(a), the Director finds that a substantial new question ofpatentability affecting any claim of a patent is raised, thedetermination will include an order for reexamination of thepatent for resolution of the question. The patent owner will begiven a reasonable period, not less than two months from thedate a copy of the determination is given or mailed to him, withinwhich he may file a statement on such question, including anyamendment to his patent and new claim or claims he may wishto propose, for consideration in the reexamination. If the patentowner files such a statement, he promptly will serve a copy ofit on the person who has requested reexamination under theprovisions of section 302. Within a period of two months fromthe date of service, that person may file and have considered inthe reexamination a reply to any statement filed by the patentowner. That person promptly will serve on the patent owner acopy of any reply filed.

37 CFR 1.525 Order for ex parte reexamination.

(a) If a substantial new question of patentability is foundpursuant to § 1.515 or § 1.520, the determination will includean order for ex parte reexamination of the patent for resolutionof the question. If the order for ex parte reexamination resultedfrom a petition pursuant to § 1.515(c), the ex parte reexamination will ordinarily be conducted by an examiner otherthan the examiner responsible for the initial determination under§ 1.515(a).

(b) The notice published in the Official Gazette under§ 1.11(c) will be considered to be constructive notice and exparte reexamination will proceed.

If a request for reexamination is granted, theexaminer’s decision granting the request willconclude that a substantial new question ofpatentability has been raised by (A) identifying allclaims and issues, (B) identifying the patents and/orprinted publications relied on, and (C) providing abrief statement of the rationale supporting each newquestion.

In the examiner’s decision, the examiner mustidentify at least one substantial new question ofpatentability and explain how the prior art patentsand/or printed publications raise such a question.The examiner should indicate, insofar as possible,his or her initial position on all the issues identifiedin the request or by the requester (without rejectingclaims) so that comment thereon may be receivedin the patent owner’s statement and in the requester’sreply. The prior art relied on should be listed on aform PTO-892 if it is not already listed on a formPTO/SB/08A or 08B, or PTO/SB/42 (or on a formhaving a format equivalent to one of these forms)by the requester. A copy of a reference should besupplied only where it has not been previouslysupplied to the patent owner and requester.

As to each substantial new question of patentabilityidentified in the decision, the decision should pointout:

(A) The prior art patents and printed publicationswhich add some new teaching as to at least oneclaim;

(B) What that new teaching is;

(C) The claims that the new teaching is directedto;

(D) That the new teaching was not previouslyconsidered nor addressed in the earlier concludedexamination or review of the patent or a final holdingof invalidity by a federal court, and was not raised

2200-66Rev. 08.2017, January 2018


to or by the Office in a pending reexamination orsupplemental examination of the patent;

(E) That the new teaching is such that areasonable examiner would consider the newteaching to be important in deciding to allow theclaim being considered; and

(F) Where the question is raised, or where it isnot clear that a patent or printed publication pre-datesthe patent claims, a discussion should be providedas to why the patent or printed publication is deemedto be available against the patent claims.

See MPEP § 2247.01 for an example of a decisiongranting a request for reexamination.

In a simple case, the examiner may adopt the reasonsprovided by the requester in the discussion of thesubstantial new question of patentability.

The example in MPEP § 2247.01 is drafted for thecase where the “request indicates that Requesterconsiders that Claims 1-3 are unpatentable overSmith taken with Jones.” There may, however, be arequest that does not indicate the claims to beunpatentable over the art , but rather that asubstantial new question of patentability is raisedby the art. This may occur, for example, in a patentowner request filed to address prior art that raises asubstantial new question of patentability but theclaims are still patentable over the art. In such aninstance , the decision on the request should notstate that the “request indicates that Requesterconsiders that Claims 1-3 are unpatentable overSmith taken with Jones.” Rather, it should state thatthe “request indicates that Requester considers thata substantial new question of patentability is raisedas to Claims 1-3 based on Smith taken with Jones.”

In the decision on the request, the examiner will notdecide, and no statement should be made as to,whether the claims are rejected over the patents andprinted publications. The examiner does not decidethe question of patentability of the claims in thedecision on the request. The examiner only decideswhether there is a substantial new question ofpatentability to grant the request to orderreexamination.

If arguments are raised by a requester (third partyor patent owner) as to grounds not based on the

patents or printed publications, such as those basedon public use or sale, or abandonment under35 U.S.C. 102(c) for reexamination proceedingsexamined under the first-to-invent prior art regime,the examiner should note that such grounds areimproper for reexamination under 35 U.S.C. 302and are not considered or commented upon. See 37CFR 1.552(c).

The decision granting the request must set forth thetime periods for the patent owner and requester tofile their statement and any reply thereto.

Form paragraph 22.01 should be used at thebeginning of each decision letter.

¶ 22.01 New Question of Patentability

A substantial new question of patentability affecting claim [1]of United States Patent Number [2] is raised by the request for ex parte reexamination.

Extensions of time under 37 CFR 1.136(a) will not be permittedin these proceedings because the provisions of 37 CFR 1.136apply only to “an applicant” and not to parties in a reexaminationproceeding. Additionally, 35 U.S.C. 305 requires that ex parte reexamination proceedings “will be conducted with specialdispatch” (37 CFR 1.550(a)). Extensions of time in ex parte reexamination proceedings are provided for in 37 CFR 1.550(c).

Form paragraph 22.73 should be used at the end ofeach decision letter.

¶ 22.73 Correspondence and Inquiry as to Office Actions

All correspondence relating to this ex parte reexaminationproceeding should be directed:

By EFS: Registered users may submit via the electronic filings y s t e m E F S - W e b , a thttps://efs.uspto.gov/efile/myportal/efs-registered.

By Mail to: Mail Stop Ex Parte Reexam

Central Reexamination Unit

Commissioner for Patents

United States Patent & Trademark Office

P.O. Box 1450

Alexandria, VA 22313-1450

By FAX to: (571) 273-9900

Central Reexamination Unit

Rev. 08.2017, January 20182200-67


By hand: Customer Service Window

Randolph Building

401 Dulany Street

Alexandria, VA 22314

For EFS-Web transmissions, 37 CFR 1.8(a)(1)(i)(C) and (ii)states that correspondence (except for a request forreexamination and a corrected or replacement request forreexamination) will be considered timely filed if (a) it istransmitted via the Office's electronic filing system in accordancewith 37 CFR 1.6(a)(4), and (b) includes a certificate oftransmission for each piece of correspondence stating the dateof transmission, which is prior to the expiration of the set periodof time in the Office action.

Any inquiry concerning this communication should be directedto [1] at telephone number [2].

Examiner Note:

1. This form paragraph is used at the end of ex partereexamination communications.

2. In bracket 1, insert the name of the examiner having chargeof the proceeding.

3. In bracket 2, insert the examiner’s telephone number.

I. PROCESS OF PREPARING THE DECISION ONTHE REQUEST FILED UNDER 35 U.S.C. 302

After the reexamination file has been reviewed inthe Central Reexamination Unit (CRU) to ensurethat it is ready for examination, the reexaminationproceeding will be assigned to an examiner.

In the event the CRU Reexamination Specialist(SPRS) believes that another Art Unit within theCRU should examine the reexamination file, seeMPEP § 2237 for procedures for transferring thereexamination file.

After the examiner receives the new reexaminationfile, the examiner will prepare for and set up a panelreview conference as per MPEP § 2271.01, todiscuss the issuance of a decision on the request forreexamination. The examiner may prepare thedecision on the request for reexamination, and, whereapplicable, (where the statement has been waivedby patent owner - see MPEP § 2249 “Waiver ofStatement Program”) the first Office action toaccompany the decision after the conference, or mayprepare the decision on the request forreexamination, and, where applicable, the first Office

action prior to the conference and revise it as neededafter the conference.

If the conference confirms the examiner’spreliminary decision to grant reexamination, thedecision on the request for reexamination will becompleted and signed by the examiner, with the twoor more other conferees initialing the action (as“conferee”) to indicate their presence in theconference. When ready, the examiner’s decisionprocessed and mailed. A transmittal form PTOL-465with the third party requester’s address will becompleted, if a copy for mailing is not alreadyavailable. The transmittal form PTOL-465 is usedto forward copies of Office actions (and anyreferences cited in the actions) to the third partyrequester. Whenever an Office action is issued, acopy of this form will be made and attached to acopy of the Office action. The use of this formremoves the need to retype the third party requester’saddress each time a mailing is required. Inconjunction with the mailing, any appropriateprocessing (e.g., PALM work, update scanning) iscarried out by the staff of the CRU.

II. SEEKING REVIEW OF A FINDING OF ASUBSTANTIAL NEW QUESTION OFPATENTABILITY IN EX PARTEREEXAMINATION PROCEEDINGS UNDER 35U.S.C. 302

A substantive determination by the Director of theUSPTO to institute reexamination pursuant to afinding that the prior art patents or printedpublications raise a substantial new question ofpatentability (SNQ) is not subject to review by thecourts until a final agency decision in thereexamination proceeding has issued. See Joy Mfg.Co. v. Nat’l Mine Serv. Co., Inc., 810 F.2d 1127,1 USPQ2d 1627 (Fed. Cir. 1987); Heinl v. Godici,143 F. Supp.2d 593 (E.D.Va. 2001). Note furtherthe decision of Patlex Corp. v. Quigg, 680 F. Supp.33, 35, 6 USPQ2d 1296, 1298 (D.D.C. 1988) (thelegislative scheme leaves the Director’s 35 U.S.C.303 determination entirely to his or her discretionand not subject to judicial review until a final agencydecision on the reexamination proceeding hasissued).

2200-68Rev. 08.2017, January 2018


A patent owner may challenge the correctness of thedecision to grant an order for ex parte reexaminationunder 35 U.S.C. 304 on the basis that there is noSNQ by requesting reconsideration of the examiner'sSNQ determination in a patent owner’s statementunder 37 CFR 1.530 discussing the SNQ raised inthe reexamination order for the examiner'sconsideration. See 35 U.S.C. 304. When theexaminer makes a rejection based in whole or in parton a reference (patent or printed publication) in anOffice action, the patent owner may present achallenge to the examiner's SNQ determination byrequesting reconsideration of the examiner'sdetermination that the reference raises a SNQ andpresenting appropriate arguments in the response tothe Office action. See 37 CFR 1.111(b) (the patentowner's response to an Office action must point outthe supposed errors in the examiner's action and mustreply to every ground of objection and rejection inthe Office action). By presenting argumentsregarding the SNQ to the examiner in the early stagesof the proceeding, the patent owner helps the Officeto resolve the issues quickly. For example, if thepatent owner timely files a statement or response,and the examiner agrees with the patent owner thatno SNQ has been raised in the ex partereexamination proceeding, then the proceedingprosecution will be terminated or the reexaminationorder will be vacated (whichever is appropriate).However, if the examiner determines that the SNQis proper, further review can be obtained byexhausting the patent owner's rights through thereexamination proceeding and ultimately seekingreview before the Board - along with an appeal ofany rejections. To obtain review of the SNQ issue,patent owner must include the SNQ issue and theappropriate arguments in its appeal brief to theBoard.

In order to preserve the right to have the Boardreview the SNQ issue, a patent owner must havefirst requested reconsideration of the SNQ issue bythe examiner. Accordingly, for ex parte reexamination proceedings ordered under 35 U.S.C.304 on or after June 25, 2010, the patent owner mayseek a final agency decision from the Board on theSNQ issue only if the patent owner has firstrequested reconsideration before the examiner (e.g.,in a patent owner's statement under 37 CFR 1.530or in a patent owner's response under 37 CFR 1.111)

and then seeks review of the examiner's SNQdetermination before the Board. In its appeal brief,the patent owner is to clearly present the issue andarguments regarding the examiner's SNQdetermination under a separate heading and identifythe communication in which the patent owner firstrequested reconsideration before the examiner. (For ex parte reexamination proceedings ordered under35 U.S.C. 304 prior to June 25, 2010, if the patentowner presents the SNQ issue in its appeal brief, theBoard panel will review the procedural SNQ issuealong with its review of any rejections in an appealand will enter a final agency decision accordingly.)See MPEP § 2274 for further discussion of theappeal process as to the SNQ issue.

Separate from the Board's consideration of the SNQissue, a patent owner may file a petition under 37CFR 1.181(a)(3) to vacate an ex parte reexaminationorder as " ultra vires." Such petitions should be rare,and will be granted only in a situation where theUSPTO acted in ``brazen defiance'' of its statutoryauthorization in granting the order for ex partereexamination. See Heinl, 143 F. Supp. 2d at601-02. These types of petitions to vacate an exparte reexamination order are not decided by theBoard, but are delegated to the Director of CentralReexamination Unit (CRU).

“Appropriate circumstances” under 37 CFR1.181(a)(3) exist to vacate the order grantingreexamination where, for example:

(A) the reexamination order under 35 U.S.C.304 is facially not based on prior art patents orprinted publications (this does not include a situationwhere the Office has given reasons why a referenceis a prior art patent or printed publication, and patentowner disagrees, but rather would include, forexample, a situation where reexamination is orderedbased on 35 U.S.C. 112, with a reference used tosupport a new question as to 35 U.S.C. 112);

(B) all claims of the patent for whichreexamination was ordered were held to be invalidby a final decision of a federal court after all appeals;

(C) reexamination was ordered for the wrongpatent; or

(D) reexamination was ordered based on aduplicate copy of the request.

Rev. 08.2017, January 20182200-69


There is no right to petition, as an " ultra vires"action by the Office, if the finding of a SNQ is basedon reasons other than those urged by the requester(or based on less than all the grounds urged by therequester).

When a petition under 37 CFR 1.181 is filed tovacate a reexamination order under 35 U.S.C. 304,the third party requester (where one is present in thereexamination proceeding) may file a singlesubmission in opposition to the petition. Becausereexamination proceedings are conducted withspecial dispatch, 35 U.S.C. 305, any such oppositionby the third party requester must be filed within twoweeks of the date upon which a copy of the original37 CFR 1.181 petition was served on the third partyrequester to ensure consideration. It is advisable that,upon receipt and review of the served copy of sucha 37 CFR 1.181 petition which the third partyrequester intends to oppose, the requester shouldimmediately place a courtesy telephone call to boththe CRU support staff and the CRU SPRS to notifythe Office that an opposition to the 37 CFR 1.181petition will be filed. Whenever possible, filing ofthe opposition should be submitted electronically.

The filing of a 37 CFR 1.181 petition to vacate an ultra vires reexamination order is limited to a singlesubmission, even if an opposition thereto is filed bya third party requester.

III. PRIOR ART SUBMITTED AFTER THE ORDER

Any prior art citations or written statements under37 CFR 1.501 submitted after the date of the decisionon the order are stored until the reexamination isconcluded. Note 37 CFR 1.502 and 1.902. After thereexamination proceeding is concluded, thesubmission is entered in the patent file. Submissionsfiled after the date of an order for reexamination willnot be considered by the examiner during thereexamination. See MPEP § 2206.

2247 Decision under 35 U.S.C. 303 onRequest for Reexamination filed Under 35U.S.C. 302, Request Denied [R-07.2015]

The request for reexamination will be denied if asubstantial new question of patentability is not foundbased on patents or printed publications.

If the examiner concludes that no substantial newquestion of patentability has been raised, theexaminer should prepare a decision denying thereexamination request. Form paragraph 22.02 shouldbe used as the introductory paragraph in a decisiondenying reexamination.

¶ 22.02 No New Question of Patentability

No substantial new question of patentability is raised by therequest for reexamination and prior art cited therein for thereasons set forth below.

The decision denying the request will then indicate,for each patent and printed publication cited in therequest, why the citation is:

(A) Cumulative to the teachings of the art citedin the earlier concluded examination or review ofthe patent, or raised to or by the Office in a pendingreexamination or supplemental examination of thepatent;

(B) Not available against the claims (e.g., thereference is not available as prior art because of itsdate or the reference is not a publication);

(C) Not important to a reasonable examiner indeciding whether any claim of the patent for whichreexamination is requested is patentable, even thoughthe citation is not cumulative and the citation isavailable against the claim; or

(D) One which was cited in the record of thepatent and is barred by the guidelines set forth inMPEP § 2242, subsection II. A.

The examiner should also, in the decision respondto the substance of each argument raised by therequester which is based on patents or printedpublications. If arguments are presented as togrounds not based on prior art patents or printedpublications, such as those based on public use oron sale under 35 U.S.C. 102(b), or abandonmentunder 35 U.S.C. 102(c) for reexaminationproceedings examined under the first-to-invent priorart regime, the examiner should note that suchgrounds are improper for reexamination and are notconsidered or commented upon. See 37 CFR1.552(c).

See MPEP § 2247.01 for an example of a decisiondenying a request for reexamination. The examplein MPEP § 2247.01 is drafted for the case where the

2200-70Rev. 08.2017, January 2018


“request indicates that Requester considers thatClaims 1-2 are unpatentable over Smith taken withJones.” There may, however, be a request that doesnot indicate the claims to be unpatentable overthe art , but rather that a substantial new questionof patentability is raised by the art. This may occur,for example, in a patent owner request filed toaddress prior art that raises a substantial newquestion of patentability but the claims are stillpatentable over the art. In such an instance , thedecision on the request should not state that the“request indicates that Requester considers thatClaims 1-2 are unpatentable over Smith taken withJones.” Rather, it should state that the “requestindicates that Requester considers that a substantialnew question of patentability is raised as to Claims1-2 based on Smith taken with Jones.”

The decision denying a request for reexamination isprocessed for mailing by the Central ReexaminationUnit (CRU), and the CRU will allow time for apetition seeking review of the examiner’sdetermination refusing reexamination. If such apetition is not filed within one (1) month of theexaminer’s determination denying reexamination,the CRU then processes the reexamination file toprovide the partial refund set forth in 37 CFR 1.26(c)(the Office of Finance no longer processesreexamination proceedings for a refund). Thereexamination proceeding is then given a 420 status.A copy of the PALM “Application NumberInformation” screen and the “Contents” screen isprinted, the printed copy is annotated by adding thecomment “PROCEEDING CONCLUDED,” and theannotated copy is then scanned into IFW using themiscellaneous letter document code.

The concluded reexamination file (electronic orpaper) containing the request and the decisiondenying the request becomes part of the patent’srecord.

PROCESS OF PREPARING THE DECISIONDENYING THE REQUEST

If the examiner’s position is to deny reexamination,the examiner will prepare for and set up a panelreview conference as per MPEP § 2271.01, todiscuss the issuance of a decision denyingreexamination. The examiner may prepare thedecision after the conference, or may prepare thedecision and revise it as needed after the conference.

The conference will be conducted. If the conferenceconfirms the examiner’s preliminary decision not togrant reexamination, the decision denyingreexamination will be completed and signed by theexaminer, with the two or more other confereesinitialing the action (as “conferee”) to indicate theirpresence in the conference. A transmittal formPTOL-465 with the third party requester’s addresswill be completed, if a copy for mailing is notalready available. The transmittal form PTOL-465is used to forward the decision to the third partyrequester. The use of this form removes the need toretype the third party requester’s address each timea mailing is required. In conjunction with themailing, any appropriate processing (e.g., PALMwork, update scanning) is carried out by the staff ofthe CRU.

2247.01 Examples of Decisions on Requestfor Reexamination [R-11.2013]

Examples of decisions on requests for ex partereexamination are provided below. The first exampleis a grant of an ex parte reexamination. The secondexample is a denial of an ex parte reexamination.The examiner should leave the paper number blanksince IFW files do not have a paper number.

Example (1): Decision GrantingRequest for Reexamination

Rev. 08.2017, January 20182200-71

§ 2247.01CITATION OF PRIOR ART AND EX PARTE REEXAMINATION OF PATENTS

2200-72Rev. 08.2017, January 2018


Example (2): Decision DenyingRequest for Reexamination

Rev. 08.2017, January 20182200-73


2200-74Rev. 08.2017, January 2018


2248 Petition From Denial of Request FiledUnder 35 U.S.C. 302 [R-08.2017]

37 CFR 1.515 Determination of the request for ex partereexamination.

*****

(c) The requester may seek review by a petition to theDirector under § 1.181 within one month of the mailing date ofthe examiner’s determination refusing ex parte reexamination.Any such petition must comply with § 1.181(b). If no petitionis timely filed or if the decision on petition affirms that nosubstantial new question of patentability has been raised, thedetermination shall be final and nonappealable.

Rev. 08.2017, January 20182200-75


PROCESSING OF PETITION UNDER 37 CFR1.515(c)

After a request for reexamination under 35 U.S.C.302 has been denied, the Central ReexaminationUnit (CRU) will allow time for a petition seekingreview of the examiner’s determination refusingreexamination. If a petition seeking review of theexaminer’s determination refusing reexamination isnot filed within one (1) month of the examiner’sdetermination, the CRU will then process thereexamination file as a concluded reexamination file.See MPEP § 2247 and § 2294.

If a petition seeking review of the examiner’sdetermination refusing reexamination is filed, it isbrought to the attention of the CRU Director ordesignee for decision. Where a petition is filed, theCRU Director will review the examiner’sdetermination that a substantial new question ofpatentability has not been raised. The CRUDirector’s review will be de novo. Each decisionby the CRU Director will conclude with theparagraph:

This decision is final and nonappealable. See35 U.S.C. 303(c) and 37 CFR 1.515(c). Nofurther communication on this matter will beacknowledged or considered.

If the petition is granted, the decision of the CRUDirector should include a sentence setting atwo-month period for filing a statement under 37CFR 1.530; the reexamination file will then bereturned to the CRU Supervisory PatentReexamination Specialist (SPRS) of the art unit thatwill handle the reexamination for consideration ofreassignment to another examiner.

In the situation in which the examiner'sdetermination failed to find any SNQ, reassignmentwill be the general rule. Only in exceptionalcircumstances, where no other examiner is availableand capable to give a proper examination, will thecase remain with the examiner who denied therequest.

Under normal circumstances, the reexaminationproceeding will not be reassigned to a primary

examiner or assistant examiner who was involvedin any part of the examination of the patent for whichreexamination is requested. Only where unusualcircumstances are found to exist may the CRUDirector make an exception to this practice andreassign the reexamination proceeding to anexaminer involved with the examination of thepatent. For example, if the original examiner of thepatent and the examiner who issued the denial arethe only examiners with adequate knowledge of therelevant technology, the CRU Director may permitreassignment of the reexamination proceeding to theexaminer that originally examined the patent.

The requester may seek review of a denial of arequest for reexamination only by petitioning theDirector of the USPTO under 37 CFR 1.515(c) and1.181 within one month of the mailing date of thedecision denying the request for reexamination.Additionally, any request for an extension of thetime period to file such a petition from theexaminer’s denial of a request for reexamination canonly be entertained by filing a petition under 37 CFR1.183 with appropriate fee to waive the timeprovisions of 37 CFR 1.515(c).

After the time for petition has expired without apetition having been filed, or a petition has beenfiled and the decision thereon affirms the denial ofthe request, a partial refund of the filing fee forrequesting reexamination will be made to therequester. (35 U.S.C. 303(c) and 37 CFR 1.26(c)).A decision on a petition under 37 CFR 1.515(c) isfinal and is not appealable.

37 CFR 1.515(c) applies only to challenging a basisfor refusing reexamination; it does not apply tochallenging a basis for granting of reexamination.Even if an order grants reexamination, a petitionunder 37 CFR 1.515(c) may be filed to challengeany refusal to reexamine a requested claim or a claimbased on a requested basis, if applicable, as describedbelow.

If an order granting reexamination includes adetermination that the third party requester has notraised a substantial new question of patentability(SNQ) for one claim, but has raised a SNQ for atleast one other claim, then third party requester may(within one month of the mailing date of the order)

2200-76Rev. 08.2017, January 2018


file a petition under 37 CFR 1.515(c) forreconsideration of the determination as to the claimfor which no SNQ has been found to be raised.

Similarly, a petition under 37 CFR 1.181 may befiled (within one month of the mailing date of theorder) requesting review of a determination grantinga request for reexamination, if the determinationgrants the request as to a specific claim for somereasons (SNQs) advanced in the request but doesnot grant the request as to the claim for other reasons(SNQs) advanced in the request. A decision on sucha petition is final and non-appealable. If no petitionis timely filed, the determination shall be final andnon-appealable. See, e.g., Belkin Int'l,Inc. v. Kappos, 696 F.3d 1379 (Fed. Cir. 2012).

2249 Patent Owner’s Statement inReexaminations Filed Under 35 U.S.C. 302[R-08.2017]


(a) Except as provided in § 1.510(e), no statement or otherresponse by the patent owner in an ex parte reexaminationproceeding shall be filed prior to the determinations made inaccordance with § 1.515 or § 1.520. If a premature statementor other response is filed by the patent owner, it will not beacknowledged or considered in making the determination, andit will be returned or discarded (at the Office’s option).

(b) The order for ex parte reexamination will set a periodof not less than two months from the date of the order withinwhich the patent owner may file a statement on the new questionof patentability, including any proposed amendments the patentowner wishes to make.

(c) Any statement filed by the patent owner shall clearlypoint out why the subject matter as claimed is not anticipatedor rendered obvious by the prior art patents or printedpublications, either alone or in any reasonable combinations.Where the reexamination request was filed by a third partyrequester, any statement filed by the patent owner must be servedupon the ex parte reexamination requester in accordance with§ 1.248.

*****

The patent owner has no right to file a statementsubsequent to the filing of the request under 35U.S.C. 302 but prior to the order for reexamination.Any such premature statement will not beacknowledged nor considered by the Office whenmaking the decision on the request and will bereturned or discarded at the option of the Office, and

will be expunged if inadvertently entered into therecord. See MPEP § 2225 and PatlexCorp. v. Mossinghoff, 771 F.2d 480, 226 USPQ 985(Fed. Cir. 1985).

If reexamination is ordered under 35 U.S.C. 304, thedecision will set a period of not less than two monthswithin which period the patent owner may file astatement and any narrowing amendments to thepatent claims. If necessary, an extension of timebeyond the two months may be requested under 37CFR 1.550(c) by the patent owner. See MPEP §2265.

Any statement filed must clearly point out why thepatent claims are believed to be patentable,considering the cited prior art patents or printedpublications alone or in any reasonable combination.

A copy of the statement must be served by the patentowner on the requester, unless the request was filedby the patent owner.

Lack of proof of service especially poses a problemwhere the patent owner fails to indicate that servicewas made to the requester in the statementsubsequent to the order for reexamination (37 CFR1.530(c)). In this situation, the CentralReexamination Unit should immediately contact thepatent owner to see whether the indication of proofof service was inadvertently omitted from the patentowner’s response. If it was, the patent owner shouldbe advised to submit a supplemental paper indicatingthe manner and date of service on requester. If thepatent owner cannot be contacted, the CentralReexamination Unit will then contact the requesterto verify that service has in fact been made by thepatent owner and indicate that acknowledgment ofproof of service should accompany requester’s reply(37 CFR 1.248(b)(1)). If the 2-month period forresponse under 37 CFR 1.530 has expired andrequester has not been served, the patent owner’sstatement is considered inappropriate (37 CFR 1.248)and may be denied consideration; see MPEP § 2267.

See also MPEP § 2266.03 for further discussion asto the patent owner providing service on the thirdparty requester.

Rev. 08.2017, January 20182200-77


It should be noted that the period for response byrequester for a reply under 37 CFR 1.535 is twomonths from the owner’s service date and not twomonths from the date the patent owner’s statementwas received in the Office.

Where the patent owner has determined that astatement under 37 CFR 1.530 will not be filed, thepatent owner may expedite the reexaminationproceeding by filing a paper that indicates that thepatent owner waives the filing of a statement under37 CFR 1.530 and serving the waiver on therequester, if any. This will permit reexamination ofthe proceeding to proceed pursuant to 37 CFR1.550(a).

WAIVER OF STATEMENT PROGRAM

If the patent owner waives the right to file a patentowner’s statement in response to a request from theOffice, the examiner will be able to act on the firstOffice action on the merits immediately afterdetermining that reexamination will be ordered under35 U.S.C. 304, and in a suitable case issue thereexamination order and the first Office action onthe merits at the same time (the first action may bea Notice of Intent to Issue Reexamination Certificate,where appropriate). This eliminates the delay ofwaiting for a patent owner’s statement and thethird-party requester’s reply, and it permits theexaminer to utilize time more efficiently by draftingthe order and the first Office action on the meritstogether.

Accordingly, the Central Reexamination Unit (CRU)will contact, via telephone, the patent owner torequest the optional waiver of the patent owner’sstatement after a reexamination proceeding under35 U.S.C. 302 has been granted a filing date andbefore the examiner begins the review. Thecommunication will be strictly limited to the CRUrequesting the waiver of the patent owner’s statementand agreement (or non-agreement) to the waiver bythe patent owner. Discussion of the merits of theproceedings, e.g., the patentability of claims inpatents, is not permitted. The CRU will make theagreement or non-agreement of record in thereexamination file in an interview summary, usingform PTOL-2292 (Ex Parte ReexaminationInterview Summary – Pilot Program for Waiver of

Patent Owner’s Statement). A copy of the completedform will then be mailed to the patent owner andany third party requester. The patent owner is notrequired to file a written statement as to thecommunication under 37 CFR 1.560(b) or otherwise,and such a statement should not be filed as it willslow the process. If the patent owner agrees to thewaiver of the right to file a patent owner’s statement,the examiner may issue the reexamination order andthe first Office action on the merits on the same dayas the order, or within a few days thereafter.

2250 Amendment by Patent Owner[R-08.2017]

37 CFR 1.121 Manner of making amendments in application.*****

(j) Amendments in reexamination proceedings. Anyproposed amendment to the description and claims in patentsinvolved in reexamination proceedings must be made inaccordance with § 1.530.


*****


(1) Specification other than the claims. Changes tothe specification, other than to the claims, must be made bysubmission of the entire text of an added or rewritten paragraphincluding markings pursuant to paragraph (f) of this section,except that an entire paragraph may be deleted by a statementdeleting the paragraph, without presentation of the text of theparagraph. The precise point in the specification must beidentified where any added or rewritten paragraph is located.This paragraph applies whether the amendment is submitted onpaper or compact disc (see §§ 1.96 and 1.825).

(2) Claims. An amendment paper must include theentire text of each patent claim which is being proposed to bechanged by such amendment paper and of each new claim beingproposed to be added by such amendment paper. For any claimchanged by the amendment paper, a parenthetical expression“amended,” “twice amended,” etc., should follow the claimnumber. Each patent claim proposed to be changed and eachproposed added claim must include markings pursuant to

2200-78Rev. 08.2017, January 2018


paragraph (f) of this section, except that a patent claim orproposed added claim should be canceled by a statementcanceling the claim, without presentation of the text of the claim.


(4) The formal requirements for papers making up thereexamination proceeding other than those set forth in thissection are set out in § 1.52.

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

(f) Changes shown by markings. Any changes relative tothe 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 reexaminationproceeding must be enclosed in brackets; and

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

(g) Numbering of patent claims preserved. Patent claimsmay not be renumbered. The numbering of any claims addedin the reexamination proceeding must follow the number of thehighest numbered patent claim.

(h) Amendment of disclosure may be required. Thedisclosure must be amended, when required by the Office, tocorrect inaccuracies of description and definition, and to securesubstantial correspondence between the claims, the remainderof the specification, and the drawings.

(i) Amendments made relative to patent. All amendmentsmust be made relative to the patent specification, including theclaims, and drawings, which are in effect as of the date of filingthe request for reexamination.

(j) No enlargement of claim scope. No amendment mayenlarge the scope of the claims of the patent or introduce newmatter. No amendment may be proposed for entry in an expiredpatent. Moreover, no amendment, other than the cancellationof claims, will be incorporated into the patent by a certificateissued after the expiration of the patent.

(k) Amendments not effective until certificate. Althoughthe Office actions will treat proposed amendments as thoughthey have been entered, the proposed amendments will not beeffective until the reexamination certificate is issued andpublished.

*****

37 CFR 1.52 Language, paper, writing, margins, compactdisc specifications.

(a) Papers that are to become a part of the permanentUnited States Patent and Trademark Office records in the fileof a patent application, or a reexamination or supplementalexamination proceeding.

(1) All papers, other than drawings, that are submittedon paper or by facsimile transmission, and are to become a partof the permanent United States Patent and Trademark Officerecords in the file of a patent application or reexamination orsupplemental examination proceeding, must be on sheets ofpaper that are the same size, not permanently bound together,and:

(i) Flexible, strong, smooth, non-shiny, durable,and white;

(ii) Either 21.0 cm by 29.7 cm (DIN size A4) or21.6 cm by 27.9 cm (8 1/2 by 11 inches), with each sheetincluding a top margin of at least 2.0 cm (3/4 inch), a left sidemargin of at least 2.5 cm (1 inch), a right side margin of at least2.0 cm (3/4 inch), and a bottom margin of at least 2.0 cm (3/4inch);

(iii) Written on only one side in portrait orientation;

(iv) Plainly and legibly written either by atypewriter or machine printer in permanent dark ink or itsequivalent; and

(v) Presented in a form having sufficient clarityand contrast between the paper and the writing thereon to permitthe direct reproduction of readily legible copies in any numberby use of photographic, electrostatic, photo-offset, andmicrofilming processes and electronic capture by use of digitalimaging and optical character recognition.

(2) All papers that are submitted on paper or byfacsimile transmission and are to become a part of the permanentrecords of the United States Patent and Trademark Office shouldhave no holes in the sheets as submitted.

(3) The provisions of this paragraph and paragraph (b)of this section do not apply to the pre-printed information onpaper forms provided by the Office, or to the copy of the patentsubmitted on paper in double column format as the specificationin a reissue application or request for reexamination.

(4) See § 1.58 for chemical and mathematicalformulae and tables, and § 1.84 for drawings.

(5) Papers that are submitted electronically to the Officemust be formatted and transmitted in compliance with theOffice’s electronic filing system requirements.

(b) The application (specification, including the claims,drawings, and the inventor's oath or declaration) orreexamination or supplemental examination proceeding, anyamendments to the application or reexamination proceeding,or any corrections to the application, or reexamination orsupplemental examination proceeding.

(1) The application or proceeding and any amendmentsor corrections to the application (including any translationsubmitted pursuant to paragraph (d) of this section) orproceeding, except as provided for in § 1.69 and paragraph (d)of this section, must:

Rev. 08.2017, January 20182200-79


(i) Comply with the requirements of paragraph (a)of this section; and

(ii) Be in the English language or be accompaniedby a translation of the application and a translation of anycorrections or amendments into the English language togetherwith a statement that the translation is accurate.

(2) The specification (including the abstract and claims)for other than reissue applications and reexamination orsupplemental examination proceedings, and any amendmentsfor applications (including reissue applications) andreexamination proceedings to the specification, except asprovided for in §§ 1.821 through 1.825, must have:

(i) Lines that are 1 1/2 or double spaced;

(ii) Text written in a nonscript type font (e.g., Arial,Times Roman, or Courier, preferably a font size of 12) letteringstyle having capital letters which should be at least 0.3175 cm.(0.125 inch) high, but may be no smaller than 0.21 cm. (0.08inch) high (e.g., a font size of 6); and

(iii) Only a single column of text.

(3) The claim or claims must commence on a separatephysical sheet or electronic page (§ 1.75(h)).

(4) The abstract must commence on a separate physicalsheet or electronic page or be submitted as the first page of thepatent in a reissue application or reexamination or supplementalexamination proceeding (§ 1.72(b)).

*****

Amendments to the patent (one which has notexpired) may be filed by the patent owner with therequest under 35 U.S.C. 302. See MPEP § 2221.Such amendments, however, may not enlarge thescope of a claim of the patent or introduce newmatter. Amended or new claims which broaden orenlarge the scope of a claim of the patent should berejected under 35 U.S.C. 305. The test for when anamended or “new claim enlarges the scope of anoriginal claim under 35 U.S.C. 305 is the same asthat under the 2-year limitation for reissueapplications adding enlarging claims under 35 U.S.C.251, last paragraph.” In re Freeman, 30 F.3d 1459,1464, 31 USPQ2d 1444, 1447 (Fed. Cir. 1994). SeeMPEP § 2258 for a discussion of enlargement ofclaim scope. For handling of new matter, see MPEP§ 2270. Amendments proposed in a reexaminationwill normally be entered and be considered to beentered for purposes of prosecution before the Office(if they are timely and comply with the rules);however, the amendments do not become effectivein the patent until the reexamination certificate under35 U.S.C. 307 is issued and published.

No amendment will be permitted where thecertificate issues after expiration of the patent. See37 CFR 1.530(d)(3). The patent expiration date fora utility patent, for example, is determined by takinginto account the term of the patent, whethermaintenance fees have been paid for the patent,whether any disclaimer was filed as to the patent toshorten its term, any patent term extensions oradjustments for delays within the USPTO under 35U.S.C. 154 (see MPEP § 2710 et seq.), and anypatent term extensions under 35 U.S.C. 156 forpremarket regulatory review (see MPEP § 2750 et.seq.). Any other relevant information should also betaken into account.

Amendment Entry — Amendments which complywith 37 CFR 1.530(d)-(j) (and are formally presentedpursuant to 37 CFR 1.52(a) and (b), and contain allfees required by 37 CFR 1.20(c)) will be entered inthe reexamination file pursuant to the guidelines setforth in MPEP § 2234.

I. MANNER OF MAKING AMENDMENTS INREEXAMINATION PROCEEDINGS

Amendments made in a reexamination proceedingmust comply with the formal requirements of 37CFR 1.52(a) and (b), as do all papers that are tobecome a part of the permanent USPTO file recordsin a patent application or proceeding. If anamendment is submitted to add claims to the patentbeing reexamined (i.e., to provide new claims), thenexcess claim fees pursuant to 37 CFR 1.20(c)(3) and(4) may be applicable to the presentation of theadded claims. See MPEP § 2250.03. In addition, theprovisions of 37 CFR 1.530(d)-(k) uniquely applyto amendments in both ex parte and inter partesreexamination proceedings, as follows.

A. The Specification

37 CFR 1.530(d)(1) relates to the manner of makingamendments to the reexamination “specification”(other than the claims). It is not to be used formaking amendments to the claims or the drawings.

37 CFR 1.530(d)(1) requires that all amendments,which include any deletions or additions, must bemade by submission of the full text of any paragraphto be changed in any manner, with markings (single

2200-80Rev. 08.2017, January 2018


brackets and underlining) showing the changes. Itshould be noted that examiner’s amendments madeat the time when the Notice of Intent to IssueReexamination Certificate (NIRC) is prepared alsorequire the full text of any paragraph to be changed,with markings. The exception for examiner’samendment set forth in 37 CFR 1.121(g) does notapply to examiner’s amendments in reexaminationproceedings. It should further be noted that therequirement of 37 CFR 1.530(d)(1) appliesregardless of whether the amendment is submittedon paper or on compact disc (pursuant to 37 CFR1.96 or 1.825). The only exception to thisrequirement is that an entire paragraph ofspecification text may be deleted from thespecification by a statement deleting the paragraphwithout the presentation of the text of the paragraph.However, presentation of the text of the paragraphto be deleted will assist the Office in proper entryof the amendment.

In accordance with 37 CFR 1.530(d)(1), allparagraphs which are added to the specification mustbe submitted as completely underlined.

37 CFR 1.530(d)(1) requires that the precise pointwhere each amendment is to be made must beindicated. This is important because uncertaintyabout the precise point for an amendment may causedelay in the publication of the reexaminationcertificate. Care should be taken to clearly identifythe precise point for each change to the specification.

37 CFR 1.530(d)(1) defines the “markings” byreference to 37 CFR 1.530(f) as being single bracketsfor deletion and underlining for addition. Allbracketing and underlining is made in comparisonto the original patent; not in comparison with theprior amendment.

Where a change is made in one sentence, paragraphor page of the patent, and the change increases ordecreases the size of the sentence, paragraph or page,this will have no effect on the body of thereexamination “specification” (the copy of thepatent). This is because all insertions are made asblocked additions of paragraphs. Therefore, areexamination patent owner need not be concernedwith page formatting considerations when presentingamendments to the Office.

B. The Claims

37 CFR 1.530(d)(2) relates to the manner of makingamendments to the claims in a reexaminationproceeding. It is not to be used for makingamendments to the remainder of the specification orto the drawings.

37 CFR 1.530(d)(2) requires that:

(A) for each claim that is proposed to beamended by the amendment paper being submitted(the current amendment paper), the entire text of theclaim must be presented with appropriate markingsshowing the changes to the claim;

(B) for each proposed new claim which is addedin the reexamination by the amendment paper beingsubmitted (the current amendment paper), the entiretext of the proposed new claim must be presentedand it must be underlined throughout;

(C) a patent claim is canceled by a direction tocancel that claim, there is no need to present the textof the patent claim surrounded by brackets; and

(D) a proposed new claim (previously added inthe reexamination) is canceled by a direction tocancel that claim.

Examiner’s amendments made at the time when theNotice of Intent to Issue Reexamination Certificate(NIRC) is prepared also require the full text of anyclaim to be changed, with markings. The exceptionfor examiner’s amendment set forth in 37 CFR1.121(g) does not apply to examiner’s amendmentsin reexamination proceedings. The requirements of37 CFR 1.530(d)(2) apply regardless of whether theamendment is submitted on paper or on compactdisc (pursuant to 37 CFR 1.96 or 1.825).

In accordance with 37 CFR 1.530(e), eachamendment submitted must set forth the status of allpatent claims and all added claims as of the date ofthe submission. The status to be set forth is whetherthe claim is pending, or canceled. The failure tosubmit the claim status will generally result in anotification to the patent owner of an informalresponse (see MPEP § 2266.02) prior to finalrejection. Such an amendment submitted after finalrejection will not be entered.

Rev. 08.2017, January 20182200-81


Also in accordance with 37 CFR 1.530(e), eachclaim amendment must be accompanied by anexplanation of the support in the disclosure of thepatent for the amendment (i.e., support for thechanges made in the claim(s), support for anyinsertions and deletions). The failure to submit anexplanation will generally result in a notification tothe patent owner that the amendment prior to finalrejection is not completely responsive since thefailure to set forth the support in the disclosure goesto the merits of the case (see MPEP § 2266.01). Suchan amendment submitted after final rejection willnot be entered.

37 CFR 1.530(f) identifies the type of markingsrequired in the claim to be amended as underliningfor added material and single brackets for materialdeleted.

37 CFR 1.530(g) states that original patent claimsmay not be renumbered. A patent claim retains itsnumber even if it is canceled in the reexaminationproceeding, and the numbering of any added claimsmust begin after the last original patent claim.

C. The Drawings

With respect to amendment of the drawings in areexamination proceeding, see MPEP § 2250.01.

Form paragraph 22.12 may be used to advise patentowner of the proper manner of making amendmentsin an ex parte reexamination proceeding.

D. Form Paragraphs - Ex Parte Reexamination

¶ 22.12 Amendments Proposed in a Reexamination - 37CFR 1.530(d)-(j)

Patent owner is notified that any proposed amendment to thespecification and/or claims in this reexamination proceedingmust comply with 37 CFR 1.530(d)-(j), must be formallypresented pursuant to 37 CFR 1.52(a) and (b), and must containany fees required by 37 CFR 1.20(c).

Examiner Note:

This paragraph may be used in the order granting reexaminationand/or in the first Office action to advise patent owner of theproper manner of making amendments in a reexaminationproceeding.

¶ 22.13 Improper Amendment in an Ex ParteReexamination - 37 CFR 1.530(d)-(j)

The amendment filed [1] proposes amendments to [2] that donot comply with 37 CFR 1.530(d)-(j), which sets forth themanner of making amendments in reexamination proceedings.A supplemental paper correctly proposing amendments in thepresent ex parte reexamination proceeding is required.

A shortened statutory period for response to this letter is set toexpire [3] from the mailing date of this letter. If patent ownerfails to timely correct this informality, the amendment will beheld not to be an appropriate response, prosecution of the presentex parte reexamination proceeding will be terminated, and areexamination certificate will issue. 37 CFR 1.550(d).

Examiner Note:

1. This paragraph may be used for any 37 CFR 1.530(d)-(j)informality as to a proposed amendment submitted in areexamination proceeding prior to final rejection. After finalrejection, the amendment should not be entered and patent ownerinformed of such in an advisory Office action using Form PTOL467.

2. In bracket 3, if the reexamination was requested by a thirdparty requester, the examiner should insert “ONE MONTH orthirty days, whichever is longer”. If the reexamination wasrequested by the patent owner, if the reexamination was orderedunder 35 U.S.C. 257, or if it is a Director ordered reexamination,the examiner should insert “TWO MONTHS.”

The cover sheet to be used for mailing thenotification to the patent owner will be PTOL-473.

As an alternative to using form paragraph 22.13, itwould also be appropriate to use form PTOL-475.

Note that if the informal amendment is submittedafter final rejection, form paragraph 22.13 and formPTOL-475 should not be used. Rather an advisoryOffice action (using form PTOL-467) should beissued indicating that the amendment was notentered. In the “Other” section, it should beexplained that the amendment was not enteredbecause it does not comply with 37 CFR 1.530(d)-(j),which sets forth the manner of making amendmentsin reexamination proceedings.

E. Form Paragraphs - Inter Partes Reexamination

See MPEP § 2666.01 for the form paragraphs to usein inter partes reexamination proceedings, inadvising the patent owner as to the manner of makingamendments.

2200-82Rev. 08.2017, January 2018


II. ALL CHANGES ARE MADE VIS-A-VIS THEPATENT BEING REEXAMINED

When a reexamination certificate is printed, allunderlined matter is printed in italics and all bracketsare printed as they were inserted in the proceedingin order to thereby show exactly which additionsand deletions have been made in the patent via thereexamination proceeding. In accordance with 37CFR 1.530(i), all amendments to the patent beingreexamined must be made relative to the patentspecification in effect as of the date of the filing ofthe request for reexamination. The patentspecification includes the claims and drawings. Ifthere was a prior change to the patent (made via aconcluded post-patent proceeding, e.g., priorreexamination certificate, reissue of the patent,certificate of correction, PTAB trial certificate, etc.),the first amendment must be made relative to thepatent specification as changed by the priorproceeding or other mechanism for changing thepatent. All amendments subsequent to the firstamendment must also be made relative to the patentspecification in effect as of the date of the filing ofthe request for reexamination, and not relative to theprior amendment. In those rare instances where aconcluded post-patent proceeding changes the patentwhile the reexamination proceeding is pending,amendments will be made relative to the patent, asrevised by the concluded proceeding, and 37 CFR1.530(i) is waived to that extent.

III. AMENDMENT AFTER THE PATENT HASEXPIRED

Pursuant to 37 CFR 1.530(j), “[n]o amendment maybe proposed for entry in an expired patent.” Thus,if a patent expires during the pendency of areexamination proceeding for a patent, allamendments to the patent claims and all claimsadded during the proceeding are withdrawn. Thepatent owner should be notified of this in the nextOffice action. The Office action will hold theamendments to be improper, and state that allsubsequent reexamination will be on the basis of theunamended patent claims. This procedure isnecessary since no amendments will be incorporatedinto the patent by a certificate after the expiration ofthe patent.

37 CFR 1.530(j) further states that “[m]oreover, noamendment, other than the cancellation of claims,will be incorporated into the patent by a certificateissued after the expiration of the patent.”

Thus, at the time the NIRC is to be issued, theexaminer should ensure that all rejected and objectedto claims are canceled. The examiner should issuean examiner’s amendment canceling any such claimsnot already canceled.

The cancellation of the original patent claims is theonly “amendatory” change permitted in an expiredpatent.

IV. EXAMPLES

A substantial number of problems arise in the Officebecause of improper submission of proposedamendments in reexamination proceedings. Thefollowing examples are provided to assist in thepreparation of proper proposed amendments inreexamination proceedings. In regard to statusidentifiers, examiners may accept an amendmenteven if the status identifier used is not a statusidentifier recommended by 37 CFR 1.530(d)(2) or1.121(c).

(A) Original Patent Description or Patent ClaimAmended.

(1) Specification - submit a copy of the entireparagraph (of the specification of the patent) beingamended with underlining and bracketing. Thus, theamendment would be presented as follows:

Replace the paragraph beginning atcolumn 4, line 23 with the following:

Scanning [is] are controlled by clockswhich are, in turn, controlled from the displaytube line synchronization. The signals resultingfrom scanning the scope of the character aredelivered in parallel, then converted into serialmode through a shift register, wherein the shiftsignal frequency is controlled by a clock thatis controlled from the display tube linesynchronization.

(2) Claims - for changes to the patent claims,one must submit a copy of the entire patent claim

Rev. 08.2017, January 20182200-83


with the amendments shown by underlining andsingle bracketing. Thus, the amendment would bepresented as follows:

Amend claim 6 as follows:

Claim 6. (amended), The apparatus ofclaim [5] 1 wherein the [first] secondpiezoelectric element is parallel to the [second]third piezoelectric element.

If the dependency of any original patent claim is tobe changed by amendment, it is proper to make thatoriginal patent claim dependent upon a later filedhigher numbered claim.

(B) Cancellation of Entire Claim(s).

(1) Original patent claim canceled - inwriting, direct cancellation of the entire patent claim.

Cancel claim 6.

(2) Proposed new claim (previously addedin the reexamination) canceled - in writing, directcancellation of the entire claim.

Cancel claim 15.

(C) Re-presentation of Original Patent Claims(no underlining or bracketing).

Amend claim 4 to read as original patentclaim 4:

Claim 4. The apparatus of claim 1 whereinthe first piezoelectric element is perpendicularto the second piezoelectric element.

(D) Presentation of New Claims.

Each proposed new claim (i.e., a claim not found inthe patent, that is newly presented in thereexamination proceeding) should be presented withunderlining throughout the claim, including the claimnumber. The status identifier “(new)” may or maynot be underlined. Examiners may accept anamendment even if the claim number is notunderlined or the status identifier(s) used is not astatus identifier recommended by 37 CFR

1.530(d)(2) or 1.121(c).The following is an exampleof a presentation of a new claim:

Insert new claim 7 as follows:

Claim 7 (New). The apparatus of claim 5further comprising electrodes attaching to saidopposite faces of the second and thirdpiezoelectric elements.

Even though an original claim may have beencanceled, the numbering of the original claims doesnot change. Accordingly, any added claims arenumbered beginning with the next higher numberthan the number of claims in the original patent. Ifnew claims have been added to the reexaminationproceeding which are later canceled prior to theissuance of the reexamination certificate, theexaminer will renumber, at the time of preparing theNIRC for subsequent issuance of the certificate, anyremaining new claims in numerical order to followthe highest number of the claims in the originalpatent.

A claim number previously assigned to a new claimthat has been canceled should not be reassigned toa different new claim during the reexaminationproceeding. For example, if new claim 5 added in aprior amendment is canceled in a later amendment,a different new claim added in a later amendmentduring the reexamination proceeding would be claim6. Of course, at the time of preparing the NIRC,claim 6 would be renumbered for issue of thereexamination certificate as claim 5.

(E) Amendment of New Claims.

An amendment of a new claim (i.e., a claim notfound in the patent, that was previously presentedin the reexamination proceeding) must present theentire text of the new claim containing theamendatory material, and it must be underlinedthroughout the claim, including the claim number.The status identifier(s) may or may not beunderlined. Examiners may accept an amendmenteven if the claim number is not underlined or thestatus identifier(s) used is not a status identifierrecommended by 37 CFR 1.530(d)(2) or 1.121(c).The presentation cannot contain any bracketing orother indication of what was in the previous version

2200-84Rev. 08.2017, January 2018


of the claim. This is because all changes in thereexamination are made vis-a-vis the original patent,and not in comparison with any prior amendment.Although the presentation of the amended claim doesnot contain any indication of what is changed froma previous version of the claim, patent owner mustpoint out what is changed, in the “Remarks” portionof the amendment. Also, as per 37 CFR 1.530(e),each change made in the claim must be accompaniedby an explanation of the support in the disclosure ofthe patent (i.e., the reexamination specification) forthe change.

The following is one example to illustrate a properamendment of a new claim:

First Amendment (wherein claim 11 was firstpresented):

Claim 11 (New). A knife comprising ahandle portion and a notched blade portion.

In the Remarks (supplied on a separate page):

Status: The present application includespending claims 1-11, with claims 1 and 11being independent. With this amendment,applicant has added new independent claim 11.Support for this new claim is found in column4, lines 26-41, column 5, lines 3-18, andcolumn 6, lines 5-15.

Second Amendment (wherein claim 11 isamended):

Claim 11 (New, amended). A fishing knifecomprising a bone handle portion and a notchedblade portion.

In the Remarks (supplied on a separate page):

Status: The present application includespending claims 1-11, with claims 1 and 11being independent. With this amendment,applicant has amended new independent claim11 as described below.

Claim 11: Claim 11 is amended to add“fishing” before “knife” and “bone” before“handle.” Support for these changes is foundin column 4, lines 34-41 and column 6, lines5-8, respectively.

(F) Amendment of Original Patent Claims MoreThan Once.

The following example illustrates proper claimamendment of original patent claims inreexamination proceedings, where more than oneamendment to a claim is made:

(1) Patent claim.

Claim 1. A cutting means having ahandle portion and a blade portion.

(2) Proper first amendment format.

Claim 1. (amended), A [cutting means]knife having a bone handle portion and anotched blade portion.

(3) Proper second amendment format.

Claim 1. (twice amended), A [cuttingmeans] knife having a handle portion and aserrated blade portion.

Note that the second amendment must include (1)the changes previously presented in the firstamendment; i.e., [cutting means] knife, as well as(2) the new changes presented in the secondamendment; i.e., serrated.

The word bone was presented in the first amendmentand is now to be deleted in the second amendment.Thus, “bone” is NOT to be shown in brackets in thesecond amendment. Rather, the word “bone” issimply omitted from the claim, since “bone” neverappeared in the patent.

The word notched which was presented in the firstamendment is replaced by the word serrated in thesecond amendment. The word notched is beingdeleted in the second amendment and did not appearin the patent; accordingly, “notched” is not shownin any form in the claim. The word serrated is beingadded in the second amendment, and accordingly,“serrated” is added to the claim and is underlined.

It should be understood that in the secondamendment, the deletions of “notched” and “bone”are not changes from the original patent claim textand therefore, are not shown in the second

Rev. 08.2017, January 20182200-85


amendment. In both the first and the secondamendments, the entire claim is presented only withthe changes from the original patent text.

If the patent expires during an ex parte or interpartes reexamination proceeding and the patentclaims have been amended in that reexaminationproceeding, the Office will hold the amendments asbeing improper, and all subsequent reexaminationwill be on the basis of the unamended patent claims.This procedure is necessary since no amendmentswill be incorporated into the patent by certificateafter the expiration of the patent.

V. CROSS REFERENCES TO OTHER AREAS

(A) For clerical handling of amendments, seeMPEP § 2270 for ex parte reexaminationproceedings, and see MPEP § 2670 for inter partesreexamination proceedings.

(B) As to amendments in a merged proceeding,see MPEP § 2283 for an ex parte reexaminationmerged with another ex parte reexamination andMPEP § 2285 for an ex parte reexaminationmerged with a reissue application. If an inter partesreexamination proceeding is included in the merger,see MPEP § 2686.01 and § 2686.03.

(C) As to amendments in a pendingreexamination proceeding where a reexaminationcertificate has issued for the patent based on a priorconcluded reexamination, pursuant to MPEP § 2295,any amendment made in the pending reexaminationproceeding must be presented as if the changes madeto the patent text via the reexamination certificate(for the prior concluded reexamination) are a partof the original patent. All italicized text of thecertificate is considered as if the text was presentwithout italics in the original patent. Further, anytext of the reexamination certificate found in bracketsis considered as if it were never present in the patentat all. Thus, for making an amendment in the pendingreexamination, all italicized text of the reexaminationcertificate is presented in the amendment withoutitalics. Further, any text found in brackets in thereexamination certificate is omitted in theamendment.

(D) As to amendments in a pendingreexamination proceeding where a reissue patent hasbeen granted, pursuant to MPEP § 2285, subsectionII.A., an amendment in a reexamination of a reissued

patent is made the same way as in a reexaminationof a reexamined patent (i.e., as per MPEP § 2295).Thus, all italicized text of the reissue patent ispresented in the amendment (made in the pendingreexamination proceeding) without italics. Further,any text found in brackets in the reissue patent isomitted in the amendment (made in the pendingreexamination proceeding).

(E) As to amendments in a pendingreexamination proceeding where a PTAB trialcertificate has issued for the patent underreexamination, an amendment must be presented asif the changes made to the patent via the PTAB trialcertificate are a part of the original patent. Similarto amendments where a reexamination certificatehas issued, text added by the PTAB trial certificateshould be presented without any markings and textdeleted by the PTAB trial certificate should not bepresented at all. See paragraph (C) above.

(F) For handling a dependent claim inreexamination proceedings, see MPEP § 2260.01.

2250.01 Correction of Patent Drawings[R-07.2015]


*****



*****

2200-86Rev. 08.2017, January 2018


In the reexamination proceeding, the copy of thepatent drawings submitted pursuant to 37 CFR1.510(b)(4) will be used for reexamination purposes,provided no change whatsoever is made to thedrawings. If there is to be ANY change in thedrawings, a new sheet of drawings for each sheetchanged must be submitted. The change may NOTbe made on the original patent drawings.

37 CFR 1.530(d)(3) sets forth the manner ofmaking amendments to the drawings. Amendmentsto the original patent drawing sheets are notpermitted, and any change to the patent drawingsmust be in the form of a new sheet of drawings foreach drawing sheet that is changed. Any amendedfigure(s) must be identified as “Amended” and anyadded figure(s) must be identified as “New.” In theevent a figure is canceled, the figure must besurrounded by brackets and identified as “Canceled.”

Where the patent owner wishes to change/amendthe drawings, the patent owner should submit asketch in permanent ink showing proposedchange(s)/amendment(s), for approval by theexaminer. The submitted sketch should be presentedas a separate paper, which is clearly labeled as“Annotated Sheet,” and it will be made part of therecord. Once the proposed changes are approved,sheets of substitute or new drawings must besubmitted for each drawing sheet that is to bechanged/amended. If a new drawing sheet containsmultiple figures, each figure must be marked as“amended” or “new,” if applicable, to comply withthe requirements of 37 CFR 1.530(d)(3). Forexample, if the new drawing sheet contains Figures1-3 but only Figure 2 is amended, the new drawingsheet must identify Figure 2 as “Amended.” It is notsufficient to generally indicate that the entire sheetis amended by, e.g., placing the term “Amended” inthe header of the drawing sheet.

The new sheets of drawings must be entered into therecord in the reexamination file prior to thepreparation of a Notice of Intent to Issue Ex ParteReexamination Certificate (NIRC). If a proposeddrawing correction has been approved but the newsheets of drawings have not been filed, and theproceeding is otherwise in condition for terminationof the prosecution by means of a NIRC, an exparte Quayle Office action should be prepared -

setting an appropriate shortened statutory time period(SSP) for the filing of the new sheets of drawing. Ifthe reexamination was requested by a third partyrequester, the examiner should set an SSP of ONEMONTH or thirty days, whichever is longer. If thereexamination 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, theexaminer should set an SSP of TWO MONTHS. Ifthe new sheets of drawings are not timely filed inresponse to the Quayle action, the reexaminationcertificate will be issued with drawings that do notreflect the changes/amendments that were proposedby the patent owner.

2250.02 Correction of Inventorship[R-07.2015]


*****

(l) Correction of inventorship in an ex parte or inter partesreexamination proceeding.

(1) When it appears in a patent being reexamined thatthe correct inventor or inventors were not named, the Directormay, on petition of all the parties set forth in § 1.324(b)(1) and(b)(2), including the assignees, and satisfactory proof of thefacts and payment of the fee set forth in § 1.20(b), or on orderof a court before which such matter is called in question, includein the reexamination certificate to be issued under § 1.570 or§ 1.997 an amendment naming only the actual inventor orinventors. The petition must be submitted as part of thereexamination proceeding and must satisfy the requirements of§ 1.324.

(2) Notwithstanding paragraph (I)(1) of this section, ifa petition to correct inventorship satisfying the requirements of§ 1.324 is filed in a reexamination proceeding, and thereexamination proceeding is concluded other than by areexamination certificate under § 1.570 or § 1.997, a certificateof correction indicating the change of inventorship stated in thepetition will be issued upon request by the patentee.

Where the inventorship of a patent being reexaminedis to be corrected, a petition for correction ofinventorship which complies with 37 CFR 1.324must be submitted during the prosecution of thereexamination proceeding. See 37 CFR 1.530(l)(1).If the petition under 37 CFR 1.324 is granted, acertificate of correction indicating the change ofinventorship will not be issued, because thereexamination certificate that will ultimately issuewill contain the appropriate change of inventorship

Rev. 08.2017, January 20182200-87


information. The certificate of correction is in effectmerged with the reexamination certificate.

In some instances, the reexamination proceedingconcludes but does not result in a reexaminationcertificate under 37 CFR 1.570 or 1.997, e.g.,reexamination is vacated, or the order forreexamination is denied. In those instances, patentowner may, after the conclusion of the reexaminationproceeding, request that the inventorship be correctedby a certificate of correction indicating the changeof inventorship. See 37 CFR 1.530(l)(2).Alternatively, the failure to name the correctinventive entity is an error in the patent which iscorrectable by reissue under 35 U.S.C. 251. SeeMPEP § 1412.04 for a discussion of when correctionof inventorship by reissue is appropriate.

2250.03 Fees for Adding Claims and forFiling a Petition [R-07.2015]

I. FEES FOR ADDING CLAIMS

Excess claims fees are applicable to excess claimsproposed to be added to a patent by their presentationduring a reexamination proceeding. See 37 CFR1.20(c)(3) and (c)(4). Under “former” 35 U.S.C. 41,excess claims fees were included as part of the“application” filing fee under 35 U.S.C. 41(a)(1),and thus did not apply during reexaminationproceedings. The Consolidated Appropriations Actdoes not include the excess claims as part of the“application” filing fee under 35 U.S.C. 41(a)(1),but separately provides for excess claims fees in 35U.S.C. 41(a)(2) (as being in addition to the filing feein 35 U.S.C. 41(a)(1)). 35 U.S.C. 41(a)(2) providesthat an excess claims fee is due “on filing or onpresentation at any other time” (e.g., during areexamination proceeding) of an independent claimin excess of three or of a claim (whether independentor dependent) in excess of twenty.

37 CFR 1.20 was amended, effective December 8,2004, to provide for excess claims fees in areexamination proceeding. The excess claims feesspecified in 37 CFR 1.20(c) apply to all patents,whenever granted. The fees must be submitted forany excess claims presented in a reexaminationproceeding on or after December 8, 2004 (no excessclaims fee was due under 35 U.S.C. 41 for any claim

presented during a reexamination proceeding beforeDecember 8, 2004). Even though a reexaminationproceeding was commenced prior to December 8,2004, the excess claims fees are due for anyamendment filed on or after December 8, 2004.

When a patent owner presents an amendment to theclaims (on or after December 8, 2004) during an exparte reexamination proceeding, or upon filing ofan ex parte reexamination request under 35 U.S.C.302 (on or after December 8, 2004), excess claimsfees may be applicable. If the amendment is limitedto revising the existing claims, i.e., it does notprovide any new claim, there is no claim fee. Theexcess claims fees apply only to the submission ofnew, i.e., “excess” claims.

The excess claims fees specified in 37 CFR 1.20(c)apply to excess claims that result from anamendment as follows:

(A) The fee designated in 37 CFR 1.20(c)(3) asthe independent claims fee must be paid for eachindependent claim in excess of three and also inexcess of the number of independent claims in thepatent being reexamined. The amendment mustincrease the number of independent claims to bemore than both of these limits, in order for the“independent excess claims fee” to apply;

(B) The fee designated in 37 CFR 1.20(c)(4) asthe total claims fee must be paid for each claim(whether independent or dependent) in excess oftwenty and also in excess of the number of claimsin the patent being reexamined. The amendmentmust increase the total number of claims to be morethan both of these limits, in order for the “totalexcess claims fee” to apply.

The following examples illustrate the application ofthe excess claims fees in a patent (non-small entity)to be reexamined containing six independent claimsand thirty total claims:

(A) No excess claims fee is due if the patentowner cancels ten claims, two of which areindependent, and adds ten claims, two of which areindependent.

(B) The 37 CFR 1.20(c)(3) excess independentclaims fee for a seventh independent claim is due ifthe patent owner cancels ten claims, two of which

2200-88Rev. 08.2017, January 2018


are independent, and adds ten claims, three of whichare independent.

(C) The 37 CFR 1.20(c)(4) excess total claimsfee for a thirty-first claim is due if the patent ownercancels ten claims, two of which are independent,and adds eleven claims, two of which areindependent.

(D) The 37 CFR 1.20(c)(3) excess independentclaims fee for a seventh independent claim and the37 CFR 1.20(c)(4) excess total claims fee for athirty-first claim are due if the patent owner cancelsten claims, two of which are independent, and addseleven claims, three of which are independent.

A claim that has been disclaimed under 35 U.S.C.253 and 37 CFR 1.321(a) as of the date of filing ofthe request for reexamination is not considered tobe a claim in the patent under reexamination forpurposes of excess claims fee calculations. The sameapplies to a claim canceled via a prior reexaminationcertificate, reissue patent, or certificate of correction.

If, for a response to a non-final Office action, theexcess claims fees required by 37 CFR 1.20(c)(3)and (c)(4) are not paid with the presentation of theexcess claims, a notice of fee deficiency will beissued as a Notice of Defective Paper In Ex Parte Reexamination. In third party requestedreexaminations, a one-month time period will be setin the form PTOL-475 for correction of the defect,i.e., the fee deficiency. In patent owner requestedreexaminations (including reexaminations orderedunder 35 U.S.C. 257) or Director orderedreexaminations, a two-month time period will be setin form PTO-2311 for correction of the defect, i.e.,the fee deficiency. An extension of time to correctthe fee deficiency may be requested under 37 CFR1.550(c). If the unpaid excess claims fees requiredby 37 CFR 1.20(c)(3) and (c)(4) are not paid withinthe time period set for response to the Notice, theprosecution of the reexamination proceeding will beterminated under 37 CFR 1.550(e), to effect the“abandonment” set forth in 37 CFR 1.20(c)(5). Ifthe excess claims fees required by 37 CFR 1.20(c)(3)and (c)(4) are not paid with the presentation of theexcess claims in a response to a final Office action,the examiner should notify the owner of the feedeficiency in the advisory action.

II. FEES FOR FILING A PETITION INREEXAMINATION

Pursuant to 37 CFR 1.550(i), a petition in an exparte reexamination proceeding must beaccompanied by the fee set forth in 37 CFR1.20(c)(6), except for petitions under 37 CFR1.530(c) to extend the period for response by a patentowner, petitions under 37 CFR 1.550(e) to accept adelayed response by a patent owner, petitions under37 CFR 1.78 to accept an unintentionally delayedbenefit claim, and petitions under 37 CFR 1.530(l)for correction of inventorship in a reexaminationproceeding.

Pursuant to 37 CFR 1.20(c)(6), the fee for filing apetition in an ex parte reexamination proceeding,except for those specifically enumerated in 37 CFR1.550(i) is:

$ 1,940 for a large entity.

$ 970 for a small entity.

$ 485 for a micro entity (available for patent ownersonly).

2251 Reply by Third Party Requester[R-08.2012]

37 CFR 1.535 Reply by third party requester in ex partereexamination.

A reply to the patent owner’s statement under § 1.530 may befiled by the ex parte reexamination requester within two monthsfrom the date of service of the patent owner’s statement. Anyreply by the ex parte requester must be served upon the patentowner in accordance with § 1.248. If the patent owner does notfile a statement under § 1.530, no reply or other submissionfrom the ex parte reexamination requester will be considered.

If the patent owner files a statement in a timelymanner, the third party requester is given a periodof 2 months from the date of service to reply. Sincethe statute, 35 U.S.C. 304, provides this time period,there will be no extensions of time granted.

The reply need not be limited to the issues raised inthe statement. The reply may include additional priorart patents and printed publications and may raiseany issue appropriate for reexamination.

Rev. 08.2017, January 20182200-89


If no statement is filed by the patent owner, no replyis permitted from the third party requester.

The third party requester must serve a copy of thereply on the patent owner. See MPEP § 2266.03 forfurther discussion as to the third party requesterproviding service on the patent owner.

The third party requester is not permitted to file anyfurther papers after his or her reply to the patentowner’s statement. Any further papers will not beconsidered and will be returned to the requester. Thepatent owner cannot file papers on behalf of the thirdparty requester and thereby circumvent the rules.

2252 Consideration of Statement and Reply[R-11.2013 ]

37 CFR 1.540 Consideration of responses in ex partereexamination.

The failure to timely file or serve the documents set forth in§ 1.530 or in § 1.535 may result in their being refusedconsideration. No submissions other than the statement pursuantto § 1.530 and the reply by the ex parte reexamination requesterpursuant to § 1.535 will be considered prior to examination.

Although 37 CFR 1.540 would appear to bediscretionary in stating that late responses “mayresult in their being refused consideration,” patentowners and requesters can expect consideration tobe refused if the statement and/or reply is not timelyfiled. 37 CFR 1.540 restricts the number and kindof submissions to be considered prior to examinationto those expressly provided for in 37 CFR 1.530 and37 CFR 1.535. Untimely submissions will ordinarilynot be considered. Untimely submissions, other thanuntimely papers filed by the patent owner after theperiod set for response, will not be placed of recordin the reexamination file but will be returned to thesender.

Any paper for which proof of service is required,which is filed without proof of service, may bedenied consideration. Where no proof of service isincluded, inquiry should be made of the sender bythe Central Reexamination Unit as to whether servicewas in fact made. If no service was made, the paperis placed in the reexamination file but is notconsidered. See MPEP § 2266.03 and § 2267.

2253 Consideration by Examiner [R-07.2015]

Once reexamination is ordered under 35 U.S.C. 304,any submissions properly filed and served inaccordance with 37 CFR 1.530 and 37 CFR 1.535will be considered by the examiner when preparingthe first Office action.

With respect to consideration of any proposedamendments to the specification, including claims,made by the patent owner, the examiner will beguided by the provisions of 37 CFR 1.530(d)-(j).With respect to consideration of the patent owner’sstatement, the examiner will be guided by 37 CFR1.530(c).

As to consideration of a reply by a third partyrequester, the examiner will be guided by 37 CFR1.535. If the requester’s reply to the patent owner’sstatement raises issues not previously presented,such issues will be treated by the examiner in theOffice action if they are within the scope ofreexamination. However, if an issue raised by thethird party requester in the reply is not within thescope of reexamination, it should be treated pursuantto 37 CFR 1.552(c).

For handling of new matter, see MPEP § 2270.

2254 Conduct of Ex Parte ReexaminationProceedings [R-07.2015]

35 U.S.C. 305 Conduct of reexamination proceedings.

After the times for filing the statement and reply provided forby section 304 have expired, reexamination will be conductedaccording to the procedures established for initial examinationunder the provisions of sections 132 and 133. In anyreexamination proceeding under this chapter, the patent ownerwill be permitted to propose any amendment to his patent anda new claim or claims thereto, in order to distinguish theinvention as claimed from the prior art cited under the provisionsof section 301, or in response to a decision adverse to thepatentability of a claim of a patent. No proposed amended ornew claim enlarging the scope of a claim of the patent will bepermitted in a reexamination proceeding under this chapter. Allreexamination proceedings under this section, including anyappeal to the Patent Trial and Appeal Board, will be conductedwith special dispatch within the Office.

37 CFR 1.550 Conduct of ex parte reexaminationproceedings.

(a) All ex parte reexamination proceedings, including anyappeals to the Board of Patent Appeals and Interferences, will

2200-90Rev. 08.2017, January 2018


be conducted with special dispatch within the Office. Afterissuance of the ex parte reexamination order and expiration ofthe time for submitting any responses, the examination will beconducted in accordance with §§ 1.104 through 1.116 and willresult in the issuance of an ex parte reexamination certificateunder § 1.570.

(b) The patent owner in an ex parte reexaminationproceeding will be given at least thirty days to respond to anyOffice action. In response to any rejection, such response mayinclude further statements and/or proposed amendments or newclaims to place the patent in a condition where all claims, ifamended as proposed, would be patentable.

(c) The time for taking any action by a patent owner in an ex parte reexamination proceeding may be extended as providedin this paragraph.

(1) Any request for such an extension must specify therequested period of extension and be accompanied by the petitionfee set forth in § 1.17(g).

(2) Any request for an extension in a third partyrequested ex parte reexamination must be filed on or beforethe day on which action by the patent owner is due, and the merefiling of such a request for extension will not effect theextension. A request for an extension in a third party requested ex parte reexamination will not be granted in the absence ofsufficient cause or for more than a reasonable time.

(3) Any request for an extension in a patent ownerrequested or Director ordered ex parte reexamination for up totwo months from the time period set in the Office action mustbe filed no later than two months from the expiration of the timeperiod set in the Office action. A request for an extension in apatent owner requested or Director ordered ex partereexamination for more than two months from the time periodset in the Office action must be filed on or before the day onwhich action by the patent owner is due, and the mere filing ofa request for an extension for more than two months from thetime period set in the Office action will not effect the extension.The time for taking action in a patent owner requested orDirector ordered ex parte reexamination will not be extendedfor more than two months from the time period set in the Officeaction in the absence of sufficient cause or for more than areasonable time.

(4) The reply or other action must in any event be filedprior to the expiration of the period of extension, but in nosituation may a reply or other action be filed later than themaximum time period set by statute.

(5) See § 90.3(c) of this title for extensions of time forfiling a notice of appeal to the U.S. Court of Appeals for theFederal Circuit or for commencing a civil action.

(d) If the patent owner fails to file a timely and appropriateresponse to any Office action or any written statement of aninterview required under § 1.560(b), the prosecution in the exparte reexamination proceeding will be a terminatedprosecution, and the Director will proceed to issue and publisha certificate concluding the reexamination proceeding under§ 1.570 in accordance with the last action of the Office.

(e) If a response by the patent owner is not timely filed inthe Office, a petition may be filed pursuant to § 1.137 to revive

a reexamination prosecution terminated under paragraph (d) ofthis section if the delay in response was unintentional.

(f) The reexamination requester will be sent copies of Officeactions issued during the ex parte reexamination proceeding.After filing of a request for ex parte reexamination by a thirdparty requester, any document filed by either the patent owneror the third party requester must be served on the other party inthe reexamination proceeding in the manner provided by § 1.248.The document must reflect service or the document may berefused consideration by the Office.

(g) The active participation of the ex parte reexaminationrequester ends with the reply pursuant to § 1.535, and no furthersubmissions on behalf of the reexamination requester will beacknowledged or considered. Further, no submissions on behalfof any third parties will be acknowledged or considered unlesssuch submissions are:

(1) in accordance with § 1.510 or § 1.535; or

(2) entered in the patent file prior to the date of theorder for ex parte reexamination pursuant to § 1.525.

(h) Submissions by third parties, filed after the date of theorder for ex parte reexamination pursuant to § 1.525, must meetthe requirements of and will be treated in accordance with§ 1.501(a).

(i) A petition in an ex parte reexamination proceeding mustbe accompanied by the fee set forth in § 1.20(c)(6), except forpetitions under paragraph (c) of this section to extend the periodfor response by a patent owner, petitions under paragraph (e)of this section to accept a delayed response by a patent owner,petitions under § 1.78 to accept an unintentionally delayedbenefit claim, and petitions under § 1.530(l) for correction ofinventorship in a reexamination proceeding.

Once ex parte reexamination is ordered pursuant to35 U.S.C. 304 and the times for submitting anyresponses to the order have expired, no further activeparticipation by a third party reexamination requesteris allowed, and no third party submissions will beacknowledged or considered unless they are inaccordance with 37 CFR 1.510. The reexaminationproceedings will be ex parte, even if ordered basedon a request filed by a third party, because this wasthe intention of the legislation. Ex parte proceedingspreclude the introduction of arguments and issuesby the third party requester which are not within theintent of 35 U.S.C. 305 (“reexamination will beconducted according to the procedures establishedfor initial examination under the provisions ofsections 132 and 133”).

The patent owner may not file papers on behalf ofthe requester and thereby circumvent the intent ofthe ex parte reexamination legislation and the rules.The U.S. Court of Appeals for the Federal Circuitheld in Emerson Elec. Co. v. Davoil, Inc., 88 F.3d

Rev. 08.2017, January 20182200-91


1051, 39 USPQ2d 1474 (Fed. Cir. 1996) that afederal district court does not have the authority toorder a patent owner to file papers prepared by athird party in addition to the patent owner’s ownsubmission in a patent reexamination proceeding.Such papers prepared by the third party and filed bythe patent owner will not be entered, and the entiresubmission will be returned to the patent owner asan inappropriate response. See MPEP § 2266 and§ 2267.

The examination will be conducted in accordancewith 37 CFR 1.104, 1.105, 1.110-1.113, and 1.116(35 U.S.C. 132 and 133) and will result in theissuance of a reexamination certificate under 37 CFR1.570. The proceeding shall be conducted withspecial dispatch within the Office pursuant to 35U.S.C. 305, last sentence. A full search will notroutinely be made by the examiner. The third partyreexamination requester will be sent copies of Officeactions and the patent owner must serve responseson the requester. Citations submitted in the patentfile prior to issuance of an order for reexaminationwill be considered by the examiner during thereexamination. Reexamination will proceed even ifthe copy of the order sent to the patent owner isreturned undelivered. The notice under 37 CFR1.11(c) is constructive notice to the patent ownerand lack of response from the patent owner will notdelay reexamination. See MPEP § 2230.

2255 Who Reexamines [R-07.2015]

The examination will ordinarily be conducted by thesame patent examiner who made the decision onwhether the reexamination request should be granted.See MPEP § 2236.

However, if a petition under 37 CFR 1.515(c) isgranted after an examiner's determination that foundthe request did not raise any SNQ, the reexaminationwill generally be conducted by another examiner.See MPEP § 2248.

2256 Prior Art Patents and PrintedPublications Reviewed by Examiner inReexamination [R-07.2015]

Typically, the primary source of prior art will be thepatents and printed publications cited in the requestfor ex parte reexamination.

Subject to the discussion provided below in thissection, the examiner must also consider patents andprinted publications:

(A) cited by another reexamination requesterunder 37 CFR 1.510 or 37 CFR 1.915;

(B) cited in a patent owner’s statement under37 CFR 1.530 or a requester’s reply under 37 CFR1.535 if they comply with 37 CFR 1.98;

(C) cited by the patent owner under a duty ofdisclosure (37 CFR 1.555) in compliance with 37CFR 1.98;

(D) discovered by the examiner in searching;

(E) of record in the patent file from earlierexamination; and

(F) of record in the patent file from any 37 CFR1.501 submission prior to date of an order if itcomplies with 37 CFR 1.98.

Where patents, publications, and other suchdocuments are submitted by a party (patent owneror requester) in compliance with the requirementsof the rules, the requisite degree of consideration tobe given to such information will be normally limitedby the degree to which the party filing theinformation citation has explained the content andrelevance of the document. The initials of theexaminer placed adjacent to the citations on the formPTO/SB/08A and 08B or its equivalent, without anindication to the contrary in the record, do not signifythat the document has been considered by theexaminer any further than to the extent noted above.

As to (E) above, it is pointed out that the degree ofconsideration of information from the patent file andits parent files is dependent on the availability of theinformation. Thus, for example, as to a referenceother than a U.S. patent and U.S. patent publicationthat is not scanned into the Image File Wrapper(IFW) what was said about that reference in the

2200-92Rev. 08.2017, January 2018


patent’s record is the full extent of consideration,unless otherwise indicated, or unless partiesappropriately supplied a copy.

As to (B), (C) and (F) above, 37 CFR 1.98(a)(2)requires a legible copy of:

(1) each foreign patent;

(2) each publication or that portion which causedit to be listed, other than U.S. patents and U.S. patentapplication publications unless required by theOffice;

(3) for each cited pending unpublished U.S.application, the application specification includingthe claims, and any drawing of the application, orthat portion of the application which caused it to belisted including any claims directed to that portion;

(4) all other information or that portion whichcaused it to be listed.

It is not required nor is it permitted that partiessubmit copies of copending reexaminationproceedings and applications (which copies can bemistaken for a new request/filing); rather, submittersmay provide the application/proceeding number andits status. A submission that is not permitted entrywill be returned, expunged, or discarded at the solediscretion of the Office.

The exception to the requirement for reference copiesin37 CFR 1.98(d)(1) does not apply to reexaminationproceedings since a reexamination proceeding doesnot receive 35 U.S.C. 120 benefit from the patent.

AFTER THE NOTICE OF INTENT TO ISSUE EXPARTE REEXAMINATION CERTIFICATE (NIRC):

Once the NIRC has been mailed, the reexaminationproceeding is forwarded for publication of thereexamination certificate. Thus, when the patentowner provides a submission of patents and printedpublications or other information described in 37CFR 1.98(a) after the NIRC has been mailed, theproceeding has entered the publication process forprinting the reexamination certificate. Toautomatically delay prosecution by pulling theproceeding from that process when such asubmission has been filed, without more, would be

contrary to the Office’s statutory mandate for“special dispatch”, as set forth in 35 U.S.C. 305.

For this reason, the submission must be accompaniedby (A) a factual accounting providing a sufficientexplanation of why the information submitted couldnot have been submitted earlier, (B) an unequivocalstatement that one or more claims are unpatentable,and (C) an amendment to such claim or claims, andan explanation as to how the amendment causes suchclaim or claims to be patentable. This must beprovided via a petition under 37 CFR 1.182 (withthe petition fee) for entry and consideration of theinformation submitted after NIRC. Theserequirements are necessary to provide a basis forinterrupting the proceeding after NIRC, in order forthe Office to comply with its statutory mandate for“special dispatch”.

These requirements are similar to the requirementsto withdraw an application from issue as set forth in37 CFR 1.313(c)(1). The printing cycle for anapplication occurs after the payment of the issue fee(there is no issue fee in reexamination), and thus, inorder to withdraw an application from issue afterpayment of the issue fee, the requirements of 37 CFR1.313(c) must be met. Based on the statutoryrequirement for “special dispatch,” the requirementsfor withdrawal of a reexamination proceeding fromissue, i.e., its printing cycle, after NIRC are at leastas burdensome as those set forth in 37 CFR 1.313(b)and (c). Accordingly, where a submission of patentsand printed publications or other informationdescribed in 37 CFR 1.98(a) is made after NIRC,the patent owner must provide an unequivocalstatement as to why the art submitted makes at leastone claim unpatentable, an amendment to such claimor claims, and an explanation as to how theamendment causes such claim or claims to bepatentable. This is in addition to the above-discussedfactual accounting providing a sufficient explanationof why the information submitted could not havebeen submitted earlier (see item (A) above).

No consideration will be given to a third partyrequester submission of patents and printedpublications, or other information, that is filed in thereexamination proceeding unless it is part of therequest for reexamination or the requester’s replyunder 37 CFR 1.535. See 37 CFR 1.540.

Rev. 08.2017, January 20182200-93


2257 Listing of Prior Art [R-07.2015]

The reexamination request must provide a listing ofthe patents and printed publications (discussed inthe request) as provided for in 37 CFR 1.98. SeeMPEP § 2214. The examiner must list on a formPTO-892, if not already listed on a formPTO/SB/08A or 08B, or PTO/SB/42 (or on a formhaving a format equivalent to one of these forms),all prior art patents or printed publications whichhave been cited in the decision on the request,applied in making rejections or cited as beingpertinent during the reexamination proceedings. Suchprior art patents or printed publications may havecome to the examiner’s attention because:

(A) they were of record in the patent file due toa prior art submission under 37 CFR 1.501 whichwas received prior to the date of the order;

(B) they were of record in the patent file as resultof earlier examination proceedings; or

(C) they were discovered by the examiner duringa prior art search.

All citations listed on form PTO-892, and allcitations not lined-through on any form PTO/SB/08Aor 08B, or PTO/SB/42 (or on a form having a formatequivalent to one of these forms), will be the list ofprior art documents considered in the reexaminationproceeding. A notice will be printed on thereexamination certificate to state that the list of citedprior art documents will be available via PAIR bythe reexamination control number.

A submission of patents and/or publications isentitled to entry and citation in the reexaminationcertificate (that will be issued) when it complies with37 CFR 1.98 and is submitted:

(A) by the patent owner in the statement under37 CFR 1.530;

(B) by the reexamination requester in the replyunder 37 CFR 1.535;

(C) prior to the order of reexamination under37 CFR 1.501 by any party; and/or

(D) by the patent owner under the duty ofdisclosure requirements of 37 CFR 1.555.

2258 Scope of Ex Parte Reexamination[R-08.2017]

37 CFR 1.552 Scope of reexamination in ex partereexamination proceedings.

(a) Claims in an ex parte reexamination proceeding willbe examined on the basis of patents or printed publications and,with respect to subject matter added or deleted in thereexamination proceeding, on the basis of the requirements of35 U.S.C. 112.

(b) Claims in an ex parte reexamination proceeding willnot be permitted to enlarge the scope of the claims of the patent.

(c) Issues other than those indicated in paragraphs (a) and(b) of this section will not be resolved in a reexaminationproceeding. If such issues are raised by the patent owner or thirdparty requester during a reexamination proceeding, the existenceof such issues will be noted by the examiner in the next Officeaction, in which case the patent owner may consider theadvisability of filing a reissue application to have such issuesconsidered and resolved.

(d) Any statement of the patent owner and anyaccompanying information submitted pursuant to § 1.501(a)(2)which is of record in the patent being reexamined (whichincludes any reexamination files for the patent) may be usedafter a reexamination proceeding has been ordered to determinethe proper meaning of a patent claim when applying patents orprinted publications.

37 CFR 1.625 Conclusion of supplemental examination;publication of supplemental examination certificate;procedure after conclusion.

*****

(d) Any ex parte reexamination ordered under 35 U.S.C.257 will be conducted in accordance with §§ 1.530 through1.570, which govern ex parte reexamination, except that:

(1) The patent owner will not have the right to file astatement pursuant to § 1.530, and the order will not set a timeperiod within which to file such a statement;

(2) Reexamination of any claim of the patent may beconducted on the basis of any item of information as set forthin § 1.605, and is not limited to patents and printed publicationsor to subject matter that has been added or deleted during thereexamination proceeding, notwithstanding § 1.552(a);

(3) Issues in addition to those raised by patents andprinted publications, and by subject matter added or deletedduring a reexamination proceeding, may be considered andresolved, notwithstanding § 1.552(c); and

(4) Information material to patentability will be definedby § 1.56(b), notwithstanding § 1.555(b).

A reexamination proceeding ordered under 35 U.S.C.304 provides a complete reexamination of the patentclaims on the basis of prior art patents and printedpublications. Double patenting issues may also beconsidered during reexamination. See subsectionI.D. below. Issues relating to 35 U.S.C. 112 are

2200-94Rev. 08.2017, January 2018


addressed only with respect to new claims oramendatory subject matter in the specification,claims or drawings. Any new or amended claims areexamined to ensure that the scope of the originalpatent claims is not enlarged, i.e., broadened. See35 U.S.C. 305.

In a reexamination proceeding ordered under 35U.S.C. 257, however, reexamination is not limitedto patents and printed publications. Reexaminationordered under 35 U.S.C. 257 may involve anyinformation which is determined by the Office toraise a substantial new question of patentability ina supplemental examination proceeding. Theinformation may include, for example, not only apatent or a journal article, but also a sales invoice,or a transcript of an audio or video recording. Areexamination proceeding ordered under 35 U.S.C.257 may involve issues relating to 35 U.S.C. 112which are not limited to matter that has been addedor deleted during reexamination. Issues under 35U.S.C. 112 in a reexamination ordered under 35U.S.C. 257 may also involve the original subjectmatter of the patent under reexamination, includingthe original specification, claims, and drawings.Reexamination ordered under 35 U.S.C. 257 mayinvolve any ground of patentability, such as, forexample, patent eligible subject matter, anticipation,public use or sale, obviousness, written description,enablement, indefiniteness, and double-patenting.See MPEP §§ 2801 and 2809.01, subsection I.

I. PRIOR ART PATENTS OR PRINTEDPUBLICATIONS, AND DOUBLE PATENTING

Rejections on prior art in reexamination proceedingsordered under 35 U.S.C. 304 may only be made onthe basis of prior art patents or printed publications.The prior art regime under which the application forthe patent was examined (the first-inventor-to-fileprior art regime, or the first-to-invent prior artregime) will generally be applied in reexaminationof the patent. One exception would be where anamended or new claim having an effective filingdate for the new claim on or after March 16, 2013,is presented during the reexamination of a patentthat was subject to the first-to-invent prior art regime,in which case the reexamination would be conductedunder the first-inventor-to-file prior art regime.Similarly if a benefit claim to a prior application

with a filing date before March 16, 2013 is madeduring the reexamination , then reexamination wouldbe conducted under the first-to-invent prior artregime even if the application that matured into thepatent was examined under the first-inventor-to-fileprior art regime when the following conditions aremet. Specifically, the written description of the priorapplication must provide adequate written supportunder 35 U.S.C. 112 for the following: (1) all of thepatent claims; (2) all claims presented at any timeduring the prosecution of the application thatmatured into the patent under reexamination; and(3) all claims presented at any time during theprosecution of any application to which the benefitwas sought by the application that matured into thepatent under reexamination.

With respect to the first-inventor-to-file prior artregime, prior art rejections may be based upon theprovisions of 35 U.S.C. 102 as it is in effect on andafter March 16, 2013, applicable to prior art patentsand printed publications. Thus “A person shall beentitled to a patent unless”:

(1) “the claimed invention was patented” or“described in a printed publication” “before theeffective filing date of the claimed invention”;or(2) “the claimed invention was described in apatent issued under section 151, or in anapplication for patent published or deemedpublished under section 122(b), in which thepatent or application, as the case may be, namesanother inventor and was effectively filedbefore the effective filing date of the claimedinvention.”

These provisions are subject to the exceptions of 35U.S.C. 102(b), and effective filing dates aredetermined pursuant to 35 U.S.C. 102(d). For furtherinformation as to the first-inventor-to-file prior artregime, see MPEP Chapter 700.

With respect to the first-to-invent prior art regime,prior art rejections may be based upon the followingportions of prior 35 U.S.C. 102 (in effect prior toMarch 16, 2013):

Rev. 08.2017, January 20182200-95


“(a) . . . patented or described in a printedpublication in this or a foreign country, beforethe invention thereof by the applicant for patent,or”“(b) the invention was patented or described ina printed publication in this or a foreign country. . . more than one year prior to the date of theapplication for patent in the United States, or”

*****“(d) the invention was first patented or causedto be patented, or was the subject of aninventor’s certificate, by the applicant or hislegal representatives or assigns in a foreigncountry prior to the date of the application forpatent in this country on an application forpatent or inventor’s certificate filed more thantwelve months before the filing of theapplication in the United States, or”

(e) the invention was described in — (1)an application for patent, published undersection 122(b), by another filed in the UnitedStates before the invention by the applicant forpatent or (2) a patent granted on an applicationfor patent by another filed in the United Statesbefore the invention by the applicant for patent,except that an international application filedunder the treaty defined in section 351(a) shallhave the effects for the purposes of thissubsection of an application filed in the UnitedStates only if the international applicationdesignated the United States and was publishedunder Article 21(2) of such treaty in the Englishlanguage; or”

*****“(g)... (2) before such person’s inventionthereof, the invention was made in this countryby another inventor who had not abandoned,suppressed, or concealed it. In determiningpriority of invention under this subsection, thereshall be considered not only the respective datesof conception and reduction to practice of theinvention, but also the reasonable diligence ofone who was first to conceive and last to reduceto practice, from a time prior to conception bythe other.”

All citations to 35 U.S.C. discussing thefirst-to-invent prior art regime are to the relevantstatute in effect on March 15, 2013.

Typically, substantial new questions of patentabilityand rejections in a reexamination proceeding arebased on “prior art” patents and publications.However, there are exceptions, even forreexaminations ordered under 35 U.S.C. 304. Forexample, in In re Lonardo, 119 F.3d 960, 43USPQ2d 1262 (Fed. Cir. 1997), the Federal Circuitupheld a nonstatutory double patenting rejection inwhich the patent upon which the rejection was basedand the patent under reexamination shared the sameeffective filing date. See also the discussion as todouble patenting in subsection I.D. below.Analogously, for reexamination proceedingsexamined under the first-to-invent prior art regime,a 35 U.S.C. 102(g)(2) rejection may be asserted ina reexamination proceeding based on the examplesillustrated below:

2200-96Rev. 08.2017, January 2018


Rev. 08.2017, January 20182200-97


A. Previously Considered Prior Art Patents or PrintedPublications

After reexamination is ordered based on a propersubstantial new question of patentability, thepropriety of making a ground of rejection based onprior art previously considered by the Office (in anearlier examination of the patent) is governed by theguidance set forth in MPEP § 2258.01. Note also Inre Hiniker Co., 150 F.3d 1362, 1367, 47 USPQ2d1523,1527 (Fed. Cir. 1998)(court held thereexamination proceeding was supported by asubstantial new question of patentability where therejection before the court was based on acombination of art that had been before the examinerduring the original prosecution, and art newly citedduring the reexamination proceeding. The courtfurther stated that any error in the Commissioner’sauthority to institute a reexamination was “washedclean” during the reexamination procedure.)

B. Matters Other Than Patents or PrintedPublications in Reexaminations Ordered under 35U.S.C. 304

Rejections will not be based on matters other thanpatents or printed publications, such as public useor sale, inventorship, 35 U.S.C. 101, conduct issues,etc. In this regard, see In re Lanham, 1 USPQ2d1877 (Comm’r Pat. 1986), and StewartSystems v. Comm’r of Patents and Trademarks, 1USPQ2d 1879 (E.D. Va. 1986). A rejection on priorpublic use or sale, insufficiency of disclosure (withrespect to original subject matter), etc., cannot bemade even if it relies on a prior art patent or printedpublication. Prior art patents or printed publicationsmust be applied under an appropriate portion of 35U.S.C. 102 and/or 103 when making a rejection.

C. Intervening Patents or Printed Publications

Rejections may be made in reexaminationproceedings based on intervening patents or printedpublications where the patent claims underreexamination are entitled only to the filing date ofthe patent and are not supported by an earlier foreignor United States patent application whose filing dateis claimed. For example, under 35 U.S.C. 120, theeffective date of these claims would be the filingdate of the application which resulted in the patent.

Intervening patents or printed publications areavailable as prior art under In re Ruscetta, 255 F.2d687, 118 USPQ 101 (CCPA 1958), and In re vanLangenhoven, 458 F.2d 132, 173 USPQ 426 (CCPA1972). See MPEP § 211. See also In re NTP, Inc.,654 F.3d 1268, 99 USPQ2d 1500 (Fed. Cir. 2011)(holding that the Office is not prohibited fromperforming a 35 U.S.C. 112 written descriptionpriority analysis during reexamination).

D. Double Patenting

Double patenting is normally proper forconsideration in reexamination under 35 U.S.C. 302.See In re Lonardo, 119 F.3d 960, 43 USPQ2d 1262(Fed. Cir. 1997). In Lonardo, the Federal Circuitreviewed and interpreted the language of 35 U.S.C.303 and stated that:

Since the statute in other places refers to priorart in relation to reexamination, see id., itseems apparent that Congress intended that thephrases ‘patents and publications’ and ‘otherpatents or printed publications’ in section303(a) not be limited to prior art patents orprinted publications… . Finally, it is reasonableto conclude that Congress intended to includedouble patenting over a prior patent as a basisfor reexamination because maintenance of apatent that creates double patenting is as muchof an imposition on the public as maintenanceof patent that is unpatentable over prior art.Thus, we conclude that the PTO was authorizedduring reexamination to consider the questionof double patenting based upon the ̀ 762 patent.

In re Lonardo, 119 F.3d at 966, 43 USPQ2d at 1266.Accordingly, the issue of double patenting, overprior art patents or non-prior art patents, isappropriate for consideration in reexamination under35 U.S.C. 302, both as a basis for orderingreexamination under 35 U.S.C. 304 and duringsubsequent examination on the merits. The issue ofdouble patenting is to be considered by the examinerwhen making the decision on the request forreexamination. The examiner should determinewhether the issue of double patenting raises asubstantial new question of patentability. The issueof double patenting is also to be considered duringthe examination stage of reexamination proceeding.

2200-98Rev. 08.2017, January 2018


In the examination stage, the examiner shoulddetermine whether a rejection based on doublepatenting is appropriate.

Reexaminations ordered under 35 U.S.C. 257 mayalso involve double patenting grounds. See also Exparte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. &Inter. 1985) (“Double patenting rejections areanalogous to rejections under 35 U.S.C. 103 anddepend on the presence of a prior patent as the basisfor the rejection”).

See MPEP § 804 to § 804.03 for discussion ondouble patenting.

E. Affidavits or Declarations or Other WrittenEvidence

Affidavits or declarations or other written evidencewhich explain the contents or pertinent dates of priorart patents or printed publications in more detail maybe considered in reexamination.

In reexaminations ordered under 35 U.S.C. 304, anyrejection must be based upon the prior art patents orprinted publications as explained by the affidavitsor declarations or other written evidence. Therejection in such circumstances cannot be based onthe affidavits or declarations or other writtenevidence as such, but must be based on the prior artpatents or printed publications.

F. Admissions; Use of Admissions in ReexaminationsFiled under 35 U.S.C. 302 and Ordered under 35 U.S.C.304

1. Initial Reexamination Determination and Order

The consideration under 35 U.S.C. 303 of a requestfor reexamination is limited to prior art patents andprinted publications. See Ex parte McGaughey, 6 USPQ2d 1334, 1337 (Bd. Pat. App. & Inter. 1988).Thus an admission, per se , may not be the basis forestablishing a substantial new question ofpatentability. However, an admission by the patentowner of record in the file or in a court record maybe utilized in combination with a patent or printedpublication. While such an admission may be utilizedin combination with a patent or printed publication,a written statement of the patent owner submitted

pursuant to 37 CFR 1.501 and accompanying 37CFR 1.510(b)(2) explanation (of how each patentowner claim scope statement is being used todetermine the proper meaning of patent claim)cannot be considered in making the initialreexamination determination and issuance of theorder granting or denying reexamination. See 35U.S.C. 301(d).

2. Reexamination Ordered under 35 U.S.C. 304,Examination on the Merits

After reexamination has been ordered under 35U.S.C. 304, the examination on the merits is dictatedby 35 U.S.C. 305, see Ex parte McGaughey, 6USPQ2d 1334, 1337 (Bd. Pat. App. & Inter. 1988).

35 U.S.C. 301(a)(2) permits a submission under 35U.S.C. 301 to contain written “statements of thepatent owner filed in a proceeding before a federalcourt or the Office in which the patent owner tooka position on the scope of any claim of a particularpatent.” This provision of the statute has beenimplemented via 37 CFR 1.501(a)(2). If anystatement of the patent owner submitted pursuant to37 CFR 1.501(a)(2) is relied upon in the request,requester must explain how that statement is beingused to determine the proper meaning of a patentclaim in connection with prior art applied to thatclaim. 37 CFR 1.510(b)(2) requires that the “detailedexplanation” of applying prior art provided in therequest for ex parte reexamination must explainhow each patent owner claim scope statement isbeing used to determine the proper meaning of eachpatent claim in connection with the prior art appliedto that claim. The explanation will be considered bythe Office during the examination stage, ifreexamination is ordered, to determine the propermeaning of a patent claim in connection with priorart applied to that claim.

Further, admissions by the patent owner in the recordas to matters affecting patentability may be utilizedduring a reexamination proceeding under 35 U.S.C.302 in combination with a patent or printedpublication with respect to the determination ofanticipation and obviousness; see 37 CFR1.104(c)(3).

Rev. 08.2017, January 20182200-99


37 CFR 1.104(c)(3) provides that admissions by thepatent owners as to matters affecting patentabilitymay be utilized in a reexamination proceeding. TheSupreme Court when discussing 35 U.S.C. 103 in Graham v. John Deere Co., 383 U.S. 6, 148 USPQ459 (1966) stated, inter alia, “the scope and contentof the prior art are to be determined.” Accordingly,a proper evaluation of the scope and content of theprior art in determining obviousness would requirea utilization of any “admission” by the patent ownerwhich can be used to interpret or modify a patent orprinted publication applied in a reexaminationproceeding. This is true whether such admissionresults from a patent or printed publication or fromsome other source. An admission as to what is in theprior art is simply that, an admission, and requiresno independent proof. It is an acknowledged,declared, conceded, or recognized fact or truth, Exparte McGaughey, 6 USPQ2d 1334, 1337 (Bd. Pat.App. & Inter. 1988). While the scope and contentof the admission may sometimes have to bedetermined, this can be done from the record andfrom the paper file or IFW file history in the samemanner as with patents and printed publications. Toignore an admission by the patent owner, from anysource, and not use the admission as part of the priorart in conjunction with patents and printedpublications in reexamination would make itimpossible for the examiner to properly determinethe scope and content of the prior art as required by Graham, supra.

The Board upheld the use of an admission in areexamination proceeding under 35 U.S.C. 302 in Ex parte Seiko Koko Kabushiki Kaisha, 225 USPQ1260 (Bd. Pat. App. & Inter. 1984), Exparte Kimbell, 226 USPQ 688 (Bd. Pat. App. &Inter. 1985) and in Ex parte McGaughey, 6 USPQ2d1334 (Bd. Pat. App. & Inter. 1988). In Seiko, theBoard relied on In re Nomiya, 509 F.2d 566, 184USPQ 607 (CCPA 1975) holding an admission ofprior art in the specification of the parent undergoingreexamination is considered prior art which may beconsidered as evidence of obviousness under 35U.S.C. 103. In Kimbell, the Board referred to thepatent specification and noted the admission byappellant that an explosion-proof housing was wellknown at the time of the invention. In Exparte McGaughey, 6 USPQ2d 1334, 1337 (Bd. Pat.App. & Inter. 1988), the Board held that any

unequivocal admission relating to prior art is a factwhich is part of the scope and content of the priorart and that prior art admissions established in therecord are to be considered in reexamination. Anadmission from any source can be used with respectto interpreting or modifying a prior art patent orprinted publication, in a reexamination proceeding.The Board expressly overruled the prior Boarddecision in Ex parte Horton, 226 USPQ 697 (Bd.Pat. App. & Inter. 1985) which held that admissionswhich are used as a basis for a rejection inreexamination must relate to patents and printedpublications.

The admission can reside in the patent file (made ofrecord during the prosecution of the patentapplication) or may be presented during thependency of the reexamination proceeding or inlitigation. Admissions by the patent owner as to anymatter affecting patentability may be utilized todetermine the scope and content of the prior art inconjunction with patents and printed publications ina prior art rejection, whether such admissions resultfrom patents or printed publications or from someother source. An admission relating to any prior art(e.g., on sale, public use) established in the recordor in court may be used by the examiner incombination with patents or printed publications ina reexamination proceeding under 35 U.S.C. 302.Any admission submitted by the patent owner isproper. A third party, however, may not submitadmissions of the patent owner made outside therecord of the file or the court record. Such asubmission would be outside the scope ofreexamination.

Reexaminations ordered under 35 U.S.C. 257 mayinvolve an admission by the patent owner, and theadmission need not be combined with patents orprinted publications.

G. Claim Interpretation and Treatment

Original patent claims will be examined only on thebasis of prior art patents or printed publicationsapplied under the appropriate parts of 35 U.S.C. 102and 103 in reexaminations ordered under 35 U.S.C.304. See MPEP § 2217. Where there is relatedlitigation and a federal court has made a judicialinterpretation of a disputed claim term, the examiner

2200-100Rev. 08.2017, January 2018


in treating the disputed claim term should set forththe reasoning by, for example, acknowledging thejudicial interpretation and assessing whether thejudicial interpretation is consistent with the broadestreasonable construction of the term. Moreover, ifadopting a different claim construction than thejudicial interpretation, the examiner should supplyreasoning to support the different interpretation.

35 U.S.C. 301(a)(2) permits a submission under 35U.S.C. 301 to contain written “statements of thepatent owner filed in a proceeding before a federalcourt or the Office in which the patent owner tooka position on the scope of any claim of a particularpatent.” This provision of the statute has beenimplemented via 37 CFR 1.501(a)(2). Pursuant to37 CFR 1.552, any written statement of the patentowner and any accompanying information submittedpursuant to 37 CFR 1.501(a)(2) which is of recordin the patent being reexamined (which includes anyreexamination files for the patent) should beconsidered (after a reexamination proceeding hasbeen ordered, but not at the order stage) to determinethe proper meaning of a patent claim when applyingpatents or printed publications.

During reexamination ordered under 35 U.S.C. 304,and also during reexamination ordered under 35U.S.C. 257, claims are given the broadest reasonableinterpretation consistent with the specification andlimitations in the specification are not read into theclaims (In re Yamamoto, 740 F.2d 1569, 222 USPQ934 (Fed. Cir. 1984)). In a reexamination proceedinginvolving claims of an expired patent, claimconstruction pursuant to the principle set forth bythe court in Phillips v. AWH Corp., 415 F.3d 1303,1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005)(words of a claim “are generally given their ordinaryand customary meaning” as understood by a personof ordinary skill in the art in question at the time ofthe invention) should be applied since the expiredclaim are not subject to amendment. See Ex partePapst-Motoren, 1 USPQ2d 1655 (Bd. Pat. App. &Inter. 1986). The statutory presumption of validity,35 U.S.C. 282, has no application in reexamination(In re Etter, 756 F.2d 852, 225 USPQ 1 (Fed. Cir.1985)).

II. COMPLIANCE WITH 35 U.S.C. 112

In reexaminations ordered under 35 U.S.C. 304,where new claims are presented or where any partof the disclosure is amended, the claims of thereexamination proceeding, are to be examined forcompliance with 35 U.S.C. 112. Consideration of35 U.S.C. 112 issues should, however, be limited tothe amendatory (e.g., new language) matter. Forexample, a claim which is amended or a new claimwhich is presented containing a limitation not foundin the original patent claim should be considered forcompliance under 35 U.S.C. 112 only with respectto that limitation. To go further would be inconsistentwith the statute to the extent that 35 U.S.C. 112issues would be raised as to matter in the originalpatent claim. Thus, a term in a patent claim whichthe examiner might deem to be too broad cannot beconsidered as too broad in a new or amended claim unless the amendatory matter in the new or amendedclaim creates the issue. If a limitation that appearsin an existing patent claim also appears in a claimnewly presented in a reexamination proceeding, thatlimitation cannot be examined as to 35 U.S.C. 112.If a dependent claim is rewritten as an independentclaim in a reexamination proceeding, thatindependent claim cannot be examined as to 35U.S.C. 112, unless the nature of the rewriting raisesa new question (e.g., by newly providing a lack ofclaim antecedent for a term in the claim). However,a specific determination regarding whether theclaimed invention (including original patent claims)is entitled to a particular priority or benefit date ispermitted. See In re NTP, Inc., 654 F.3d 1268, 99USPQ2d 1500 (Fed. Cir. 2011)(holding that theUSPTO is not prohibited from performing a 35U.S.C. 112 written description priority analysisduring reexamination).

In contrast, reexaminations ordered under 35 U.S.C.257 may involve any issues under 35 U.S.C. 112.Such issues are not limited to matter that has beenadded or deleted during reexamination. Issues under35 U.S.C. 112 may also include the original subjectmatter of the patent under reexamination, includingthe original specification, claims, and drawings.

Rev. 08.2017, January 20182200-101


A. 35 U.S.C. 112 Issues To Be Considered inReexaminations Ordered under 35 U.S.C. 304

Compliance of new or amended claims with theenablement and/or description requirements of thefirst paragraph of 35 U.S.C. 112 should beconsidered as to the amendatory and new text in thereexamination proceeding. Likewise, the examinershould determine whether the new or amendedclaims comply with the second paragraph of 35U.S.C. 112. MPEP § 2163 - § 2173.05(v) provideextensive guidance as to these matters.

B. New Matter

35 U.S.C. 305 provides for examination under35 U.S.C. 132, which prohibits the introduction ofnew matter into the disclosure. Thus, the questionof new matter should be considered in areexamination proceeding. See MPEP § 2163.06 asto the relationship of the written descriptionrequirement of the first paragraph of 35 U.S.C. 112and the new matter prohibition under 35 U.S.C. 132.Where the new matter is added to the claims oraffects claim limitations, the claims should berejected under 35 U.S.C. 112, first paragraph, forfailing to meet the written description requirement.

C. Amendment of the Specification

Where the specification is amended in areexamination proceeding, the examiner should makecertain that the requirements of 35 U.S.C. 112 aremet. An amendment to the specification can redefinethe scope of the terms in a claim such that the claimis no longer clear or is not supported by thespecification. Thus, an amendment to thespecification can result in the failure of the claimsto comply with 35 U.S.C. 112, even where the claimsare not amended in any respect.

III. CLAIMS IN PROCEEDING MUST NOTENLARGE SCOPE OF THE CLAIMS OF THEPATENT

Where new or amended claims are presented orwhere any part of the disclosure is amended, theclaims of the reexamination proceeding should beexamined under 35 U.S.C. 305, to determine whetherthey enlarge the scope of the original claims.

35 U.S.C. 305 states that “no proposed amended ornew claim enlarging the scope of a claim of thepatent will be permitted in a reexaminationproceeding....”

A. Criteria for Enlargement of the Scope of the Claims

A claim presented in a reexamination proceeding“enlarges the scope” of the claims of the patent beingreexamined where the claim is broader than eachand every claim of the patent. See MPEP § 1412.03for guidance as to when the presented claim isconsidered to be a broadening claim as comparedwith the claims of the patent, i.e., what is broadeningand what is not. If a claim is considered to be abroadening claim for purposes of reissue, it islikewise considered to be a broadening claim inreexamination.

B. Amendment of the Specification

Where the specification is amended in areexamination proceeding, the examiner should makecertain that the amendment to the specification doesnot enlarge the scope of the claims of the patent. Anamendment to the specification can enlarge the scopeof the claims by redefining the scope of the terms ina claim, even where the claims are not amended inany respect.

C. Rejection of Claims Where There Is Enlargement

Any claim in a reexamination proceeding whichenlarges the scope of the claims of the patent shouldbe rejected under 35 U.S.C. 305. Form paragraph22.11 is to be employed in making the rejection.

¶ 22.11 Rejection, 35 U.S.C. 305, Claim Enlarges Scope ofPatent - Ex Parte Reexamination

Claim [1] rejected under 35 U.S.C. 305 as enlarging the scopeof the claim(s) of the patent being reexamined. In 35 U.S.C.305, it is stated that “[n]o proposed amended or new claimenlarging the scope of a claim of the patent will be permitted ina reexamination proceeding....” A claim presented in areexamination “enlarges the scope” of the patent claim(s) wherethe claim is broader than each and every claim of the patent. Aclaim is broader in scope than the original claims if it containswithin its scope any conceivable product or process which wouldnot have infringed the original patent. A claim is broadened ifit is broader in any one respect, even though it may be narrowerin other respects.

[2]

2200-102Rev. 08.2017, January 2018


Examiner Note:

The claim limitations which are considered to broaden the scopeshould be identified and explained in bracket 2. See MPEP §2258.

IV. OTHER MATTERS

A. Patent Under Reexamination Subject of a PriorOffice or Court Decision

Where some of the patent claims in a patent beingreexamined have been the subject of a prior Officeor court decision, see MPEP § 2242. Where otherproceedings involving the patent are copending withthe reexamination proceeding, see MPEP § 2282 -§ 2286.

Patent claims not subject to reexamination becauseof their prior adjudication by a court should beidentified. See MPEP § 2242. For handling a claimunder reexamination which is dependent on a claimnot subject to reexamination, see MPEP § 2260.01.All added claims will be examined.

For reexaminations ordered under 35 U.S.C. 304,where grounds are set forth in a prior Office decisionor federal court decision, which are not based onpatents or printed publications and which clearlyraise questions as to the validity of the claims, theexaminer’s Office action should clearly state thatthe claims have not been examined as to thosegrounds not based on patents or printed publicationsthat were stated in the prior decision. See 37 CFR1.552(c). See In re Knight, 217 USPQ 294 (Comm’rPat. 1982).

B. “Live” Claims That Are Reexamined DuringReexamination

The Office’s determination in both the order forreexamination and the examination stage of thereexamination will generally be limited solely to areview of the “live” claims (i.e., existing claims notheld invalid by a final decision, after all appeals) forwhich reexamination has been requested. If therequester was interested in having all of the claimsreexamined, requester had the opportunity to includethem in its request for reexamination. However, ifthe requester chose not to do so, those claim(s) forwhich reexamination was not requested under 35U.S.C. 302 will generally not be reexamined by the

Office. It is further noted that 35 U.S.C. 302 requiresthat “[t]he request must set forth the pertinency andmanner of applying cited prior art to every claim forwhich reexamination is requested.” If requester failsto apply the art to certain claims, requester is notstatutorily entitled to reexamination of such claims.If a request fails to set forth the pertinency andmanner of applying the cited art to any claim forwhich reexamination is requested as required by 37CFR 1.510(b), that claim will generally not bereexamined.

The decision to reexamine any claim for whichreexamination has not been requested under 35U.S.C. 302 lies within the sole discretion of theOffice, to be exercised based on the individual factsand situation of each individual case. If the Officechooses to reexamine any claim for whichreexamination has not been requested under 35U.S.C. 302, it is permitted to do so. In addition, theOffice may always initiate a reexamination on itsown initiative of the non-requested claim (35 U.S.C.303(a)).

Similarly, if prior art patents or printed publicationsare discovered during reexamination which raise asubstantial new question of patentability as to oneor more patent claims for which reexamination hasnot been ordered under 35 U.S.C. 304 (whilereexamination has been ordered under 35 U.S.C.304 for other claims in the patent), then such claimsmay be added, within the sole discretion of theOffice, during the examination phase of theproceeding.

C. Restriction Not Proper in Reexamination

Restriction requirements cannot be made in areexamination proceeding since no statutory basisexists for restriction in a reexamination proceeding.Note also that the addition of claims to a “separateand distinct” invention to the patent would beconsidered as being an enlargement of the scope ofthe patent claims. See Ex parte Wikdahl,10 USPQ2d 1546 (Bd. Pat. App. & Inter. 1989). SeeMPEP § 1412.03.

Rev. 08.2017, January 20182200-103


D. Ancillary Matters

There are matters ancillary to reexamination whichare necessary and incident to patentability whichwill be considered. Amendments may be made tothe specification to correct, for example, aninadvertent failure to claim foreign priority or thecontinuing status of the patent relative to a parentapplication if such correction is necessary toovercome a reference applied against a claim of thepatent.

E. Claiming Foreign Priority and Domestic Benefitin Reexamination

See MPEP § 2258.02 for guidance on claimingforeign priority or domestic benefit in areexamination proceeding.

F. Correction of Inventorship

Correction of inventorship may also be made duringreexamination. See 37 CFR 1.324 and MPEP § 1481for petition for correction of inventorship in a patent.If a petition filed under 37 CFR 1.324 is granted, aCertificate of Correction indicating the change ofinventorship will not be issued, because thereexamination certificate that will ultimately issuewill contain the appropriate change-of-inventorshipinformation (i.e., the Certificate of Correction is ineffect merged with the reexamination certificate).

G. Affidavits in Reexamination

Affidavits under 37 CFR 1.131(a) and 1.132 maybe utilized in a reexamination proceeding. Note,however, that an affidavit under 37 CFR 1.131(a)may not be used to “swear behind” a reference patentif the reference patent is claiming the “sameinvention” as the patent undergoing reexamination.In such a situation, the patent owner may, ifappropriate, seek to raise this issue via an affidavitunder 37 CFR 1.131(c) (see MPEP § 718) or in aninterference or derivation proceeding via anappropriate reissue application if such a reissueapplication may be filed (see MPEP § 1449.02).

H. Issues Not Considered in Reexamination Orderedunder 35 U.S.C. 304

If questions other than those indicated above (forexample, questions of patentability based on publicuse or on sale, conduct issues, abandonment underpre-AIA 35 U.S.C. 102(c) for a patent that wasexamined under the first-to-invent prior art regime,etc.) are raised by the third party requester or thepatent owner during a reexamination proceeding,the existence of such questions will be noted by theexaminer in an Office action. Such questions couldarise in a reexamination requester’s 37 CFR 1.510request or in a 37 CFR 1.535 reply by the requester.Note form paragraph 22.03.

¶ 22.03 Issue Not Within Scope of Ex Parte Reexamination

An issue has been raised in the present reexamination proceedingthat is not within the scope of an ex parte reexamination orderedunder 35 U.S.C. 304. [1]. This issue will not be considered inthe present proceeding. 37 CFR 1.552(c).

Examiner Note:

1. In bracket 1, identify the issues.

2. This paragraph may be used either when the patent owneror third party requester raises issues such as public use or onsale, conduct, or abandonment of the invention. Such issuesshould not be raised independently by the patent examiner.

If questions of patentability based on public use oron sale, conduct issues, abandonment under pre-AIA35 U.S.C. 102(c) for reexamination proceedingsunder 35 U.S.C. 302 examined under thefirst-to-invent prior art regime, etc. are independentlydiscovered by the examiner during a reexaminationproceeding but were not raised by the third partyrequester or the patent owner, the existence of suchquestions will not be noted by the examiner in anOffice action, because 37 CFR 1.552(c) is onlydirected to such questions “raised by the patentowner or the third party requester.”

I. Request for Reexamination under 35 U.S.C. 302Filed on Patent After It Has Been Reissued

Where a request for reexamination under 35 U.S.C.302 is filed on a patent after it has been reissued,reexamination will be denied because the patent onwhich the request for reexamination is based hasbeen surrendered. Should reexamination of thereissued patent be desired, a new request forreexamination including, and based on, the

2200-104Rev. 08.2017, January 2018


specification and claims of the reissue patent mustbe filed.

Any amendment submitted by the patent owner toaccompany the initial reexamination request under35 U.S.C. 302, or filed after reexamination has beenordered under 35 U.S.C. 304 (or, for that matter,under 35 U.S.C. 257), should treat the changes madeby the granted reissue patent as the text of the patent,and all bracketing and underlining made with respectto the patent as changed by the reissue.

Where the reissue patent issues after the filing of arequest for reexamination, see MPEP § 2285.

J. No Preissuance Submissions

Because a reexamination proceeding is apost-issuance proceeding, a preissuance submissionunder 35 U.S.C. 122(e) is not permitted to be filedin a reexamination proceeding; 35 U.S.C. 122(e) islimited to preissuance submissions by third partiesin patent applications. A preissuance submissionfiled in a reexamination proceeding is not to beentered, and will be expunged if it is inadvertentlyentered.

2258.01 Use of Previously Cited/ConsideredArt in Rejections [R-08.2017]

In the examining stage of a reexaminationproceeding, the examiner will consider whether theclaims are subject to rejection based on art. Beforemaking such a rejection, the examiner should checkthe patent’s file history to ascertain whether the artthat will provide the basis for the rejection waspreviously cited/considered in an earlier concludedOffice examination of the patent (e.g., in theexamination of the application for the patent). Forthe sake of expediency, such art is referred to as “oldart” throughout, since the term “old art” was coinedby the Federal Circuit in its decision of In reHiniker, 150 F.3d 1362, 1365-66, 47 USPQ2d 1523,1526 (Fed. Cir. 1998).

If the rejection to be made by the examiner will bebased on a combination of “old art” and art newlycited during the reexamination proceeding, therejection is proper, and should be made. See In reHiniker, 150 F.3d at 1367, 47 USPQ2d at 1527.

(Court held the reexamination proceeding wassupported by a substantial new question ofpatentability where the rejection before the courtwas based on a combination of art that had beenbefore the examiner during the original prosecution,and art newly cited during the reexaminationproceeding.)

If the “old art” provides the sole basis for a rejection,the following applies:

(A) Reexamination was ordered on or afterNovember 2, 2002:

For a reexamination that was ordered on or afterNovember 2, 2002 (the date of enactment of PublicLaw 107-273; see Section 13105, of the Patent andTrademark Office Authorization Act of 2002),reliance solely on old art (as the basis for a rejection)does not necessarily preclude the existence of asubstantial new question of patentability (SNQ) thatis based exclusively on that old art. Determinationson whether a SNQ exists in such an instance shallbe based upon a fact-specific inquiry done on acase-by-case basis. For example, a SNQ may bebased solely on old art where the old art is beingpresented/viewed in a new light, or in a differentway, as compared with its use in the earlierconcluded examination(s), in view of a material newargument or interpretation presented in the request.

When an Office action is being considered, and it isnewly determined that a SNQ based solely on oldart is raised by a request in a reexamination that wasordered on or after November 2, 2002, formparagraph 22.01.01 should be included in the Officeaction. Form paragraph 22.01.01 should be includedin any Office action in which a SNQ based solelyon the old art is first set forth (i.e., it was not set forthin the order granting reexamination or a prior Officeaction in the proceeding).

¶ 22.01.01 Criteria for Applying Old Art as Sole Basis forReexamination

The above [1] is based solely on patents and/or printedpublications already cited/considered in an earlier concludedexamination or review of the patent being reexamined, or hasbeen raised to or by the Office in a pending reexamination orsupplemental examination of the patent. On November 2, 2002,Public Law 107-273 was enacted. Title III, Subtitle A, Section13105, part (a) of the Act revised the reexamination statute by

Rev. 08.2017, January 20182200-105


adding the following new last sentence to 35 U.S.C. 303(a) and312(a):

"The existence of a substantial new question ofpatentability is not precluded by the fact that a patent orprinted publication was previously cited by or to theOffice or considered by the Office."

For any reexamination ordered on or after November 2, 2002,the effective date of the statutory revision, reliance on previouslycited/considered art, i.e., “old art,” does not necessarily precludethe existence of a substantial new question of patentability(SNQ) that is based exclusively on that old art. Rather,determinations on whether a SNQ exists in such an instanceshall be based upon a fact-specific inquiry done on acase-by-case basis.

In the present instance, there exists a SNQ based solely on [2].A discussion of the specifics now follows:

[3]

Examiner Note:

1. In bracket 1, insert “substantial new question ofpatentability” if the present form paragraph is used in an ordergranting reexamination (or a TC or CRU Director’s decision onpetition of the denial of reexamination). If this form paragraphis used in an Office action, insert “ground of rejection.”

2. In bracket 2, insert the old art that is being applied as thesole basis of the SNQ. For example, “the patent to J. Doe” or“the patent to J. Doe when taken with the Jones publication” or“the combination of the patent to J. Doe and the Smithpublication” could be inserted. Where more than one SNQ ispresented based solely on old art, the examiner would insert allsuch bases for SNQ.

3. In bracket 3, for each basis identified in bracket 2, explainhow and why that fact situation applies in the proceeding beingacted on. The explanation could be for example that the old artis being presented/viewed in a new light, or in a different way,as compared with its use in the earlier examination(s), in viewof a material new argument or interpretation presented in therequest. See Ex parte Chicago Rawhide Mfg. Co., 223 USPQ351 (Bd. Pat. App. & Inter. 1984).

4. This form paragraph is only used the first time the “alreadycited/considered” art is applied, and is not repeated for the sameart in subsequent Office actions.

(B) Reexamination was ordered prior toNovember 2, 2002:

For a reexamination that was ordered prior toNovember 2, 2002, old art cannot (subject to theexceptions set forth below) be used as the sole basisfor a rejection.

In determining the presence or absence of “asubstantial new question of patentability” on which

to base a rejection, the use of “old art” in areexamination that was ordered prior to November2, 2002, is controlled by In re Portola PackagingInc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir.1997). (Note that Portola Packaging was decidedbased on the reexamination statute as it existed priorto the amendment by Public Law 107-273, Section13105 of the Patent and Trademark OfficeAuthorization Act of 2002). The amendment byPublic Law 107-273, Section 13105, overruled the Portola Packaging decision for any reexaminationthat was ordered on or after November 2, 2002. See In re Bass, 314 F.3d 575, 576-77, 65 USPQ2d 1156,1157 (Fed. Cir. 2002) where the court stated in thesole footnote:

On November 2, 2002, 35 U.S.C. 303(a) wasamended by the passage of Pub. L. No.107-273, 13105, (116 Stat.) 1758, 1900, to add“[t]he existence of a substantial new questionof patentability is not precluded by the fact thata patent or printed publication was previouslycited by or to the Office or considered by theOffice,” thereby overruling Portola Packaging.

The following guidelines are provided for reviewingongoing reexaminations ordered prior to November2, 2002, for compliance with the Portola Packagingdecision.

(1) General principles governing compliancewith Portola Packaging for ongoing reexaminationsordered prior to November 2, 2002.

If prior art was previously relied upon to reject aclaim in a concluded prior related Office proceeding,the Office will not conduct reexamination based onlyon such prior art. “Prior related Office proceedings”include the application which matured into the patentthat is being reexamined, any reissue application forthe patent, and any reexamination proceeding forthe patent.

If prior art was not relied upon to reject a claim, butwas cited in the record of a concluded prior relatedOffice proceeding, and its relevance to thepatentability of any claim was actually discussed onthe record, the Office will not conduct reexaminationbased only on such prior art. The relevance of theprior art to patentability may have been discussed

2200-106Rev. 08.2017, January 2018


by the applicant, patentee, examiner, or any thirdparty. However, 37 CFR 1.2 requires that all Officebusiness be transacted in writing. Thus, the Officecannot presume that a prior art reference waspreviously relied upon or discussed in a prior Officeproceeding if there is no basis in the written recordto so conclude other than the examiner’s initials ora check mark on a form PTO/SB/08A or 08B, orPTO/SB/42 (or on a form having a format equivalentto one of these forms) submitted with an informationdisclosure statement. Thus, any specific discussionof prior art must appear on the record of a priorrelated Office proceeding. Generalized statementssuch as the prior art is “cited to show the state of theart,” “cited to show the background of theinvention,” or “cited of interest” would not precludereexamination.

The Office may conduct reexamination based onprior art that was cited but whose relevance topatentability of the claims was not discussed in anyprior related Office proceeding.

(2) Procedures for determining whether theprosecution of an ongoing reexamination must beterminated in compliance with Portola Packaging.

Office personnel must adhere to the followingprocedures when determining whether theprosecution of an ongoing reexamination should beterminated in compliance with the Federal Circuit’sdecision in Portola Packaging.

(a) Ascertain that the order grantingreexamination was mailed prior to November 2,2002. If the order granting reexamination was notmailed prior to November 2, 2002, see above“Reexamination was ordered on or after November2, 2002” for guidance.

(b) Prior to making any rejection in theongoing reexamination, determine for any priorrelated Office proceeding what prior art was (i) reliedupon to reject any claim, or (ii) cited and discussed.

(c) Base any and all rejections of thepatent claims under reexamination at least in part onprior art that was, in any prior related Officeproceeding, neither (i) relied upon to reject anyclaim, nor (ii) cited and its relevance to patentabilityof any claim discussed.

(d) Withdraw any rejections based onlyon prior art that was, in any prior related Office

proceeding, previously either (i) relied upon to rejectany claim, or (ii) cited and its relevance topatentability of any claim discussed.

(e) Terminate the prosecution of anyreexamination in which the only remaining rejectionsare entirely based on prior art that was, in any priorrelated Office proceeding, previously (i) relied uponto reject any claim, and/or (ii) cited and its relevanceto patentability of a claim discussed.

The Director of the USPTO may conduct a searchfor new art to determine whether a substantial newquestion of patentability exists prior to terminatingthe prosecution of any ongoing reexaminationproceeding. See 35 U.S.C. 303. See also 35 U.S.C.305 (indicating that “reexamination will beconducted according to the procedures establishedfor initial examination,” thereby suggesting that theDirector of the USPTO may conduct a search duringan ongoing reexamination proceeding).

(3) Application of Portola Packaging tounusual fact patterns.

The Office recognizes that each case must be decidedon its particular facts and that cases with unusualfact patterns will occur. In such a case, thereexamination should be brought to the attention ofthe Central Reexamination Unit (CRU) orTechnology Center (TC) Director who will thendetermine the appropriate action to be taken.

Unusual fact patterns may appear in cases in whichprior art was relied upon to reject any claim or citedand discussed with respect to the patentability of aclaim in a prior related Office proceeding, but otherevidence clearly shows that the examiner did notappreciate the issues raised in the reexaminationrequest or the ongoing reexamination with respectto that art. Such other evidence may appear in thereexamination request, in the nature of the prior art,in the prosecution history of the prior examination,or in an admission by the patent owner, applicant,or inventor. See 37 CFR 1.104(c)(3).

The following examples are intended to beillustrative and not inclusive.

For example, if a textbook was cited duringprosecution of the application which matured into

Rev. 08.2017, January 20182200-107


the patent, the record of that examination may showthat only select information from the textbook wasdiscussed with respect to the patentability of theclaims. The file history of the prior Officeproceeding should indicate which portion of thetextbook was previously considered. See 37 CFR1.98(a)(2)(ii) (an information disclosure statementmust include a copy of each “publication or thatportion which caused it to be listed”). If a subsequentreexamination request relied upon other informationin the textbook that actually teaches what is requiredby the claims, it may be appropriate to rely on thisother information in the textbook to order and/orconduct reexamination. However, a reexaminationrequest that merely provides a new interpretation ofa reference already previously relied upon or actuallydiscussed by the Office does not create a substantialnew question of patentability.

Another example involves the situation wherean examiner discussed a reference in a prior Officeproceeding, but did not either reject a claim basedupon the reference or maintain the rejection basedon the mistaken belief that the reference did notqualify as prior art. For example, the examiner maynot have believed that the reference qualified as priorart because: (i) the reference was undated or wasbelieved to have a bad date; (ii) the applicantsubmitted a declaration believed to be sufficient toantedate the reference under 37 CFR 1.131(a); or(iii) the examiner attributed an incorrect filing dateto the claimed invention. If the reexamination requestwere to explain how and why the reference actuallydoes qualify as prior art, it may be appropriate torely on the reference to order and/or conductreexamination. For example, the request could: (i)verify the date of the reference; (ii) undermine thesufficiency of the declaration filed under 37 CFR1.131(a) (by a showing of an inaccuracy/mistake offact in the declaration); or (iii) explain the correctfiling date accorded a claim where the issue was notpreviously addressed in an earlier examination ofthe patent. See e.g., Heinl v. Godici, 143 F. Supp.2d593 (E.D.Va. 2001) (reexamination on the basis ofart previously presented without adequate proof ofdate may proceed if prior art status is nowestablished).

Another example involves foreign language priorart references. If a foreign language prior art

reference was cited and discussed in any prior Officeproceeding but the foreign language prior artreference was never completely and accuratelytranslated into English during the originalprosecution, Portola Packaging may not prohibitreexamination over a complete and accuratetranslation of that foreign language prior artreference. Specifically, if a reexamination requestwere to explain why a more complete and accuratetranslation of that same foreign language prior artreference actually teaches what is required by thepatent claims, it may be appropriate to rely on theforeign language prior art reference to order and/orconduct reexamination.

Another example of an unusual fact pattern involvescumulative references. To the extent that acumulative reference is repetitive of a prior artreference that was previously applied or discussed, Portola Packaging may prohibit reexamination ofthe patent claims based only on the repetitivereference. For purposes of reexamination, acumulative reference that is repetitive is one thatsubstantially reiterates verbatim the teachings of areference that was either previously relied upon ordiscussed in a prior Office proceeding even thoughthe title or the citation of the reference may bedifferent. However, it is expected that a repetitivereference which cannot be considered by the Officeduring reexamination will be a rare occurrence sincemost references teach additional information orpresent information in a different way than otherreferences, even though the references might addressthe same general subject matter.

(4) Notices regarding compliance with Portola Packaging.

(a) If the prosecution of an ongoingreexamination is terminated under (2)(e) above inorder to comply with the Federal Circuit’s decisionin Portola Packaging, the Notice of Intent to Issue Ex Parte Reexamination Certificate should state:

“The prosecution of thisreexamination is terminated based on In rePortola Packaging, Inc., 110 F.3d 786, 42USPQ2d 1295 (Fed. Cir. 1997). Nopatentability determination has been made inthis reexamination proceeding.”

2200-108Rev. 08.2017, January 2018


(b) If a rejection in the reexamination haspreviously been issued and that rejection iswithdrawn under (2)(d) above in order to complywith the Federal Circuit’s decision in PortolaPackaging, the Office action withdrawing suchrejection should state:

“The rejection(s) based upon_______is/are withdrawn in view of In rePortola Packaging, Inc., 110 F.3d 786, 42USPQ2d 1295 (Fed. Cir. 1997). Nopatentability determination of the claims of thepatent in view of such prior art has been madein this reexamination proceeding.”

2258.02 Claiming Foreign Priority andDomestic Benefit in Reexamination[R-08.2017]

The patent owner may correct the failure toadequately claim foreign priority or domestic benefitin a patent to be reexamined during reexaminationin accordance with the guidelines set forth in thissection. However, a renewal of previously madeclaims for foreign priority under 35 U.S.C. 119 ordomestic benefit under 35 U.S.C. 119(e) or 120, isnot necessary during reexamination. Note that adesign application cannot claim the benefit of aprovisional application. See MPEP § 211.02,subsection III; see also MPEP § 1504.20 for benefitinformation specific to design applications.

I. FOREIGN PRIORITY

A. Claim Made Before Patent Granted; Certified CopyNeeded to Perfect Priority

The patent owner may obtain the right of foreignpriority under 35 U.S.C. 119(a)-(d) where a claimfor priority had been made before the patent wasgranted, and it is only necessary for submission ofthe certified copy in the reexamination proceedingto perfect priority.

However, where a petition to accept a delayedcertified copy under 37 CFR 1.55(f) or (g) is required(such as, for example, when the application whichmatured in the patent to be reexamined was filed onor after March 16, 2013), a grantable petition, theappropriate fee, and any required attachments must

be filed in the file of the application that maturedinto the patent to be reexamined. See MPEP § 215.02for further guidance. In addition, a letter must befiled as a separate paper in the reexaminationproceeding, notifying the Office that a petition toaccept a delayed certified copy under 37 CFR 1.55(f)or (g), the appropriate fee, and any requiredattachments was or is being concurrently filed in thefile of the patent to be reexamined. When a decisionon the petition to accept a delayed certified copyunder 37 CFR 1.55(f) or (g) is rendered in the fileof the application that matured into the patent to bereexamined, a copy of the decision will also beplaced in the file of the reexamination proceeding.

B. Submitting for the First Time Both the Claim forForeign Priority and the Certified Copy

The patent owner may obtain the right of foreignpriority under 35 U.S.C. 119(a)-(d) where the claimfor foreign priority was not previously made.However, a grantable petition for an unintentionallydelayed priority claim under 37 CFR 1.55(e) mustbe filed. The petition, and any required attachments,must be filed in the file of the application whichmatured into the patent to be reexamined, and a lettermust be filed in the reexamination proceeding as aseparate paper notifying the Office that the petitionand accompanying attachments was or isconcurrently being filed in the application(identifying the application number) which maturedinto the patent to be reexamined, according to thefollowing guidance:

1. Application Which Became Patent to beReexamined Filed On or After September 16, 2012

If the patent to be reexamined matured from anapplication filed on or after September 16, 2012, thepatent owner must file in the File of the ApplicationWhich Matured into the Patent to be Reexamined:

(a) A grantable petition for an unintentionallydelayed priority claim under 37 CFR 1.55(e);

(b) An application data sheet (37 CFR1.76(b)(6)), identifying the foreign application towhich priority is claimed, by specifying theapplication number, country (or intellectual propertyauthority), day, month, and year of its filing, unlesspreviously submitted;

Rev. 08.2017, January 20182200-109


(c) A certified copy of the foreign application,unless previously submitted, or the exception in 37CFR 1.55(h) is applicable;

(d) The petition fee as set forth in 37 CFR1.17(m); and

(e) A statement that the entire delay between thedate the priority claim was due under 37 CFR 1.55and the date the priority claim was filed wasunintentional. The Director may require additionalinformation where there is a question whether thedelay was unintentional.

(f) In the Reexamination Proceeding:

A letter, as a separate paper, notifying the Officethat items (a)-(e), as applicable, was or isconcurrently being filed in the file of the applicationwhich matured into the patent to be reexamined.

When a decision on the petition for anunintentionally delayed priority claim under 37 CFR1.55(e) is rendered in the file of the applicationwhich matured into the patent to be reexamined, acopy of the decision will also be placed in the fileof the reexamination proceeding. In addition, if thepetition is granted, a copy of the application datasheet which was determined by the Office in itsdecision to meet the requirements of 37 CFR 1.55(e)(and all other applicable requirements), will also beplaced in the file of the reexamination proceeding.

2. Application Which Became Patent to beReexamined Filed Before September 16, 2012

If the patent to be reexamined matured from anapplication filed before September 16, 2012, thepatent owner must file in the File of the ApplicationWhich Matured into the Patent to be Reexamined:

(a) A grantable petition for an unintentionallydelayed priority claim under 37 CFR 1.55(e);

(b) Unless previously submitted, either (i) anapplication data sheet (37 CFR 1.76(b)(6)) or (ii) anoath or declaration under 37 CFR 1.63; where theapplication data sheet, oath or declaration, whicheveris filed, identifies the foreign application to whichpriority is claimed, by specifying the applicationnumber, country (or intellectual property authority),day, month, and year of its filing (see 37 CFR1.55(n));

(c) A certified copy of the foreign application,unless previously submitted, or the exception in 37CFR 1.55(h) is applicable;

(d) The petition fee as set forth in 37 CFR1.17(m); and

(e) A statement that the entire delay between thedate the priority claim was due under 37 CFR 1.55and the date the priority claim was filed wasunintentional. The Director may require additionalinformation where there is a question whether thedelay was unintentional.


A letter, as a separate paper, notifying the Officethat items (a)-(e), as applicable, was or isconcurrently being filed in the file of the applicationwhich matured into the patent to be reexamined.

When a decision on the petition for anunintentionally delayed priority claim under 37 CFR1.55(e) is rendered in the file of the applicationwhich matured into the patent to be reexamined, acopy of the decision will also be placed in the fileof the reexamination proceeding. In addition, if thepetition is granted, a copy of the application datasheet, oath, or declaration, which was determinedby the Office in its decision to meet the requirementsof 37 CFR 1.55(e) (and all other applicablerequirements), will also be placed in the file of thereexamination proceeding.

For further guidance on the requirements for agrantable petition for an unintentionally delayedpriority claim under 37 CFR 1.55(e), see MPEP §214.02.

C. Restoring Right of Foreign Priority Where theFiling of the Subsequent Application Was Delayed

The patent owner may also restore the right offoreign priority under 35 U.S.C. 119(a)-(d) wherethe filing of the subsequent application was delayed,in accordance with 37 CFR 1.55(c). A grantablepetition to restore the right of foreign priority andany required attachments, including an applicationdata sheet, must be filed in the application specifiedin 37 CFR 1.55(c), not in the reexaminationproceeding. A letter must be filed in thereexamination proceeding as a separate papernotifying the Office that the petition and

2200-110Rev. 08.2017, January 2018


accompanying attachments was or is concurrentlybeing filed in the application specified in 37 CFR1.55(c) (identifying the application number).

When a decision on the petition to restore the rightof foreign priority under 37 CFR 1.55(c) is renderedin the file of the application specified in 37 CFR1.55(c), a copy of the decision will also be placedin the file of the reexamination proceeding. Inaddition, if the petition is granted, a copy of theapplication data sheet which was determined by theOffice in its decision to meet the requirements of 37CFR 1.55(c) (and all other applicable requirements),will also be placed in the file of the reexaminationproceeding.

For further guidance on the requirements for agrantable petition to restore the right of foreignpriority under 37 CFR 1.55(c), see MPEP § 213.03,subsection III.

II. DOMESTIC BENEFIT

A. Claiming Benefit under 35 U.S.C. 120

The patent owner may also correct the failure toadequately claim (in the application for the patentto be reexamined) benefit under 35 U.S.C. 120 ofan earlier filed copending U.S. patent application.For a patent to be reexamined, a grantable petitionfor an unintentionally delayed benefit claim under37 CFR 1.78(e) must be filed. The petition, and anyrequired attachments (with the exception of anamendment to the first sentence(s) of thespecification if the application which matured intothe patent to be reexamined is a nonprovisionalapplication filed before September 16, 2012 – seesubsection II.A.2. below), must be filed in the fileof the application which matured into the patent tobe reexamined, and a letter must be filed in thereexamination proceeding as a separate papernotifying the Office that the petition andaccompanying attachments was or is concurrentlybeing filed in the application (identifying theapplication number) which matured into the patentto be reexamined, according to the followingguidance:


If the patent to be reexamined matured from anapplication filed on or after September 16, 2012, thepatent owner must file in the File of the ApplicationWhich Matured into the Patent to be Reexamined:

(a) A grantable petition for an unintentionallydelayed benefit claim under 37 CFR 1.78(e);

(b) An application data sheet including thereference required by 35 U.S.C. 120 and 37 CFR1.78(d)(2) to the prior-filed application (37 CFR1.76(b)(5)), unless previously submitted;

(c) The petition fee as set forth in 37 CFR1.17(m); and

(d) A statement that the entire delay between thedate the benefit claim was due under 37 CFR1.78(d)(3) and the date the benefit claim was filedwas unintentional. The Director may requireadditional information where there is a questionwhether the delay was unintentional.

(e) In the Reexamination Proceeding:

A letter, as a separate paper, notifying the Officethat items (a)-(d), as applicable, was or isconcurrently being filed in the file of the applicationwhich matured into the patent to be reexamined.

When a decision on the petition for anunintentionally delayed benefit claim under 37 CFR1.78(e) is rendered in the file of the applicationwhich matured into the patent to be reexamined, acopy of the decision will also be placed in the fileof the reexamination proceeding. In addition, if thepetition is granted, a copy of the application datasheet which was determined by the Office in itsdecision to meet the requirements of 37 CFR 1.78(e)(and all other applicable requirements), will also beplaced in the file of the reexamination proceeding.


If the patent to be reexamined matured from anapplication filed before September 16, 2012, thepatent owner must file in the File of the ApplicationWhich Matured into the Patent to be Reexamined:

Rev. 08.2017, January 20182200-111


(a) A grantable petition for an unintentionallydelayed benefit claim under 37 CFR 1.78(e);

(b) If the patent owner does not choose to filean amendment as set forth in (e) below in thereexamination proceeding, an application data sheetincluding the reference required by 35 U.S.C. 120and 37 CFR 1.78(d)(2) to the prior-filed application(37 CFR 1.76(b)(5)), unless previously submitted;


(d) A statement that the entire delay between thedate the benefit claim was due under 37 CFR1.78(d)(3) and the date the benefit claim was filedwas unintentional. The Director may requireadditional information where there is a questionwhether the delay was unintentional.


If the patent owner does not choose to file anapplication data sheet as set forth in (b) above in theapplication which matured into the patent to bereexamined, an amendment inserting the referencerequired by 35 U.S.C. 120 and 37 CFR 1.78(d)(2)to the prior-filed application in the first sentence(s)of the specification following the title as set forth in37 CFR 1.78(h), unless previously submitted; and

(f) In the Reexamination Proceeding: A letter,as a separate paper, notifying the Office that items(a)-(d), as applicable, was or is concurrently beingfiled in the file of the application which matured intothe patent to be reexamined.

When a decision on the petition for anunintentionally delayed benefit claim under 37 CFR1.78(e) is rendered in the file of the applicationwhich matured into the patent to be reexamined, acopy of the decision will also be placed in the fileof the reexamination proceeding. In addition, if thepetition is granted, a copy of any application datasheet, where applicable, which was determined bythe Office in its decision to meet the requirementsof 37 CFR 1.78(e) (and all other applicablerequirements), will also be placed in the file of thereexamination proceeding.

Note, if the application which matured into the patentto be reexamined is a nonprovisional applicationfiled before September 16, 2012, the patent ownermust choose to either (i) file, in the application

which matured into the patent to be reexamined, anapplication data sheet including the referencerequired by 35 U.S.C. 120 and 37 CFR 1.78(d)(2)to the prior-filed application (37 CFR 1.76(b)(5)),unless previously submitted; or (ii) file, in thereexamination proceeding, an amendment insertingthe reference required by 35 U.S.C. 120 and 37 CFR1.78(d)(2) to the prior-filed application in the firstsentence(s) of the specification following the titleas set forth in 37 CFR 1.78(h), unless previouslysubmitted. See (b) and (e) above.

For further guidance on the requirements for apetition for an unintentionally delayed benefit claimunder 37 CFR 1.78(e), see MPEP § 211.04.

B. Claiming Benefit under 35 U.S.C. 119(e)

The patent owner may correct, in a patent to bereexamined which matured from a utility or plantapplication, the failure to adequately claim benefitunder 35 U.S.C. 119(e) of an earlier filed provisionalapplication. A design application cannot claim thebenefit of a provisional application. See MPEP §211.02; see also MPEP § 1504.20 for benefitinformation specific to design applications.

In order to make such a correction in a utility or plantpatent, the patent owner must file a grantable petitionfor an unintentionally delayed claim under 35 U.S.C.119(e), pursuant to 37 CFR 1.78(c). The petition,and any required attachments (with the exception ofan amendment to the first sentence(s) of thespecification if the application which matured intothe patent to be reexamined is a nonprovisionalutility or plant application filed before September16, 2012 – see subsection II.B.2. below), must befiled in the file of the application which matured intothe patent to be reexamined, and a letter must befiled in the reexamination proceeding as a separatepaper notifying the Office that the petition andaccompanying attachments was or is concurrentlybeing filed in the application (identifying theapplication number) which matured into the patentto be reexamined, according to the followingguidance:

2200-112Rev. 08.2017, January 2018



If the patent to be reexamined matured from a utilityor plant application filed on or after September 16,2012, the patent owner must file in the File of theApplication Which Matured into the Patent to beReexamined:

(a) A grantable petition for an unintentionallydelayed claim under 35 U.S.C. 119(e), pursuant to37 CFR 1.78(c);

(b) An application data sheet including thereference required by 35 U.S.C. 119(e) and 37 CFR1.78(a)(3) to the prior-filed provisional application;unless previously submitted;


(d) A statement that the entire delay between thedate the benefit claim was due under 37 CFR1.78(a)(4) and the date the benefit claim was filedwas unintentional. The Director may requireadditional information where there is a questionwhether the delay was unintentional.



When a decision on the petition for anunintentionally delayed claim under 35 U.S.C. 119(e)is rendered in the file of the application whichmatured into the patent to be reexamined, a copy ofthe decision will also be placed in the file of thereexamination proceeding. In addition, if the petitionis granted, a copy of the application data sheet whichwas determined by the Office in its decision to meetthe requirements of 35 U.S.C. 119(e) (and all otherapplicable requirements), will also be placed in thefile of the reexamination proceeding.


If the patent to be reexamined matured from a utilityor plant application filed before September 16, 2012,the patent owner must file in the File of the

Application Which Matured into the Patent to beReexamined:

(a) A grantable petition for an unintentionallydelayed claim under 35 U.S.C. 119(e), pursuant to37 CFR 1.78(c);

(b) If the patent owner does not choose to filean amendment as set forth in (e) below in thereexamination proceeding, an application data sheetincluding the reference required by 35 U.S.C. 119(e)and 37 CFR 1.78(a)(3) to the prior-filed provisionalapplication; unless previously submitted;


(d) A statement that the entire delay between thedate the benefit claim was due under 37 CFR1.78(a)(4) and the date the benefit claim was filedwas unintentional. The Director may requireadditional information where there is a questionwhether the delay was unintentional.


If the patent owner does not choose to file anapplication data sheet as set forth in (b) above in theapplication which matured into the patent to bereexamined, an amendment inserting the referencerequired by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3)to the prior-filed application in the first sentence(s)of the specification following the title as set forth in37 CFR 1.78(h), unless previously submitted; and



When a decision on the petition for anunintentionally delayed claim under 35 U.S.C. 119(e)is rendered in the file of the application whichmatured into the patent to be reexamined, a copy ofthe decision will also be placed in the file of thereexamination proceeding. In addition, if the petitionis granted, a copy of any application data sheet,where applicable, which was determined by theOffice in its decision to meet the requirements of 35U.S.C. 119(e) (and all other applicablerequirements), will also be placed in the file of thereexamination proceeding.

Rev. 08.2017, January 20182200-113


Note, if the application which matured into the patentto be reexamined is a nonprovisional utility or plantapplication filed before September 16, 2012, thepatent owner must choose to either (i) file, in theapplication which matured into the patent to bereexamined, an application data sheet including thereference required by 35 U.S.C. 119(e) and 37 CFR1.78(a)(3) to the prior-filed application (37 CFR1.76(b)(5)), unless previously submitted; or (ii) file,in the reexamination proceeding, an amendmentinserting the reference required by 35 U.S.C. 119(e)and 37 CFR 1.78(a)(3) to the prior-filed applicationin the first sentence(s) of the specification followingthe title as set forth in 37 CFR 1.78(h), unlesspreviously submitted. See (b) and (e) above.

For further guidance on petitions for anunintentionally delayed benefit claim under 35U.S.C. 119(e), pursuant to 37 CFR 1.78(c), seeMPEP § 211.04.

C. Restoring the Benefit of a Provisional ApplicationWhere the Filing of the Application Which Became thePatent to be Reexamined Was Delayed

The patent owner may also restore the benefit of aprovisional application where the filing of theapplication which matured into the patent to bereexamined (i.e., the subsequent nonprovisionalapplication) was unintentionally delayed, inaccordance with 37 CFR 1.78(b). The patent ownermust file a grantable petition to restore the benefitof a provisional application under 37 CFR 1.78(b),and any required attachments, including anapplication data sheet meeting the requirements setforth in 37 CFR 1.78(b), in the file of the applicationwhich matured into the patent to be reexamined (i.e.,the subsequent application as specified in 37 CFR1.78(b)). A letter must be filed in the reexaminationproceeding as a separate paper notifying the Officethat the petition and accompanying attachments wasor is concurrently being filed in the application(identifying the application number) which maturedinto the patent to be reexamined. Note that a designapplication cannot claim the benefit of a provisionalapplication.

When a decision on the petition to restore the benefitof a provisional application is rendered in the file ofthe application which matured into the patent to be

reexamined, a copy of the decision will also beplaced in the file of the reexamination proceeding.In addition, if the petition is granted, a copy of theapplication data sheet which was determined by theOffice in its decision to meet the requirements of 37CFR 1.78(b) (and all other applicable requirements),will also be placed in the file of the reexaminationproceeding.

For further guidance on the requirements for agrantable petition to restore the benefit of aprovisional application under 37 CFR 1.78(b), seeMPEP § 211.01(a), subsection II.

2259 Res Judicata and Collateral Estoppelin Reexamination Proceedings [R-07.2015]

MPEP § 2242 and § 2286 relate to the Office policycontrolling the determination on a request forreexamination and the subsequent examination phaseof the reexamination where there has been a federalcourt decision on the merits as to the patent forwhich reexamination is requested.

Claims finally held invalid by a federal court, afterall appeals, will be withdrawn from considerationand not reexamined during a reexaminationproceeding. A rejection on the grounds of resjudicata will not be appropriate in reexamination.One of the essential elements of claim preclusion(res judicata) is the involvement of the same parties,or parties in privity with the original parties. Thedoctrine of res judicata based on a court holding inan infringement proceeding is not applicable inreexamination proceedings, because the Office wasnot a party to the litigation.

In In re Trans Texas Holdings Corp., 498 F.3d 1290,83 USPQ2d 1835 (Fed. Cir. 2007), the court heldthat issue preclusion (collateral estoppel) could notbe applied against the Office based on a districtcourt holding in an infringement proceeding, becausethe Office was not a party to the earlier infringementproceeding and did not have “a full and fairopportunity” to litigate the issue; See also In reConstruction Equipment Company, 665 F.3d 1254,100 USPQ2d 1922 (Fed. Cir. 2011), in which themajority did not adopt the dissent view thatreexamination was barred by claim preclusion (resjudicata) or issue preclusion (collateral estoppel).

2200-114Rev. 08.2017, January 2018


2260 Office Actions [R-07.2015]

As is true in the examination of applications, 37 CFR1.104 (Nature of examination) applies to theexamination of reexamination proceedings. It isintended that the examiner’s first ex parte action onthe merits be the primary action to establish theissues which exist between the examiner and thepatent owner insofar as the patent is concerned. Atthe time the first action is issued in reexaminationsordered under 35 U.S.C. 304, the patent owner hasalready been permitted to file a statement and anamendment pursuant to 37 CFR 1.530; and thereexamination requester, if the requester is not thepatent owner, has been permitted to reply theretopursuant to 37 CFR 1.535. In any case, thus, at thispoint, the issues should be sufficiently focused toenable the examiner to make a definitive first exparte action on the merits which should clearlyestablish the issues which exist between the examinerand the patent owner insofar as the patent isconcerned. In view of the fact that the examiner’sfirst action will clearly establish the issues, the firstaction should include a statement cautioning thepatent owner that a complete response should bemade to the action since the next action is expectedto be a final action. The first action should furthercaution the patent owner that the requirements of 37CFR 1.116(b) will be strictly enforced after finalaction and that any amendment after a final actionmust include “a showing of good and sufficientreasons why the amendment is necessary and wasnot earlier presented” in order to be considered. Thelanguage of form paragraph 22.04 is appropriate forinclusion in the first Office action:

¶ 22.04 Papers To Be Submitted in Response to Action - ExParte Reexamination

In order to ensure full consideration of any amendments,affidavits or declarations, or other documents as evidence ofpatentability, such documents must be submitted in response tothis Office action. Submissions after the next Office action,which is intended to be a final action, will be governed by therequirements of 37 CFR 1.116 after final rejection and 37 CFR41.33 after appeal, which will be strictly enforced.

2260.01 Dependent Claims [R-07.2015]

If an unamended base patent claim (i.e., a claimappearing in the reexamination as it appears in thepatent) has been rejected, canceled, or is no longer

subject to reexamination due to adjudication in court,any claim undergoing reexamination which isdirectly or indirectly dependent thereon should beconfirmed or allowed if the dependent claim isotherwise allowable. The dependent claim should not be objected to or rejected merely because itdepends on a rejected or canceled patent claim or aclaim no longer subject to reexamination. Norequirement should be made for rewriting thedependent claim in independent form. As the originalpatent claim numbers are not changed in areexamination proceeding, the content of thecanceled base claim would remain in the printedpatent and would be available to be read as a part ofthe confirmed or allowed dependent claim.

If a new base claim (a base claim other than a baseclaim appearing in the patent) has been canceled ina reexamination proceeding, a claim which dependsthereon should be rejected as indefinite. If a newbase claim or an amended patent claim is rejected,a claim dependent thereon should be objected to ifit is otherwise patentable and a requirement madefor rewriting the dependent claim in independentform.

2261 Special Status for Action [R-07.2015]

35 U.S.C. 305 Conduct of reexamination proceedings.

*****

All reexamination proceedings under this section, including anyappeal to the Patent Trial and Appeal Board, will be conductedwith special dispatch within the Office.

In view of the requirement for “special dispatch,”reexamination proceedings will be “special”throughout their pendency in the Office.

Any cases involved in litigation, whether they arereexamination proceedings or reissue applications,will have priority over all other cases. Reexaminationproceedings not involved in litigation will havepriority over all other cases except reexaminationsor reissues involved in litigation.

2262 Form and Content of Office Action[R-08.2017]

The examiner’s first Office action will be a statementof the examiner’s position and should be so complete

Rev. 08.2017, January 20182200-115


that the second Office action can properly be madea final action. See MPEP § 2271.

The first Office action must be sufficiently detailedthat the pertinency and manner of applying the citedprior art to the claims in each rejection is clearly setforth therein. Where the request for reexaminationincludes material such as a claim chart to explain aproposed rejection in order to establish the existenceof a substantial new question of patentability, theexaminer may bodily incorporate the claim chart (orother material) within the Office action. Theexaminer must, however, carefully review the claimchart (or other material) to ensure that any itemsincorporated in a statement of the rejection clearlyand completely address the patentability of theclaims. For actions subsequent to the first Officeaction, the examiner must be careful to additionallyaddress all patent owner responses to previousactions. If the examiner concludes in any Officeaction that one or more of the claims are patentableover the cited patents or printed publications, theexaminer should indicate why the claim(s) is/areclearly patentable in a manner similar to that usedto indicate reasons for allowance (MPEP § 1302.14).If the record is clear why the claim(s) is/are clearlypatentable, the examiner may refer to the particularportions of the record which clearly establish thepatentability of the claim(s). The first action shouldalso respond to the substance of each argumentraised by the patent owner and requester pursuantto 37 CFR 1.510, 1.530, and 1.535. If arguments arepresented which are inappropriate in reexamination,they should be treated in accordance with 37 CFR1.552(c).

If any statement of the patent owner submittedpursuant to 37 CFR 1.501(a)(2) is relied upon in thedetailed explanation, requester must have explainedhow that statement is being used to determine theproper meaning of a patent claim in connection withprior art applied to that claim. That explanation willbe considered by the Office, when drafting the Officeaction, in determining the scope of the claims of thepatent which are subject to reexamination.

It is especially important that the examiner’s actionin reexamination be thorough and complete in viewof the finality of a reexamination proceeding and the

patent owner’s inability to file a continuationproceeding.

Normally, the title will not need to be changedduring reexamination. If a change of the title isnecessary, patent owner should be notified of theneed to provide an amendment changing the title asearly as possible in the prosecution as a part of anOffice Action. If all of the claims are found to bepatentable and a Notice of Intent to Issue Ex ParteReexamination Certificate has been or is to bemailed, a change to the title of the invention by theexaminer may only be done by a formal Examiner’sAmendment. Changing the title and merely initialingthe change is NOT permitted in reexamination.

Current procedure permits the examiner, in theexercise of professional judgment, to indicate that adiscussion with the patent owner’s representativemay result in agreement whereby the reexaminationproceeding may be placed in condition for issuinga Notice of Intent to Issue a ReexaminationCertificate (NIRC) and that the examiner will contactthe patent owner’s representative within about twoweeks. Under this practice the patent owner’srepresentative can be adequately prepared to conductsuch a discussion. Any resulting amendment maybe made either by the patent owner’s attorney oragent, or by the examiner in an examiner’samendment. It should be recognized that whenextensive amendments are necessary, it would bepreferable if the amendments were filed by the patentowner’s attorney or agent of record since this willprovide the file wrapper with a better record becausethe amendments would include the patent owner’sarguments for patentability as required by 37 CFR1.111.

I. PROCESS OF PREPARING THE ACTION

Upon receipt of a patent owner response to the actionby the CRU, or upon the expiration of the time tosubmit the response, the examiner will be notified.The examiner will prepare for and set up a panelreview conference as per MPEP § 2271.01, todiscuss the issuance of the Office action. Theexaminer may prepare the Office action after theconference, or may prepare the Office action priorto the conference and revise it as needed after the

2200-116Rev. 08.2017, January 2018


conference. See MPEP § 2271.01 for moreinformation on policies concerning conferences.

If the conference confirms the examiner’spreliminary decision to reject and/or allow theclaims, the Office action shall be issued and signedby the examiner, with the two or more otherconferees initialing the action (as “conferee”) toindicate their presence in the conference.

II. SAMPLE OFFICE ACTION

A sample of a first Office action in a reexaminationproceeding is set forth below.

Form PTOL-465. Ex ParteReexamination Communication

Transmittal Form

Rev. 08.2017, January 20182200-117


2200-118Rev. 08.2017, January 2018


Rev. 08.2017, January 20182200-119


2200-120Rev. 08.2017, January 2018


Rev. 08.2017, January 20182200-121


2263 Time for Response [R-07.2015] A shortened statutory period of two months willgenerally be set for filing a response to an Office

2200-122Rev. 08.2017, January 2018


action in an ex parte reexamination. An extensionof time may be requested under 37 CFR 1.550(c).See MPEP § 2265.

2264 Mailing of Office Action [R-07.2015]

Ex parte reexamination forms are structured so thatthe identifying information for the reexaminationfile and the correspondence address for the patentowner, which is the official correspondence addressof record in the file of the patent requested to bereexamined, can be printed on the forms. Usually,the official correspondence address of the patentowner, which is of record in the file of the patent, isthe mailing address of the patent owner's legalrepresentative. If there is no official correspondenceaddress of record in the patent file, the Office maytreat the mailing address of the patent owner as thecorrespondence address. Where there are multiplepatent owners, the Office may treat the mailingaddress of the first named patent owner of record asthe correspondence address of the patent owner. TheOffice will not engage in double correspondencewith more than one patent owner. See 37 CFR1.33(a). Copies of Office actions may be obtainedby access Public PAIR at the Office's websitewww.uspto.gov.

All actions in a third party requester ex partereexamination will have a copy mailed to the thirdparty requester. A transmittal form PTOL-465 mustbe used in providing the third party requester witha copy of each Office action. If there are more thanone third party requester for a single request, and ifa third party requester has not designated the mailingaddress of a registered patent practitioner as thecorrespondence address for the requester, the Officemay treat the mailing address of the first named thirdparty requester as the correspondence address forthe third party requester.

A completed transmittal form PTOL-465 will beprovided as needed for any third party requester, andthe appropriate address will be entered on it. Thenumber of transmittal forms provides a readyreference for the number of copies of each Officeaction to be made, and the transmittal form permitsuse of the window envelopes in mailing the copiesof the action to parties other than the patent owner.

2265 Extension of Time [R-07.2015]


*****







*****

I. EXTENSIONS UNDER 37 CFR 1.136 ARE NOTPERMITTED IN EX PARTE REEXAMINATIONPROCEEDINGS

The provisions of 37 CFR 1.136(a) and (b) are NOT applicable to ex parte reexamination proceedingsunder any circumstances. Public Law 97-247amended 35 U.S.C. 41 to authorize the Director toprovide for extensions of time to take action in an“application.” An ex parte reexamination proceedingdoes not involve an “application.” 37 CFR 1.136authorizes extensions of the time period only in an

Rev. 08.2017, January 20182200-123


https://www.uspto.gov

application in which an applicant must respond ortake action. There is neither an “application,” noran “applicant” involved in a reexaminationproceeding.

An extension of time in an ex parte reexaminationproceeding is requested pursuant to 37 CFR 1.550(c)which provides that any request for such anextension must specify the requested period ofextension and be accompanied by the fee set forthin 37 CFR 1.17(g).

Form paragraph 22.04.01 may be used to notify theparties in a reexamination proceeding the extensionof time practice in reexamination.

¶ 22.04.01 Extension of Time in Reexamination

Extensions of time under 37 CFR 1.136(a) will not be permittedin these proceedings because the provisions of 37 CFR 1.136apply only to “an applicant” and not to parties in a reexaminationproceeding. Additionally, 35 U.S.C. 305 requires thatreexamination proceedings “will be conducted with specialdispatch” ( 37 CFR 1.550(a)). Extensions of time in ex parte reexamination proceedings are provided for in 37 CFR 1.550(c).

II. FEE FOR AN EXTENSION OF TIME IN EXPARTE REEXAMINATION PROCEEDINGS

The fee set forth in 37 CFR 1.17(g) is the requiredfee for filing a request for an extension of time in areexamination proceeding. Unlike extension of timepractice under 37 CFR 1.136, the period of extensionis not determined by the amount of the fee paid. Thefee is for filing the request. Under 37 CFR 1.550(c),each request for an extension must specify therequested period of extension and must beaccompanied by the fee set forth in 37 CFR 1.17(g).

III. GENERAL GUIDANCE ON EXTENSIONS OFTIME IN EX PARTE REEXAMINATIONPROCEEDINGS

All requests by the patent owner for extensions oftime to respond to any Office action in an ex parte reexamination proceeding, including the submissionof a patent owner statement under 37 CFR 1.530,must be filed under 37 CFR 1.550(c), in writing, andwill be decided by the Director or SPRS of theCentral Reexamination Unit (CRU) or the Directorof a Technology Center (TC) conducting thereexamination proceeding, with the exception of an

automatic two-month extension of time to takefurther action which will be granted upon filing afirst timely response to a final Office action (seesubsection VII below; see also MPEP § 2272).Requests for an extension of time must be filed onor before the day on which action by the patentowner is due, and will be granted only for sufficientcause (see subsection VI below), except for requestsfor a “no cause” extension in patent owner requestedor Director ordered reexaminations as provided in37 CFR 1.550(c) (see subsection V.A. below). Patentowner requested reexaminations includereexaminations ordered under 35 U.S.C. 257. In nocase, other than the “after final” practice and the “nocause” extension in patent owner requested orDirector ordered reexaminations, will a mere filingof a request for extension of time automaticallyeffect any extension.

The time extended is added to the last calendar dayof the original period, as opposed to being added tothe day it would have been due when said last dayis a Saturday, Sunday, or federal holiday.

A request for an extension of time under 37 CFR1.550(c) must be submitted as a separate paper whichwill be forwarded to the CRU SPRS or TC Directorfor action. The certificate of mailing and thecertificate of transmission procedures (37 CFR 1.8)and the Priority Mail Express® mailing procedure(37 CFR 1.10) may be used to file a request forextension of time.

A request for an extension of time in an ex parte reexamination proceeding will be considered onlyafter the decision to grant or deny reexamination ismailed. Any request filed before that decision willbe denied. A request for an extension of the timeperiod to file a petition from the denial of a requestfor reexamination can only be entertained by filinga petition under 37 CFR 1.183 with the appropriatefee to waive the time provisions of 37 CFR 1.515(c).

Ex parte prosecution will generally be conductedby initially setting a two-month shortened period forresponse. See MPEP § 2263. In any ex parte reexamination ordered under 35 U.S.C. 304 (i.e.,patent owner requested, Director ordered, or thirdparty requested), the patent owner also will be givena two-month statutory period after the order for

2200-124Rev. 08.2017, January 2018


reexamination to file a statement. See 37 CFR1.530(b). However, in ex parte reexaminationsordered under 35 U.S.C. 257, the statute does notpermit the patent owner to file such a statement. SeeMPEP §§ 2818.01 and 2823.

The time period for filing a third party requesterreply under 37 CFR 1.535 to the patent owner’sstatement (i.e., two (2) months from the date ofservice of the statement on the third party requester)cannot be extended under any circumstances. Noextensions will be permitted to the time for filing areply under 37 CFR 1.535 by the requester becausethe two-month period for filing the reply is astatutory period. See 35 U.S.C. 304. A statutoryperiod for response cannot be waived. See MPEP §2251.

IV. THIRD PARTY REQUESTED EX PARTEREEXAMINATIONS

The extension of time practice under 37 CFR1.550(c) for patent owner responses in an ex partereexamination proceeding which has been requestedby a third party, i.e., a third party requested ex partereexamination, remains unchanged under the rulesand practices adopted in view of the Patent LawTreaty (PLT). A third party requested ex partereexamination is initiated by a party other than thepatent owner or the Office. Thus, it is an “inter partesproceeding” under PLT Rule 12(5)(a)(vi). For thisreason, the minimum reply period provisions of thePLT do not apply to third party requested ex partereexaminations.

The patent owner must file a written requestspecifying the requested period for extension (e.g.,one month), and must file the request, the requiredfee, and the response within the specified period forextension. A request for an extension, which mustbe accompanied by the required fee, may be filedwith or without the response.

A. Requirements for a Showing of Sufficient Causeand for a Reasonable Time

Any request for an extension of time for a responseby the patent owner in a third party requested exparte reexamination must include a showing of

sufficient cause, and the requested extension mustbe for a reasonable time. See subsection VI below.

“No cause” extensions of time for up to two monthsfor filing a response (see subsection V.A. below),or for filing an appeal brief (see also subsectionIV.C. below) are not available, because the extensionof time provisions of the PLT do not apply to thirdparty requested reexaminations. The mere filing ofa written request for an extension of time and therequired fee in a third party requested reexaminationwill not result in an extension of time; i.e., will noteffect the extension.

B. Time for Filing

37 CFR 1.550(c) continues to provide that anyrequest for an extension in a third party requested ex parte reexamination must be filed on or beforethe day on which action by the patent owner is due.Because the extension of time practice for patentowner responses in third party requestedreexaminations remains unchanged, “the day onwhich action by the patent owner is due” continuesto be no later than the day before the date ofexpiration of the time period for response set in theOffice action. For example, if the Office action setsa one-month period for response, any request for anextension of time must be filed no later than onemonth from the mail date of the Office action.

C. Extension of Time for Filing a Notice of Appeal,an Appeal Brief, or a Reply Brief

Extensions of time for filing a notice of appeal tothe Patent Trial and Appeal Board (PTAB), an appealbrief, or a reply brief, are governed by 37 CFR1.550(c).

A notice of appeal is governed by 37 CFR 1.550(c)in the same manner as a response.

For the purposes of requesting an extension of timefor filing an appeal brief or a reply brief, the “theday on which action by the patent owner is due” setforth in 37 CFR 1.550(c) is the last day of the timeperiod permitted to file the brief. For example, 37CFR 41.35(a) requires that an appeal brief must befiled within two months from the date of the appeal.See MPEP § 1205. 37 CFR 41.41(a) governs the

Rev. 08.2017, January 20182200-125


time for filing a reply brief. See MPEP § 1208. Seealso MPEP § 2274, subsection III.

The request for an extension of time to file a noticeof appeal, an appeal brief, or a reply brief mustinclude a showing of sufficient cause, and theextension must be for a reasonable time. Seesubsection VI below. The request must be filed as aseparate paper.

See MPEP § 1216 for specific guidance on the timefor filing the notice and reasons of appeal to the U.S.Court of Appeals for the Federal Circuit or forcommencing a civil action. See also MPEP § 2279.

V. PATENT OWNER REQUESTED ANDDIRECTOR ORDERED EX PARTEREEXAMINATIONS

The extension of time practice in ex partereexaminations which have been requested by thepatent owner (patent owner requestedreexaminations), and in ex parte reexaminationsinitiated by the Director pursuant to 35 U.S.C. 302(see MPEP § 2239) (Director orderedreexaminations), has been revised as a result of theimplementation of the Patent Law Treaty (PLT). See Changes to Implement the Patent Law Treaty, 78FR 62368 (October 21, 2013)(final rule).

Because a supplemental examination of a patent canonly be requested by a patent owner (see 37 CFR1.601), any ex parte reexamination ordered under35 U.S.C. 257 as a result of a supplementalexamination is considered to be a “patent ownerrequested” ex parte reexamination for the purposesof 37 CFR 1.550(c).

For specific guidance on extension of time practicein ex parte reexaminations which have beenrequested by a third party (third party requestedreexaminations), see subsection IV above.

A. “No Cause” Extensions of Time for Up to TwoMonths from Response Period Set in Office Action

Effective December 18, 2013, 37 CFR 1.550(c) wasamended to omit the requirement, in patent ownerrequested or Director ordered ex partereexamination proceedings, for a showing of

sufficient cause in a request for an extension of timefor up to two months from the time period set in theOffice action, i.e., a “no cause” extension.

As in extension of time practice under 37 CFR 1.136for applications, a patent owner is not required toprovide a reason why the extension is requested (i.e.,the “cause” of the need for the extension) in a requestfor an extension of time for up to two months fromthe time period for response set in the Office action.However, unlike extension of time practice under37 CFR 1.136 for applications, the mere filing ofthe fee for the extension of time is insufficient. Thepatent owner must timely file, in addition to theresponse to the Office action: (i) a written requestfor an extension of time which specifies therequested period of extension, i.e., for up to twomonths from the response period set in the Officeaction; and (ii) the fee set forth in 37 CFR 1.17(g). The written request must be filed as a separatepaper. The written request for the extension and thefee may be filed with or without the response.However, the request for the extension, the requiredfee, and the response must all be timely filed.

The patent owner must, in its written request, specifythe requested period for extension (e.g., one monthor two months), and must file the request and therequired fee within the specified period forextension. See subsection V.C below. The Officemay then grant an extension for the time specified,up to a period of two months.

B. Extensions of Time for More than Two Monthsfrom Response Period Set in Office Action

A request for an extension for more than two monthsfrom the time period for response set in the Officeaction must include a showing of sufficient cause,and the extension must be for a reasonable time. Thetimely filing of a written request for an extensionfor more than two months from the time period forset in the Office action and the required fee, alone,will not result in an extension of time; i.e., will noteffect the extension. See subsection VI below.

2200-126Rev. 08.2017, January 2018


C. Time for Filing

1. “No Cause” Extension of Time

37 CFR 1.550(c) provides that any request in a patentowner requested or Director ordered ex partereexamination for an extension of time for up to twomonths from the time period set in the Office action,i.e., a “no cause” extension, must be filed no laterthan two months from the expiration of the timeperiod set in the Office action. The patent ownermust specify the requested period of extension, notto exceed two months from the time period set inthe Office action. The patent owner must file therequest and the required fee within the specifiedperiod for extension.

If, for example, the Office action sets a two-monthperiod for response, and if the patent owner requestsa two-month extension, the patent owner is permittedto file the request for such an extension up to the lastday of the fourth month from the mail date of theOffice action. However, if the Office action sets atwo-month period for response, and if the patentowner requests only a one-month extension, thepatent owner must file the request for the extensionby the last day of the third month from the mail dateof the Office action.

2. Extensions of Time for More than Two Months

37 CFR 1.550(c) provides that any request in a patentowner requested or Director ordered ex partereexamination for an extension of time for more thantwo months from the time period set in the Officeaction must be filed on or before the day on whichaction by the patent owner is due.

Patent owners are cautioned that a request for anextension for more than two months from the timeperiod set in the Office Action will only be grantedin extraordinary circumstances. See subsection VIbelow.

If the patent owner wishes to request an extensionfor more than two months, and if the patent ownerhas timely filed one or more requests for anextension of time, the total of which does not exceedtwo months from the time period set in the Officeaction, i.e., “no cause” extensions, then “the day on

which action by the patent owner is due” is theexpiration of the total of the period(s) of extensionspecified in the request(s) for the “no cause”extension, not to exceed two months. Thus, if thepatent owner wishes to request an extension for morethan two months, the patent owner must file, no laterthan two months from the expiration of the timeperiod set in the Office action: 1) one or more writtenrequests specifying a period of extension, the totalof which does not exceed two months from the timeperiod set in the Office action, i.e., “no cause”extensions, and the required fee for each request;and 2) an additional written request specifying aperiod of extension, which is more than two monthsfrom the time period set in the Office action, and anadditional required fee. The request for an extensionfor more than two months must also include ashowing of sufficient cause, and must be for areasonable time. See subsection VI below. A requestfor an extension for more than two months may befiled in the same paper as a request for a “no cause”extension for up to two months, or each request maybe filed separately. Any request for an extension oftime, however, must be filed separately from anyother paper, such as a response or an appeal brief.

For example, if the Office action sets a two-monthtime period for response, any request for anextension of time for two months must be filed nolater than four months from the mail date of theOffice action, and any request for an extension oftime for more than two months must also be filedno later than four months from the mail date of theOffice action. However, if the Office action onlysets a one-month time period for response (forexample, in situations where a lack of response doesnot result in a loss of rights), any request for anextension of time for two months must be filed nolater than three months from the mail date of theOffice action, and any request for an extension oftime for more than two months must also be filedno later than three months from the mail date of theOffice action.

3. Specific Examples

Example 1

The patent owner, in a patent owner requested reexamination,wishes to file a written request specifying a two-month

Rev. 08.2017, January 20182200-127


extension, i.e., a “no cause” extension. The Office action sets atwo-month period for response.

The patent owner must file the written request accompanied bythe required fee, and the required response, within four monthsof the mail date of the Office action.

Example 2

The patent owner, in a patent owner requested reexamination,wishes to file a written request specifying only a one-monthextension, i.e., a “no cause” extension. The Office action sets atwo-month period for response.

The patent owner must file the written request accompanied bythe required fee, and the required response, within three monthsof the mail date of the Office action.

Example 3

The patent owner, in a patent owner requested reexamination,wishes to file a written request specifying only a one-monthextension, i.e., a “no cause” extension. The Office action sets atwo-month period for response. The patent owner timely files,within three months from the mail date of the Office action, therequest for the one-month extension and the required fee, butfails to file the response.

The patent owner may, in order to timely file the response, fileanother request for a one-month “no-cause” extension, anotherrequired fee, and the response within four months from the maildate of the Office action.

Example 4

The patent owner, in a patent owner requested reexamination,wishes to file a written request specifying only a one-monthextension, i.e., a “no cause” extension. The Office action sets atwo-month period for response. The patent owner files a requestfor only a one-month extension and the required fee (with orwithout the response) after three months from the mail date ofthe Office action.

The request will be dismissed as untimely even if it is filedwithin four months from the mail date of the Office action. Insuch a case, a subsequent written request for an extension oftwo months from the original time period set in the Office action,accompanied by the required fee, may be granted if it is filedwithin four months from the mail date of the Office action.

Example 5

The patent owner, in a patent owner requested reexamination,wishes to file a request for an extension for three months, i.e.,more than two months from the time period set in the Officeaction. (Such a request will only be granted in extraordinarycircumstances. See subsection VI below.) The Office action setsa two-month time period for response.

The patent owner may file, up to the last day of the fourth monthfrom the mail date of the Office action: 1) a first request for atwo-month “no cause” extension and the required fee; and 2) asecond request specifying an additional one-month extension,which is more than two months from the time period set in theOffice action, a showing of sufficient cause, and a secondrequired fee. If the second request is granted (which would onlyoccur in extraordinary circumstances – see subsection VI.below), the required reply must be filed on or before the lastday of the fifth month. If the second request is not granted, areply filed after the last day of the fourth month would beuntimely and would not be entered.

Alternatively, the patent owner may file, up to the last day ofthe third month from the mail date of the Office action: 1) arequest for a one-month “no cause” extension and the requiredfee; and 2) a second request specifying an additional two-monthextension, which is more than two months from the time periodset in the Office action, a showing of sufficient cause, and asecond required fee. If the second request is granted (whichwould only occur in extraordinary circumstances – seesubsection VI below), the required reply must be filed on orbefore the last day of the fifth month. If the second request isnot granted, a reply filed after the last day of the third monthwould be untimely and would not be entered.

D. Extension of Time for Filing a Notice of Appeal,an Appeal Brief, or a Reply Brief

Extensions of time for filing a notice of appeal tothe Board, an appeal brief, or a reply brief, aregoverned by 37 CFR 1.550(c). The request must befiled as a separate paper.

A notice of appeal is governed by 37 CFR 1.550(c)in the same manner as a response.

For the purposes of requesting an extension of timefor filing an appeal brief or a reply brief, the “timeset in the Office action” set forth in 37 CFR 1.550(c)is the time permitted to file the brief. The “day onwhich action by the patent owner is due” set forthin 37 CFR 1.550(c) is the last day of the time periodpermitted to file the brief. For example, 37 CFR41.37(a) requires that an appeal brief must be filedwithin two months from the date of the appeal. SeeMPEP § 1205. 37 CFR 41.41(a) governs the timefor filing a reply brief. See MPEP § 1208. See alsoMPEP § 2274, subsection III.

In patent owner requested or Director orderedreexamination proceedings, the patent owner mayrequest an extension of time for filing an appeal briefor a reply brief for up to two months from the time

2200-128Rev. 08.2017, January 2018


permitted to file the brief, without providing ashowing of sufficient cause, i.e., a “no cause”extension. See subsection V.A above. For example,since the time permitted to file an appeal brief is twomonths from the date of the appeal, any request foran extension of time for two months must be filedno later than four months from the date of the appeal.See subsection V.C. above.

The patent owner must, in its written request, specifythe requested period for extension (e.g., one monthor two months), and must file the request and therequired fee within the specified period forextension. For example, if the patent owner onlyspecifies a one-month extension in its request, thepatent owner must file, in addition to an appeal brief,the written request for the extension and the requiredfee within three months from the date of the appeal.The request for the extension and the fee may befiled with or without the brief. For further examples,see subsection V.C. above.

However, the timely filing of a written request foran extension for more than two months from thetime permitted to file the brief and the required fee,alone, will not result in an extension of time; i.e.,will not effect the extension. The request for suchan extension must include a showing of sufficientcause. In addition, the extension must be for areasonable time. Such requests will only be grantedin extraordinary circumstances. See subsection VIbelow.

See MPEP § 1216 et seq. for specific guidance onthe time for filing the notice and reasons of appealto the U.S. Court of Appeals for the Federal Circuitor for commencing a civil action. See also MPEP §2279.

VI. REQUIREMENTS FOR A SHOWING OFSUFFICIENT CAUSE AND AN EXTENSION FORA REASONABLE TIME

Requests for any extension of time in third partyrequested reexaminations, and requests for anextension of more than two months from the timeperiod set in the Office action in patent ownerrequested or Director ordered reexaminations, mustinclude a showing of sufficient cause, and theextension must be for a reasonable time.

Any evaluation of whether sufficient cause has beenshown for an extension must balance the need toprovide the patent owner with a fair opportunity topresent an argument against any attack on the patent,and the requirement of the statute (35 U.S.C. 305)that the proceeding be conducted with specialdispatch.

Any request for an extension of time, except for the“no cause” extension in patent owner requested orDirector ordered reexamination provided in 37 CFR1.550(c), must fully state the reasons therefor. Thereasons must include a statement of what action thepatent owner has taken to provide a response as ofthe date the request for extension is submitted, andwhy, in spite of the action taken thus far, therequested additional time is needed. The statementmust include a factual accounting of reasonablydiligent behavior by all those responsible forpreparing a response to the outstanding Office actionwithin the statutory time period.

In patent owner requested and Director orderedreexaminations, the patent owner already has theopportunity to obtain an extension of time for up totwo months from the time period set in the Officeaction, without a showing of sufficient cause, i.e., a“no cause” extension. For this reason, requests foran extension of more than two months in patentowner requested or Director ordered reexaminationsare expected to be rare and will only be granted inextraordinary situations.

However, in third party requested ex partereexaminations, a first request for an extension oftime will generally be granted if a sufficient causeis shown, and for a reasonable time specified —usually one month. The reasons stated in the requestwill be evaluated by the CRU SPRS or TC Director,and the requests will be favorably considered wherethere is a factual accounting of reasonably diligentbehavior by all those responsible for preparing aresponse within the statutory time period. Secondor subsequent requests for an extension of time andrequests for an extension of more than one monthin third party requested reexaminations will only begranted in extraordinary situations.

A request for an extension of the time period to filea petition from the denial of a request for

Rev. 08.2017, January 20182200-129


reexamination can only be entertained by filing apetition under 37 CFR 1.183 with the appropriatefee to waive the time provisions of 37 CFR 1.515(c).Since the examination process (for reexaminationsordered under 35 U.S.C. 304 or under 35 U.S.C.257) is intended to be essentially ex parte , the thirdparty requesting reexamination can anticipate thatrequests for an extension of time to file a petitionunder 37 CFR 1.515(c) will be granted only inextraordinary situations.

¶ 22.04.01 Extension of Time in Reexamination

Extensions of time under 37 CFR 1.136(a) will not be permittedin these proceedings because the provisions of 37 CFR 1.136apply only to “an applicant” and not to parties in a reexaminationproceeding. Additionally, 35 U.S.C. 305 requires thatreexamination proceedings “will be conducted with specialdispatch” ( 37 CFR 1.550(a)). Extensions of time in ex parte reexamination proceedings are provided for in 37 CFR 1.550(c).

VII. FINAL ACTION — TIME FOR RESPONSE

In any ex parte reexamination proceeding, includingthird party requested reexaminations and patentowner requested or Director ordered reexaminations,the filing of a timely first response to a final rejectionhaving a shortened statutory period for response isconstrued as including a request to extend theshortened statutory period for an additional twomonths, but in no case may the period for responseexceed six months from the date of the final action.Even if previous extensions have been granted, theprimary examiner is authorized to grant the requestfor extension of time which is implicit in the filingof a timely first response to a final rejection. Thefiling of any timely first response to a final rejectionwill be construed as including a request to extendthe shortened statutory period for an additional twomonths, even if the response is informal and/or notsigned. An object of this practice is to obviate thenecessity for appeal merely to gain time to considerthe examiner’s position in reply to a response timelyfiled after final rejection. Accordingly, the shortenedstatutory period for response to a final rejection towhich a proposed first response has been receivedwill be extended two months. Note that the Officepolicy of construing a response after final asinherently including a request for a two-monthextension of time applies only to the first responseto the final rejection. This automatic two-monthextension of time does not apply once the notice of

appeal has been filed. In that instance, the patentowner will be notified that an appeal brief is due twomonths from the date of the notice of appeal to avoiddismissal of the appeal, and extensions of time aregoverned by 37 CFR 1.550(c).

The patent owner is entitled to know the examiner’sruling on a timely response filed after final rejectionbefore being required to file a notice of appeal.Notification of the examiner’s ruling should reachthe patent owner with sufficient time for the patentowner to consider the ruling and act on it.

The present after final practice of providing anautomatic two-month extension for filing a responseto a final Office action is in conformance with theminimum reply period provisions of the Patent LawTreaty (PLT). For this reason, additional “no cause”extensions of time for filing a response to a finalOffice action in patent owner requested or Directorordered reexaminations are not available. Anyextensions of time for more than two months fromthe time for response set in the final rejection mustprovide a showing of sufficient cause in accordancewith 37 CFR 1.550(c)(3). See subsection VI above.

In those situations where the advisory action cannotbe mailed in sufficient time for the patent owner toconsider the examiner’s position with respect to theamendment after final rejection (or other patentowner paper) and act on it before termination of theprosecution of the proceeding, the granting ofadditional time to complete the response to the finalrejection or to take other appropriate action wouldbe appropriate. See Theodore Groz & Sohne & ErnstBechert Nadelfabrik KG v. Quigg, 10 USPQ2d 1787(D.D.C. 1988). The additional time should be grantedby the examiner, and the time granted should be setforth in the advisory Office action. The advisoryaction form, Ex Parte Reexamination AdvisoryAction Before the Filing of an Appeal Brief(PTOL-467), states that “THE PERIOD FORRESPONSE IS EXTENDED TO RUN ___MONTHS FROM THE MAILING DATE OF THEFINAL REJECTION.” The blank before“MONTHS” should be filled in with an integer (2,3, 4, 5, or 6); fractional months should not beindicated. In no case can the period for response tothe final rejection be extended to exceed six monthsfrom the mailing date of the final rejection. An

2200-130Rev. 08.2017, January 2018


appropriate response (e.g., a second or subsequentamendment or a notice of appeal) must be filedwithin the extended period for response. If the patentowner elects to file a second or subsequentamendment, it must place the reexamination incondition for allowance. If the amendment does notplace the reexamination in condition for allowance,the prosecution of the reexamination proceeding willstand terminated under 37 CFR 1.550(d) unless anappropriate notice of appeal was filed before theexpiration of the response period.

VIII. EXTENSIONS OF TIME TO SUBMITAFFIDAVITS OR DECLARATIONS AFTER FINALREJECTION

Frequently, patent owners request an extension oftime, stating as a reason therefor that more time isneeded in which to submit an affidavit or declaration.When such a request is filed after final rejection, thegranting of the request for extension of time iswithout prejudice to the right of the examiner toquestion why the affidavit or declaration is nownecessary and why it was not earlier presented. See37 CFR 1.116(e). If the patent owner’s showing isinsufficient, the examiner may deny entry of theaffidavit, notwithstanding the previous grant of anextension of time to submit it. The grant of anextension of time in these circumstances servesmerely to keep the prosecution of the proceedingfrom becoming terminated while allowing the patentowner the opportunity to present the affidavit or totake other appropriate action. Moreover, prosecutionof the reexamination to save it from termination mustinclude such timely, complete and proper action asrequired by 37 CFR 1.113. The admission of theaffidavit or declaration for purposes other thanallowance of the claims, or the refusal to admit theaffidavit or declaration, and any proceedings relativethereto, shall not operate to save the prosecution ofthe proceeding from termination.

Implicit in the above practice is the fact thataffidavits or declarations submitted after finalrejection are subject to the same treatment asamendments submitted after final rejection. See Inre Affidavit Filed After Final Rejection, 152 USPQ292, 1966 C.D. 53 (Comm’r Pat. 1966).

2266 Responses [R-07.2015]

37 CFR 1.111 Reply by applicant or patent owner to anon-final Office action.

(a)(1) If the Office action after the first examination(§ 1.104) is adverse in any respect, the applicant or patent owner,if he or she persists in his or her application for a patent orreexamination proceeding, must reply and requestreconsideration or further examination, with or withoutamendment. See §§ 1.135 and 1.136 for time for reply to avoidabandonment.

(a)(2) Supplemental replies.

(i) A reply that is supplemental to a reply that isin compliance with § 1.111(b) will not be entered as a matterof right except as provided in paragraph (a)(2)(ii) of this section.The Office may enter a supplemental reply if the supplementalreply is clearly limited to:

(A) Cancellation of a claim(s);

(B) Adoption of the examiner suggestion(s);

(C) Placement of the application in conditionfor allowance;

(D) Reply to an Office requirement made afterthe first reply was filed;

(E) Correction of informalities (e.g.,typographical errors); or

(F) Simplification of issues for appeal.

(ii) A supplemental reply will be entered if thesupplemental reply is filed within the period during which actionby the Office is suspended under § 1.103(a) or (c).

(b) In order to be entitled to reconsideration or furtherexamination, the applicant or patent owner must reply to theOffice action. The reply by the applicant or patent owner mustbe reduced to a writing which distinctly and specifically pointsout the supposed errors in the examiner’s action and must replyto every ground of objection and rejection in the prior Officeaction. The reply must present arguments pointing out thespecific distinctions believed to render the claims, includingany newly presented claims, patentable over any appliedreferences. If the reply is with respect to an application, a requestmay be made that objections or requirements as to form notnecessary to further consideration of the claims be held inabeyance until allowable subject matter is indicated. Theapplicant’s or patent owner’s reply must appear throughout tobe a bona fide attempt to advance the application or thereexamination proceeding to final action. A general allegationthat the claims define a patentable invention without specificallypointing out how the language of the claims patentablydistinguishes them from the references does not comply withthe requirements of this section.

(c) In amending in reply to a rejection of claims in anapplication or patent under reexamination, the applicant or patentowner must clearly point out the patentable novelty which heor she thinks the claims present in view of the state of the artdisclosed by the references cited or the objections made. Theapplicant or patent owner must also show how the amendmentsavoid such references or objections.

Rev. 08.2017, January 20182200-131



(a) All ex parte reexamination proceedings, including anyappeals to the Board of Patent Appeals and Interferences, willbe conducted with special dispatch within the Office. Afterissuance of the ex parte reexamination order and expiration ofthe time for submitting any responses, the examination will beconducted in accordance with §§ 1.104 through 1.116 and willresult in the issuance of an ex parte reexamination certificateunder § 1.570.

(b) The patent owner in an ex parte reexaminationproceeding will be given at least thirty days to respond to anyOffice action. In response to any rejection, such response mayinclude further statements and/or proposed amendments or newclaims to place the patent in a condition where all claims, ifamended as proposed, would be patentable.







(d) If the patent owner fails to file a timely and appropriateresponse to any Office action or any written statement of aninterview required under § 1.560(b), the prosecution in the exparte reexamination proceeding will be a terminatedprosecution, and the Director will proceed to issue and publish

a certificate concluding the reexamination proceeding under§ 1.570 in accordance with the last action of the Office.

(e) If a response by the patent owner is not timely filed inthe Office, a petition may be filed pursuant to § 1.137 to revivea reexamination prosecution terminated under paragraph (d) ofthis section if the delay in response was unintentional.


(g) The active participation of the ex parte reexaminationrequester ends with the reply pursuant to § 1.535, and no furthersubmissions on behalf of the reexamination requester will beacknowledged or considered. Further, no submissions on behalfof any third parties will be acknowledged or considered unlesssuch submissions are:

(1) in accordance with § 1.510 or § 1.535; or

(2) entered in the patent file prior to the date of theorder for ex parte reexamination pursuant to § 1.525.

(h) Submissions by third parties, filed after the date of theorder for ex parte reexamination pursuant to § 1.525, must meetthe requirements of and will be treated in accordance with §1.501(a).

(i) A petition in an ex parte reexamination proceeding mustbe accompanied by the fee set forth in § 1.20(c)(6) except forpetitions under paragraph (c) of this section to extend the periodfor response by a patent owner, petitions under paragraph (e)of this section to accept a delayed response by a patent owner,petitions under § 1.78 to accept an unintentionally delayedbenefit claim, and petitions under § 1.530(l) for correction ofinventorship in a reexamination proceeding.

Pursuant to 37 CFR 1.550(a):

“After issuance of the ex parte reexaminationorder and expiration of the time for submittingany responses, the examination will beconducted in accordance with §§ 1.104 through1.116…”

Accordingly, the provisions of 37 CFR 1.111, otherthan the provision in 37 CFR 1.111(a)(1) to “see . .. [37 CFR] 1.136 for time for reply to avoidabandonment”, apply to the response by a patentowner in a reexamination proceeding.

The certificate of mailing and certificate oftransmission procedures (37 CFR 1.8), and thePriority Mail Express® mailing procedure (37 CFR

2200-132Rev. 08.2017, January 2018


1.10), may be used to file any response in a pending ex parte reexamination proceeding.

The patent owner is required to serve a copy of anyresponse made in the reexamination proceeding onthe third party requester. 37 CFR 1.550(f). SeeMPEP § 2266.03 for service of patent ownerresponses to an Office action.

The patent owner will normally be given a periodof 2 months to respond to the Office action. Anextension of time can be obtained only in accordancewith 37 CFR 1.550(c). Note that 37 CFR 1.136 doesnot apply in reexamination proceedings.

If the patent owner fails to file a timely andappropriate response to any Office action, theprosecution of the reexamination proceeding will beterminated, unless the response is “not fullyresponsive” as defined in MPEP § 2266.01 or is an“informal submission” as defined in MPEP §2266.02. After the prosecution of the proceeding isterminated, the Director will proceed to issue andpublish a reexamination certificate.

Pursuant to 37 CFR 1.111(a)(2), a response that issupplemental to a response that is in compliancewith 37 CFR 1.111(b) will not be entered as a matterof right. The Office may enter a supplementalresponse if the supplemental response is clearlylimited to: (A) cancellation of a claim(s); (B)adoption of the examiner suggestion(s); (C)placement of the proceeding in condition for Noticeof Intent to Issue Reexamination Certificate (NIRC);(D) a response to an Office requirement made afterthe first response was filed; (E) correction ofinformalities (e.g., typographical errors); or (F)simplification of issues for appeal. When asupplemental response is filed in sufficient time tobe entered into the reexamination proceeding beforethe examiner considers the prior response, theexaminer may approve the entry of a supplementalresponse if, after a cursory review, the examinerdetermines that the supplemental response is limitedto meeting one or more of the conditions set forthin 37 CFR 1.111(a)(2)(i).

A supplemental response, which has not beenapproved for entry, will not be entered when aresponse to a subsequent Office action is filed, even

if there is a specific request for its entry in thesubsequent response. If a patent owner wishes tohave the unentered supplemental response consideredby the examiner, the patent owner must include thecontents of the unentered supplemental response ina proper response to a subsequent Office action.

The patent owner in an ex parte reexaminationproceeding must not file papers on behalf of a thirdparty. 37 CFR 1.550(g). If a third party paperaccompanies, or is submitted as part of a timely filedresponse, the response and the third party paper areconsidered to be an improper submission under 37CFR 1.550(g), and the entire submission shall bereturned to the patent owner, since the Office willnot determine which portion of the submission is thethird party paper. The third party paper will not beconsidered. The decision returning the improperresponse and the third party paper should providean appropriate extension of time under 37 CFR1.550(c) to refile the patent owner response withoutthe third party paper. See MPEP § 2254 and § 2267.

Patent owner cannot submit an application data sheet(ADS) in a reexamination proceeding except asprovided in MPEP § 2258.02.

2266.01 Submission Not Fully Responsive toNon-Final Office Action [R-08.2017]

A response by the patent owner will be considerednot fully responsive to a non-final Office actionwhere:

(A) a bona fide response to an examiner’snon-final action is filed;

(B) before the expiration of the permissibleresponse period, including any extensions of theresponse period pursuant to 37 CFR 1.550(c);

(C) but through an apparent oversight orinadvertence, some point necessary to a full responsehas been omitted (i.e., appropriate consideration ofa matter that the action raised, or compliance witha requirement made by the examiner, has beenomitted).

Where patent owner’s amendment or response priorto final rejection is not fully responsive to an Officeaction in a reexamination and meets all of (A)

Rev. 08.2017, January 20182200-133


through (C) above, the prosecution of thereexamination proceeding should not be terminated;but, rather, a practice similar to that of 37 CFR1.135(c) (which is directed to applications) may befollowed. The examiner may treat a patent ownersubmission which is not fully responsive to anon-final Office action by:

(A) waiving the deficiencies (if not serious) inthe response and acting on the patent ownersubmission;

(B) accepting the amendment as a response tothe non-final Office action but notifying the patentowner (via a new Office action setting a new timeperiod for response) that the omission must besupplied; or

(C) notifying the patent owner that the responsemust be completed within the remaining period forresponse to the non-final Office action (or withinany extension pursuant to 37 CFR 1.550(c)) to avoidtermination of the prosecution of the proceedingunder 37 CFR 1.550(d). This third alternative shouldonly be used in the very unusual situation wherethere is sufficient time remaining in the period forresponse (including extensions under 37 CFR1.550(c)), as is discussed below.

Where a patent owner submission responds to therejections, objections, or requirements in a non-finalOffice action and is a bona fide attempt to advancethe reexamination proceeding to final action, butcontains a minor deficiency (e.g., fails to treat everyrejection, objection, or requirement), the examinermay simply act on the amendment and issue a new(non-final or final) Office action. The new Officeaction may simply reiterate the rejection, objection,or requirement not addressed by the patent ownersubmission, or the action may indicate that suchrejection, objection, or requirement is no longerapplicable. In the new Office action, the examinerwill identify the part of the previous Office actionwhich was not responded to and make it clear whatis needed. Obviously, this course of action wouldnot be appropriate in instances in which a patentowner submission contains a serious deficiency (e.g.,the patent owner submission does not appear to havebeen filed in response to the non-final Office action).

Where patent owner’s submission contains a seriousdeficiency (i.e., omission) to be dealt with prior to

issuing an action on the merits and the period forresponse has expired, or there is insufficient timeremaining to take corrective action before theexpiration of the period for response, the patentowner should be notified of the deficiency and whatis needed to correct the deficiency, and given a newtime period for response. The patent owner mustsupply the omission within the new time period forresponse (or any extensions under 37 CFR 1.550(c)thereof) to avoid termination of the prosecution ofthe proceeding under 37 CFR 1.550(d). The patentowner may also file a further response as permittedunder 37 CFR 1.111. This is analogous to 37 CFR1.135(c) for an application.

Form paragraph 22.14 may be used where a bonafide response is not entirely responsive to a non-finalOffice action.

¶ 22.14 Submission Not Fully Responsive to Non-FinalOffice Action - Ex Parte Reexamination

The communication filed on [1] is not fully responsive to theprior Office action. [2]. The response appears to be bona fide,but through an apparent oversight or inadvertence, considerationof some matter or compliance with some requirement has beenomitted. Patent owner is required to deal with the omission tothereby provide a full response to the prior Office action.

A shortened statutory period for response to this letter is set toexpire [3] from the mailing date of this letter. If patent ownerfails to timely deal with the omission and thereby provide a fullresponse to the prior Office action, prosecution of the presentreexamination proceeding will be terminated. 37 CFR 1.550(d).

Examiner Note:

1. In bracket 2, the examiner should explain the nature of theomitted point necessary to complete the response, i.e., what partof the Office action was not responded to. The examiner shouldalso make it clear what is needed to deal with the omitted point.

2. In bracket 3, if the reexamination was requested by a thirdparty requester, the examiner should insert “ONE MONTH orthirty days, whichever is longer”. If the reexamination wasrequested by the patent owner, if the reexamination was orderedunder 35 U.S.C. 257, or if it is a Director-ordered reexamination,the examiner should insert “TWO MONTHS”.

3. This paragraph may be used for a patent ownercommunication that is not completely responsive to theoutstanding (i.e., prior) Office action. See MPEP § 2266.01.

4. This practice does not apply where there has been adeliberate omission of some necessary part of a completeresponse.

5. This paragraph is only used for a response made prior tofinal rejection. After final rejection, an advisory Office actionand Form PTOL 467 should be used, and the patent ownerinformed of any non-entry of the amendment.

2200-134Rev. 08.2017, January 2018


In the very unusual situation where there is sufficienttime remaining in the period for response (includingextensions under 37 CFR 1.550(c)), the patent ownermay simply be notified that the omission must besupplied within the remaining time period forresponse. This notification should be made, first bytelephone, or by email if authorized by the patentowner and contact could not be made via telephone.An interview summary record (see MPEP § 2281)must be completed and entered into the file of thereexamination proceeding to provide a record ofsuch notification. If the examiner is not successfulin contacting the patent owner, the procedure setforth above should be followed.

The practice of giving the patent owner a time periodto supply an omission in a bona fide response(which is analogous to that set forth in 37 CFR1.135(c) for an application) does not apply wherethere has been a deliberate omission of somenecessary part of a complete response; rather, it isapplicable only when the missing matter or lack ofcompliance is considered by the examiner as being“inadvertently omitted.” Once an inadvertentomission is brought to the attention of the patentowner, the question of inadvertence no longer exists.Therefore, a second Office action giving anothernew time period to supply the omission would notbe appropriate. However, if patent owner’s responseto the notification of the omission raises a differentissue of a different inadvertently omitted matter, asecond Office action may be given.

This practice authorizes, but does not require, anexaminer to give the patent owner a new time periodto supply an omission. Thus, where the examinerconcludes that the patent owner is attempting toabuse the practice to obtain additional time for filinga response, the practice should not be followed. Iftime still remains for response, the examiner maytelephone the patent owner and inform the patentowner that the response must be completed withinthe period for response to the non-final Office actionor within any extension pursuant to 37 CFR 1.550(c)to avoid termination of the prosecution of thereexamination proceeding.

The practice of giving the patent owner a time periodto supply an omission in a bona fide response doesnot apply after a final Office action. If a bona fide

response to an examiner’s action is filed after finalrejection (before the expiration of the permissibleresponse period), but through an apparent oversightor inadvertence, some point necessary to fullyrespond has been omitted, the examiner should notissue (to the patent owner) a notice of failure to fullyrespond. Rather, an advisory Office action (formPTOL-467) should be issued with an explanation ofthe omission. The time period set in the finalrejection continues to run and is extended by twomonths if the response is the first response after thefinal rejection in accordance with the guidelines setforth in MPEP § 2265. See also MPEP § 2272.

Amendments after final rejection are approved forentry only if they place the proceeding in conditionfor issuance of a reexamination certificate or in betterform for appeal. Otherwise, they are not approvedfor entry. See MPEP § 714.12 and § 714.13. Thus,an amendment after final rejection should be deniedentry if some point necessary for a completeresponse under 37 CFR 1.113 was omitted, evenwhere the omission was through an apparentoversight or inadvertence. Where a submission afterfinal Office action (e.g., an amendment filed under37 CFR 1.116) does not place the proceeding incondition for issuance of a reexamination certificate,the period for response continues to run until aresponse under 37 CFR 1.113 (i.e., a notice of appealor an amendment that places the proceeding incondition for issuance of a reexamination certificate)is filed. Where a submission after appeal (e.g., anamendment filed under 37 CFR 41.33) does not placethe proceeding in condition for issuance of areexamination certificate, the period for filing anappeal brief continues to run until an appeal brief oran amendment that places the proceeding incondition for issuance of a reexamination certificateis filed. The nature of the omission is immaterial.The examiner cannot give the patent owner a timeperiod to supply the omission.

The examiner has the authority to enter the response,withdraw the final Office action, and issue a newOffice action, which may be a final Office action, ifappropriate, or an action in an otherwise allowableapplication under Ex parte Quayle, 25 USPQ 74,1935 C.D. 11 (Comm’r Pat. 1935), if appropriate.This course of action is within the discretion of theexaminer. However, the examiner should recognize

Rev. 08.2017, January 20182200-135


that substantial patent rights will be at issue with noopportunity for the patent owner to refile under 37CFR 1.53(b) or 1.53(d) in order to continueprosecution nor to file a request for continuedexamination under 37 CFR 1.114. Thus, where thetime has expired for response and the amendmentsubmitted would place the proceeding in conditionfor issuance of a reexamination certificate exceptfor an omission through apparent oversight orinadvertence, the examiner should follow this courseof action.

2266.02 Examiner Issues Notice of DefectivePaper in Ex Parte Reexamination[R-07.2015]

Even if the substance of a submission is complete,the submission can still be defective, i.e., an“informal submission.” Defects in the submissioncan be, for example:

(A) The paper filed does not include proof ofservice;

(B) The paper filed is unsigned;

(C) The paper filed is signed by anon-practitioner who is not of record;

(D) The amendment filed by the patent ownerdoes not comply with 37 CFR 1.530(d)-(j);

(E) The amendment filed by the patent ownerdoes not comply with 37 CFR 1.20(c)(3) and/or 37CFR 1.20(c)(4).

Where a submission made prior to final rejectionis defective (informal), forms PTOL-475 andPTO-2311 are used to provide notification of thedefects present in the submission. Form PTOL-475provides notification of the defect(s) in a submissionfiled in a third-party requested ex parte reexamination, while form PTO-2311 providesnotification of the defect(s) in a submission filed ain patent owner requested ex parte reexamination(including a reexamination ordered under 35 U.S.C.257) or Director ordered ex parte reexamination. Inmany cases, it is only necessary to check the

appropriate box on the form and fill in the blanks.However, if the defect denoted by one of the entrieson the appropriate form needs further clarification(such as the specifics of why the amendment doesnot comply with 37 CFR 1.530(d)-(j)), the additionalinformation should be set forth on a separate sheetof paper which is then attached to the form.

The defects identified above as (A) through (E) arespecifically included in form PTOL-475 andPTO-2311, with the exception of (A), which onlyappears in form PTOL-475 (proof of service isinapplicable in patent owner requestedreexaminations). If the submission contains a defectother than those specifically included on the form,the “other” box on the form is to be checked and thedefect explained in the space provided for theexplanation. For example, a response might bepresented on easily erasable paper, and thus, a newsubmission would be needed.

A time period from the mailing date of the noticewill be set in the appropriate form (PTOL-475 orPTO-2311) for correction of the defect(s). Extensionof time to correct the defect(s) may be requestedunder 37 CFR 1.550(c). If, in response to the notice,the defect still is not corrected, the submission willnot be entered. If the failure to comply with thenotice results in a patent owner failure to file a timelyand appropriate response to any Office action, theprosecution of the reexamination proceedinggenerally will be terminated under 37 CFR 1.550(d).

If a defective (informal) response to an examiner’saction is filed after final rejection (before theexpiration of the permissible response period), theexaminer should not issue a form PTOL-475 or formPTO-2311 notification to the patent owner. Rather,an advisory Office action (form PTOL-467 orPTOL-467A) should be issued with an explanationof the defect (informality). The time period set inthe final rejection continues to run and is extendedby two months if the response is the first responseafter the final rejection in accordance with theguidelines set forth in MPEP § 2265. See also MPEP§ 2272.

2200-136Rev. 08.2017, January 2018


Rev. 08.2017, January 20182200-137


2200-138Rev. 08.2017, January 2018


2266.03 Service of Papers [R-08.2017]



*****

(5) A certification that a copy of the request filed by aperson other than the patent owner has been served in its entiretyon the patent owner at the address as provided for in § 1.33(c).The name and address of the party served must be indicated. Ifservice was not possible, a duplicate copy must be supplied tothe Office.

*****


*****


*****

Any paper filed with the Office in a third partyrequested reexamination, i.e., any submission madeby either the patent owner or the third partyrequester, must be served on every other party in thereexamination proceeding.

As proof of service, the party submitting the paperto the Office must attach a certificate of service tothe paper. It is required that the name and addressof the party served, and the method of service be setforth in the certificate of service. Further, a copy ofthe certificate of service must be attached with thecopy of the paper that is served on the other party.

Any paper for which proof of service is required,which is filed without proof of service, may bedenied consideration. Where no proof of service isincluded, the Central Reexamination Unit shouldimmediately contact the party making the submissionto see whether the indication of proof of service wasinadvertently omitted from the submission but therewas actual service.

If service was in fact made, the party making thesubmission should be advised to submit a

supplemental paper indicating the manner and dateof service. The Central Reexamination Unit shouldenter the submission for consideration, and annotatethe submission with:

“Service confirmed by [name of person] on [date]”

If no service was made, or the party making thesubmission cannot be contacted where an effort todo so was made, the submission is placed in thereexamination file and normally is not considered.Where the submission is not considered because ofa service defect, the submission is added to the IFWfile history as an unentered paper with a “N/E”notation, along with a brief annotation as to why thepaper is not entered. The submission itself shall beannotated with “no service,” which also can becrossed through if the appropriate service is latermade.

If the party making the submission cannot becontacted, a Notice of Defective Paper (PTOL-475),giving one month or thirty days, whichever is longer,to complete the paper, with a supplemental paperindicating the manner and date of service, willgenerally be mailed to the party.

If it is known that service of a submission was notmade, notice of the requirement for service of copymay be given (to the party that made thesubmission), if appropriate, and a one month or thirtydays, whichever is longer, time period is set. Formparagraph 22.15 may be used to give notice.

¶ 22.15 Lack of Service - 37 CFR 1.550(f)

The submission filed on [1] is defective because it appears thatthe submission was not served on the [2]. After the filing of arequest for reexamination by a third party requester, anydocument filed by either the patent owner or the third partyrequester must be served on the other party (or parties wheretwo or more third party requester proceedings are merged) inthe reexamination proceeding in the manner provided in 37 CFR1.248. See 37 CFR 1.550(f).

It is required that service of the submission be made, and acertificate of service be provided to the Office within a shortenedstatutory period of ONE MONTH or THIRTY DAYS, whicheveris longer, from the mailing date of this letter. If service of thesubmission is not timely made, the submission may be deniedconsideration.

Rev. 08.2017, January 20182200-139


Examiner Note:

1. This paragraph may be used where a submission to theOffice was not served as required in a third party requesterreexamination proceeding.

2. In bracket 2, insert --patent owner-- or --third partyrequester--, whichever is appropriate.

The cover sheet to be used for mailing the noticewill be form PTOL-473.

If the submission that lacks proof of service is aresponse to a final rejection, form PTOL-475 or formparagraph 22.15 should not be used. Rather, anadvisory Office action (form PTOL-467 orPTOL-467A) should be issued with an explanationthat the response lacks proof of service. The timeperiod set in the final rejection continues to run andis extended by two months if the response is the firstresponse after the final rejection in accordance withthe guidelines set forth in MPEP § 2265. See alsoMPEP § 2272.

The failure of a party to serve the submission inresponse to the notice will have the followingconsequences:

(A) For a patent owner statement or a third partyreply, the submission may be refused considerationby the Office. Where consideration is refused, thesubmission will not be addressed in thereexamination proceeding other than to informparties of the lack of consideration thereof;

(B) For a patent owner response to an Officeaction, the response may be refused considerationby the Office. Where consideration of a response isrefused, the prosecution of the proceeding will beterminated in accordance with 37 CFR 1.550(d),unless the patent owner has otherwise completelyresponded to the Office action.

See MPEP § 2220 as to the initial third party request.

See MPEP § 2249 as to the patent owner statement.

See MPEP § 2251 as to third party reply.

See MPEP § 2266 as to patent owner responses toan Office action.

2267 Handling of Inappropriate or UntimelyFiled Papers [R-07.2015]

The applicable regulations (37 CFR 1.501(a),1.550(e)) provide that certain types ofcorrespondence will not be considered oracknowledged unless timely received. Wheneverreexamination correspondence is received, a decisionis required of the Office as to the action to be takenon the correspondence based on what type of paperit is and whether it is timely.

The return of inappropriate submissions complieswith the regulations that certain papers will not beconsidered and also reduces the amount of paperwhich would ultimately have to be scanned into therecord. Where an inappropriate (unauthorized,improper) paper has already been scanned into theImage File Wrapper (IFW) of the reexaminationproceeding before discovery of the inappropriatenature of the paper, the paper cannot be physicallyreturned to the party that submitted it. Instead, thepaper will be “returned” by expunging it, i.e., bymarking the paper as “non-public” and “closed” sothat it does not appear in the active IFW record withthe other active papers that comprise the publicrecord of the reexamination proceeding.

I. DISPOSITION OF PAPERS

Where papers are filed during reexaminationproceedings which are inappropriate because of somedefect, such papers will be expunged from theofficial file by marking the papers “closed” and“non-public”.

II. TYPES OF PAPERS EXPUNGED WITHAPPROVAL OF THE DIRECTOR OF THE USPTOOR CRU/TC DIRECTOR OR SPRS

A. Premature Response by Owner-Filed byOwner

Where the patent owner is NOT therequester, any response or amendment

§ 1.530(a), §1.540

filed by owner prior to an order toreexamine is premature, will not beconsidered, and will be expunged.B. Paper Submitted on Behalf ofThird Party -

§ 1.550(g)

2200-140Rev. 08.2017, January 2018


A. Premature Response by Owner-Filed byOwner

Submission filed on behalf of a thirdparty will not be considered, and willbe expunged. Where third party paperis submitted as part of a patent ownerresponse, see MPEP § 2254 and §2266.

In those rare instances where an opposition to apatent owner petition is filed, after such oppositionis filed by a third party requester (regardless ofwhether such opposition has an entry right or not),any further paper in opposition/rebuttal/response tothe third party opposition paper will not beconsidered and will be expunged. There must be alimitation on party iterations of input, especiallygiven the statutory mandate for special dispatch inreexamination.

A. No Statement Filed by Owner -Filed byRequester

If a patent owner fails to file astatement within the prescribed limit,

§ 1.535

any reply by the requester isinappropriate, will not be considered,and will be expunged.B. Late Response by Requester -Any response subsequent to 2 monthsfrom the date of service of the patent

§ 1.535, § 1.540

owner’s statement will not beconsidered, and will be expunged.C. Additional Response by Requester-The active participation of thereexamination requester ends with the

§ 1.550(g)

reply pursuant to § 1.535. Any furthersubmission on behalf of requester willnot be considered, and will beexpunged.

In those rare instances where an opposition to arequester petition is filed, after such opposition isfiled by the patent owner (regardless of whether suchopposition has an entry right or not), any furtherpaper in opposition/rebuttal/response to the patentowner opposition paper will not be considered andwill be returned. There must be a limitation on partyiterations of input, especially given the statutory

mandate for special dispatch in reexamination.Further, any petition requesting that an extension oftime be denied will be expunged, since a requesterdoes not have a participation right in thereexamination proceeding.

Filed by ThirdParty

Unless a paper submitted by a thirdparty raises only issues appropriate

§ 1.501,§ 1.565(a)

under 37 CFR 1.501, or consistssolely of a prior decision on the patentby another forum, e.g., a court (seeMPEP § 2207 and § 2286 orpresentation of a paper of record in alitigation (see MPEP § 2282)), it willbe destroyed, or if inadvertentlyentered, it will be expunged from thefile.

Where a petition under 37 CFR 1.182 or 1.183 hasbeen filed, the reexamination proceeding should beforwarded to the Office of Patent LegalAdministration for decision.

III. TYPES OF DEFECTIVE PAPERS TO BERETAINED IN THE REEXAMINATION FILE

A. Unsigned Papers -Filed byOwner

Papers filed by owner which areunsigned or signed by less than all of

§ 1.33

the owners (no attorney of record oracting in representative capacity).B. No Proof of Service -Papers filed by the patent owner inwhich no proof of service on requester

§ 1.248

is included and proof of service isrequired may be denied consideration.C. Untimely Papers -Where owner has filed a paper whichis untimely, that is, it was filed after

§ 1.530(b),§ 1.540

Rev. 08.2017, January 20182200-141


A. Unsigned Papers -Filed byOwner

the period set for response, the paperwill not be considered.

A. Unsigned Papers -Filed byRequester

Papers filed by requester which areunsigned will not be considered.B. No Proof of Service -Papers filed by requester in which noproof of service on owner is included

§ 1.510(b)(5), §1.33, § 1.248

and where proof of service is requiredmay be denied consideration.

In those limited instances where there is a right tofile an opposition to a petition, any such oppositionmust be filed within two weeks of the date uponwhich a copy of the original petition was served onthe opposing party, to ensure consideration. Anysuch opposition which is filed after the two-weekperiod will remain in the record, even though it isnot considered.

IV. PAPERS LOCATED IN THE PATENT FILE

Citations by Third Parties§ 1.501Submissions by third parties basedsolely on prior art patents or

§ 1.550(h)

publications filed after the date of theorder to reexamine are not enteredinto the patent file but delayed untilthe reexamination proceedings havebeen concluded. See MPEP § 2206.

2268 Petition for Entry of Late Papers forRevival of Reexamination Proceeding[R-07.2015]

35 U.S.C. 27 Revival of applications; reinstatement ofreexamination proceedings.

The Director may establish procedures, including therequirement for payment of the fee specified in section 41(a)(7),to revive an unintentionally abandoned application for patent,accept an unintentionally delayed payment of the fee for issuingeach patent, or accept an unintentionally delayed response bythe patent owner in a reexamination proceeding, upon petitionby the applicant for patent or patent owner.

35 U.S.C. 41 Patent fees; patent and trademark searchsystems.

(a) GENERAL FEES. — The Director shall charge thefollowing fees:

*****

(7) REVIVAL FEES. — On filing each petition forthe revival of an abandoned application for a patent, for thedelayed payment of the fee for issuing each patent, for thedelayed response by the patent owner in any reexaminationproceeding, for the delayed payment of the fee for maintaininga patent in force, for the delayed submission of a priority orbenefit claim, or for the extension of the 12-month period forfiling a subsequent application, $1,700. The Director may refundany part of the fee specified in this paragraph, in exceptionalcircumstances as determined by the Director.

*****

35 U.S.C. 133 Time for prosecuting application.

Upon failure of the applicant to prosecute the application withinsix months after any action therein, of which notice has beengiven or mailed to the applicant, or within such shorter time,not less than thirty days, as fixed by the Director in such action,the application shall be regarded as abandoned by the partiesthereto.

37 CFR 1.137 Revival of abandoned application, orterminated or limited reexamination prosecution.

(a) Revival on the basis of unintentional delay. If the delayin reply by applicant or patent owner was unintentional, apetition may be filed pursuant to this section to revive anabandoned application or a reexamination prosecution terminatedunder § 1.550(d) or § 1.957(b) or limited under § 1.957(c).

(b) Petition requirements. A grantable petition pursuantto this section must be accompanied by:

(1) The reply required to the outstanding Office actionor notice, unless previously filed;

(2) The petition fee as set forth in § 1.17(m);

(3) Any terminal disclaimer (and fee as set forth in §1.20(d)) required pursuant to paragraph (d) of this section; and

(4) A statement that the entire delay in filing therequired reply from the due date for the reply until the filing ofa grantable petition pursuant to this section was unintentional.The Director may require additional information where there isa question whether the delay was unintentional.

*****

(e) Request for reconsideration . Any request forreconsideration or review of a decision refusing to revive anabandoned application, or a terminated or limited reexaminationprosecution, upon petition filed pursuant to this section, to beconsidered timely, must be filed within two months of thedecision refusing to revive or within such time as set in thedecision. Unless a decision indicates otherwise, this time periodmay be extended under:

(1) The provisions of § 1.136 for an abandonedapplication;

2200-142Rev. 08.2017, January 2018


(2) The provisions of § 1.550(c) for a terminated exparte reexamination prosecution, where the ex parte reexamination was filed under § 1.510; or

(3) The provisions of § 1.956 for a terminated interpartes reexamination prosecution or an inter partes reexamination limited as to further prosecution, where the interpartes reexamination was filed under § 1.913.

*****

Pursuant to 37 CFR 1.550(d), the prosecution of anex parte reexamination proceeding is terminated ifthe patent owner fails to file a timely and appropriateresponse to any Office action or any writtenstatement of an interview required under 37 CFR1.560(b). An ex parte reexamination prosecutionterminated under 37 CFR 1.550(d) can be revivedif the delay in response by the patent owner (or thefailure to timely file the interview statement) wasunintentional in accordance with 37 CFR 1.137.

The failure to timely file a statement pursuant to37 CFR 1.530 or a reply pursuant to 37 CFR 1.535,however, would not (under ordinary circumstances)constitute adequate basis to justify a showing ofunintentional delay regardless of the reasons for thefailure, since failure to file a statement or reply doesnot result in a “termination” of the reexaminationprosecution, to which 37 CFR 1.137 is directed.

All petitions in reexamination proceedings to acceptlate papers and to revive the proceedings will bedecided in the Office of Patent Legal Administration.

I. PETITION BASED ON UNAVOIDABLE DELAYIS NO LONGER AVAILABLE

37 CFR 1.137 was revised to implement the changesin the Patent Law Treaties Implementation Act of2012 (PLTIA) to eliminate revival of an abandonedapplication and reexamination prosecutionterminated under § 1.550(d) under the‘‘unavoidable’’ standard, and to provide for therevival of abandoned applications and the acceptanceof delayed responses in reexamination by patentowners on the basis of unintentional delay.Specifically, section 201(b) of the PLTIA added new35 U.S.C. 27, which provides that the Director mayestablish procedures to revive an unintentionallyabandoned application for patent, accept anunintentionally delayed payment of the fee for

issuing a patent, or accept an unintentionally delayedresponse by the patent owner in a reexaminationproceeding, upon petition by the applicant for patentor patent owner. Accordingly, 37 CFR 1.137(a) wasamended to eliminate the provisions pertaining topetitions on the basis of unavoidable delay. Thesechanges were effective on December 18, 2013 andapply to all any patent application filed before, on,or after December 18, 2013, to any patent resultingfrom an application filed before, on, or afterDecember 18, 2013, to any reexaminationproceeding filed before, on, or after December 18,2013, and to any reexamination proceeding resultingfrom a supplemental examination proceeding filedbefore, on, or after December 18, 2013.

II. PETITION BASED ON UNINTENTIONALDELAY

As discussed in paragraph I above, section 201(b)of the PLTIA added new 35 U.S.C. 27, whichprovides that the Director may establish proceduresto accept an unintentionally delayed response by thepatent owner in a reexamination proceeding, uponpetition by the patent owner. The patent lawsformerly provided for revival of an unintentionallyabandoned application only in the patent feeprovisions of 35 U.S.C. 41(a)(7). See Public Law97–247, section 3(a), 96 Stat. 317–18 (1982). Theunintentional delay fee provisions of 35 U.S.C.41(a)(7) were imported into, and were applicable to,all ex parte reexamination proceedings by section4605 of the American Inventors Protection Act of1999. The unintentional delay provisions of 35U.S.C. 41(a)(7) became effective in reexaminationproceedings on November 29, 2000. However, thisstatutory structure raised questions concerning theOffice’s authority to revive an unintentionallyabandoned application (without a showing ofunavoidable delay) in certain situations. See e.g.,Aristocrat Techs. Australia Pty Ltd. v. Int’l GameTech., 543 F.3d 657 (Fed. Cir. 2008).

37 CFR 1.137(a), as amended in the final rule toimplement the PLTIA, provides that if the delay inreply by patent owner was unintentional, a petitionmay be filed pursuant to 37 CFR 1.137 to revive areexamination prosecution terminated under 37 CFR1.550(d). 37 CFR 1.137(b) states the petitionrequirements. Specifically, for ex parte

Rev. 08.2017, January 20182200-143


reexamination proceedings, 37 CFR 1.137(b)provides that a grantable petition pursuant to 37 CFR1.137 must be accompanied by: (1) The replyrequired to the outstanding Office action or notice,unless previously filed; (2) the petition fee as setforth in 37 CFR 1.17(m); and (3) a statement thatthe entire delay in filing the required reply from thedue date for the reply until the filing of a grantablepetition pursuant to this section was unintentional.37 CFR 1.137 continues to provide that the Directormay require additional information where there is aquestion whether the delay was unintentional.

III. RENEWED PETITION

Reconsideration may be requested of a decisiondismissing or denying a petition under 37 CFR 1.137to revive a terminated reexamination prosecution.The request for reconsideration must be submittedwithin two months from the mail date of the decisionfor which reconsideration is requested. An extensionof time may be requested only under 37 CFR1.550(c); extensions of time under 37 CFR 1.136are not available in reexamination proceedings. Theextension of time provisions of 37 CFR 1.550(c)also apply to any request for an extension filed in areexamination proceeding ordered under 35 U.S.C.257 as a result of a supplemental examinationproceeding. Any reconsideration request which issubmitted should include a cover letter entitled“Renewed Petition under 37 CFR 1.137”.

IV. FURTHER DISCUSSION OF THE PETITIONREQUIREMENTS

See also MPEP § 711.03(c) for a detailed discussionof the requirements of petitions filed under 37 CFR1.137.

2269 Reconsideration [R-08.2012]

In order to be entitled to reconsideration, the patentowner must respond to the Office action. 37 CFR1.111(b). The patent owner may respond to suchOffice action with or without amendment and thepatent under reexamination will be reconsidered,and so on repeatedly unless the examiner hasindicated that the action is final. See 37 CFR 1.112.Any amendment after the second Office action,which will normally be final as provided for in

MPEP § 2271, must ordinarily be restricted to therejection or to the objection or requirement made.

2270 Clerical Handling [R-07.2015]

The legal instrument examiners and paralegals willhandle most of the initial clerical processing of thereexamination file. The Central Reexamination Unit(CRU) Supervisory Patent Reexamination Specialist(SPRS) or Technology Center (TC) QualityAssurance Specialist (QAS) provides oversight asto clerical processing.

Amendments submitted with a request filed under35 U.S.C. 302, or after reexamination is orderedunder 35 U.S.C. 304 or under 35 U.S.C. 257, andwhich comply with 37 CFR 1.530(d)-(j), willgenerally be entered for purposes of reexaminationin the reexamination file if submitted prior to a finalaction. See MPEP § 2234 and § 2250 for the mannerof entering amendments.

For entry of amendments in a mergedreissue-reexamination proceeding, see MPEP § 2283and § 2285.

Where an amendment is submitted in proper formprior to a final action and it is otherwise appropriateto enter the amendment, the amendment will beentered for purposes of the reexaminationproceeding, even though the amendment does nothave legal effect until the certificate is issued. Any“new matter” amendment to the disclosure (35U.S.C. 132) will be required to be canceled, andclaims containing new matter will be rejected under35 U.S.C. 112. A “new matter” amendment to thedrawing is ordinarily not entered. See MPEP §§608.04, 608.04(a), and 608.04(c). Where anamendment enlarges the scope of the claims of thepatent, the amendment will be entered; however theappropriate claims will be rejected under 35 U.S.C.305.

2271 Final Action [R-07.2015]

Before a final action is in order, a clear issue shouldbe developed between the examiner and the patentowner. To bring the prosecution to a speedyconclusion and at the same time deal justly with the

2200-144Rev. 08.2017, January 2018


patent owner and the public, the examiner will twiceprovide the patent owner with such information andreferences as may be useful in defining the positionof the Office as to unpatentability before the actionis made final. Initially, the decision orderingreexamination of the patent will contain anidentification of the substantial new questions ofpatentability that the examiner considers to be raisedby the cited prior art. In addition, the first Officeaction will reflect the consideration of any argumentscontained in the request, any amendments submittedwith a request under 35 U.S.C. 302, any owner’sstatement filed pursuant to 37 CFR 1.530, and anyreply thereto by the requester, and should fully applyall relevant grounds of rejection to the claims.

The statement which the patent owner may file under37 CFR 1.530 and the response to the first Officeaction should completely respond to and/or amendwith a view to avoiding all outstanding grounds ofrejection.

It is intended that the second Office action in thereexamination proceeding following the decisionordering reexamination will generally be made final.The criteria for making a rejection final in an exparte reexamination proceeding is analogous to thatset forth in MPEP § 706.07(a) for making a rejectionfinal in an application. Both the patent owner andthe examiner should recognize that a reexaminationproceeding may result in the final cancellation ofclaims from the patent and that the patent ownerdoes not have the right to renew or continue theproceedings by refiling under 37 CFR 1.53(b) or 37CFR 1.53(d) or former 37 CFR 1.60 or 1.62, nor byfiling a request for continued examination under 37CFR 1.114. Complete and thorough actions by theexaminer coupled with complete responses by thepatent owner, including early presentation ofevidence under 37 CFR 1.131(a) or 37 CFR 1.132,will go far in avoiding such problems and reachinga desirable early termination of the reexaminationprosecution.

In making the final rejection, all outstanding groundsof rejection of record should be carefully reviewedand any grounds or rejection relied on should bereiterated. The grounds of rejection must (in the finalrejection) be clearly developed to such an extent thatthe patent owner may readily judge the advisability

of an appeal. However, where a single previousOffice action contains a complete statement of aground of rejection, the final rejection may refer tosuch a statement and also should include a rebuttalof any arguments raised in the patent owner’sresponse.

I. PROCESS OF PREPARING THE ACTION

After an examiner has determined that thereexamination proceeding is ready for the finalOffice action, the examiner will set up a panel reviewconference, as per MPEP § 2271.01, to discuss theissuance of the action. The examiner may preparethe action after the conference, or may prepare theaction prior to the conference and revise it as neededafter the conference.

If the conference confirms the examiner’spreliminary decision to reject and/or allow the claimsand issue a final Office action, the proposed finalOffice action shall be issued and signed by theexaminer, with the two, or more, other confereesinitialing the action (as “conferee”) to indicate theirpresence in the conference.

II. FORM PARAGRAPHS

The final rejection letter should conclude with oneof form paragraphs 22.09 or 22.10.

¶ 22.09 Ex Parte Reexamination - Action Is Final

THIS ACTION IS MADE FINAL.

A shortened statutory period for response to this action is set toexpire [1] from the mailing date of this action.

Extensions of time under 37 CFR 1.136(a) do not apply inreexamination proceedings. The provisions of 37 CFR 1.136apply only to “an applicant” and not to parties in a reexaminationproceeding. Further, in 35 U.S.C. 305 and in 37 CFR 1.550(a),it is required that reexamination proceedings “will be conductedwith special dispatch within the Office.”

Extensions of time in reexamination proceedings areprovided for in 37 CFR 1.550(c) . A request for extension oftime must specify the requested period of extension and it mustbe accompanied by the petition fee set forth in 37 CFR 1.17(g).Any request for an extension in a third party requested ex partereexamination must be filed on or before the day on which actionby the patent owner is due, and the mere filing of a request willnot effect any extension of time. A request for an extension oftime in a third party requested ex parte reexamination will begranted only for sufficient cause, and for a reasonable time

Rev. 08.2017, January 20182200-145


specified. Any request for extension in a patent owner requested ex parte reexamination (including reexamination ordered under35 U.S.C. 257) for up to two months from the time period setin the Office action must be filed no later than two months fromthe expiration of the time period set in the Office action. Arequest for an extension in a patent owner requested ex partereexamination for more than two months from the time periodset in the Office action must be filed on or before the day onwhich action by the patent owner is due, and the mere filing ofa request for an extension for more than two months will noteffect the extension. The time for taking action in a patent ownerrequested ex parte reexamination will not be extended for morethan two months from the time period set in the Office actionin the absence of sufficient cause or for more than a reasonabletime.

The filing of a timely first response to this final rejection willbe construed as including a request to extend the shortenedstatutory period for an additional two months. In no event,however, will the statutory period for response expire later thanSIX MONTHS from the mailing date of the final action. SeeMPEP § 2265.

Examiner Note:

1. This form paragraph may be used only in reexaminationproceedings.

2. In bracket 1, insert the appropriate period for response,which is normally TWO (2) MONTHS.

¶ 22.10 Ex Parte Reexamination - Action Is Final,Necessitated by Amendment

Patent owner’s amendment filed [1] necessitated the newgrounds of rejection presented in this Office action. Accordingly,THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).

A shortened statutory period for response to this action is set toexpire [2] from the mailing date of this action.

Extensions of time under 37 CFR 1.136(a) do not apply inreexamination proceedings. The provisions of 37 CFR 1.136apply only to “an applicant” and not to parties in a reexaminationproceeding. Further, in 35 U.S.C. 305 and in 37 CFR 1.550(a),it is required that reexamination proceedings “will be conductedwith special dispatch within the Office.”

Extensions of time in reexamination proceedings areprovided for in 37 CFR 1.550(c). A request for extension oftime must specify the requested period of extension and it mustbe accompanied by the petition fee set forth in 37 CFR 1.17(g).Any request for an extension in a third party requested ex partereexamination must be filed on or before the day on which actionby the patent owner is due, and the mere filing of a request willnot effect any extension of time. A request for an extension oftime in a third party requested ex parte reexamination will begranted only for sufficient cause, and for a reasonable timespecified. Any request for extension in a patent owner requested ex parte reexamination (including reexamination ordered under35 U.S.C. 257) for up to two months from the time period setin the Office action must be filed no later than two months fromthe expiration of the time period set in the Office action. A

request for an extension in a patent owner requested ex partereexamination for more than two months from the time periodset in the Office action must be filed on or before the day onwhich action by the patent owner is due, and the mere filing ofa request for an extension for more than two months will noteffect the extension. The time for taking action in a patent ownerrequested ex parte reexamination will not be extended for morethan two months from the time period set in the Office actionin the absence of sufficient cause or for more than a reasonabletime.

The filing of a timely first response to this final rejection willbe construed as including a request to extend the shortenedstatutory period for an additional two months. In no event,however, will the statutory period for response expire later thanSIX MONTHS from the mailing date of the final action. SeeMPEP § 2265.

Examiner Note:

1. This form paragraph may be used only in reexaminationproceedings.

2. In bracket 1, insert filing date of amendment.

3. In bracket 2, insert the appropriate period for response,which is normally TWO (2) MONTHS.

4. As with all other Office correspondence on the merits in areexamination proceeding, the final Office action must be signedby a primary examiner.

III. ART CITED BY PATENT OWNER DURINGPROSECUTION

Where art is submitted in a prior art citation under37 CFR 1.501 and/or 37 CFR 1.555 (an IDS filed ina reexamination is construed as a prior art citation)and the submission is not accompanied by astatement similar to that of 37 CFR 1.97(e), theexaminer may use the art submitted and make thenext Office action final whether or not the claimshave been amended, provided that no other newground of rejection is introduced by the examinerbased on the new art not cited in the prior art citation.See MPEP § 706.07(a).

IV. SIGNATORY AUTHORITY

As with all other Office correspondence on themerits in a reexamination proceeding, the finalOffice action must be signed by a primary examiner.

2271.01 Panel Review [R-07.2015]

A panel review will be conducted at each stage ofthe examiner’s examination in an ex partereexamination proceeding, other than for actions

2200-146Rev. 08.2017, January 2018


such as notices of informality or incompleteresponse. Matters requiring decision outside of theexaminer’s jurisdiction (e.g., decisions on petitionsor extensions of time, or Central Reexamination Unit(CRU) support staff notices) will not be reviewedby a panel.

The panel review is carried out for each Officeaction. The panel reviews the examiner’s preliminarydecision to reject and/or allow the claims in thereexamination proceeding, prior to the issuance ofeach Office action.

I. MAKE-UP OF THE PANEL

The panel will consist of three, or more, members,one of whom will be a manager. The second memberwill be the examiner in charge of the proceeding.The manager may select the third member. Theexaminer-conferees will be primary examiners, orexaminers who are knowledgeable in the technologyof the invention claimed in the patent beingreexamined and/or who are experienced inreexamination practice. The majority of those presentat the conference will be examiners who were notinvolved in the examination or issuance of the patent.An “original” examiner (see MPEP § 2236) shouldbe chosen as a conferee only if that examiner is themost knowledgeable in the art, or there is some otherspecific and justifiable reason to choose an originalexaminer as a participant in the conference.

II. PANEL PROCESS

The examiner must inform his/her manager of his/herintent to issue an Office action. The manager willthen convene a panel and the members will conferand review the patentability of the claim(s). If theconference confirms the examiner’s preliminarydecision to reject and/or allow the claims, the Officeaction shall be issued and signed by the examiner,with the two, or more, other conferees initialing theaction (as “conferee”) to indicate their participationin the conference. All conferees will initial, eventhough one of them may have dissented from the3-party conference decision as to the patentabilityof claims. If the conference does not confirm theexaminer’s preliminary decision, examiner willreevaluate and issue an appropriate Office action.

Where the examiner in charge of the proceeding isnot in agreement with the conference decision, themanager will generally assign the proceeding toanother examiner.

III. WHAT THE CONFERENCE IS TOACCOMPLISH

Each conference will provide a forum to considerall issues of patentability as well as procedural issueshaving an impact on patentability. Review of thepatentability of the claims by more than one primaryexaminer should diminish the perception that thepatent owner can disproportionately influence theexaminer in charge of the proceeding. Theconferences will also provide greater assurance thatall matters will be addressed appropriately. All issuesin the proceeding will be viewed from theperspectives of three examiners. What the examinerin charge of the proceeding might have missed, theother two, or more, conference members wouldlikely detect. The conference will provide for acomprehensive discussion of, and finding for, eachissue.

IV. CONSEQUENCES OF FAILURE TO HOLDCONFERENCE

Should the examiner issue an Office action withoutpanel review, the patent owner or the third partyrequester who wishes to object must promptly filea paper alerting the Office of this fact. (The failureto provide panel review would be noted by theparties where there are no conferees’ initials at theend of the Office action.) Any challenge of thefailure to hold a panel review conference must bemade within two weeks of receipt of the Officeaction issued, or the challenge will not be considered.In no event will the failure to hold a panel reviewconference, by itself, be grounds for vacating anyOffice decision(s) or action(s) and “restarting” thereexamination proceeding.

2272 After Final Practice [R-07.2015]

It is intended that prosecution before the examinerin a reexamination proceeding will be concludedwith the final action. Once a final rejection that isnot premature has been entered in a reexaminationproceeding, the patent owner no longer has any right

Rev. 08.2017, January 20182200-147


to unrestricted further prosecution. Consideration ofamendments submitted after final rejection and priorto, or with, the appeal will be governed by the strictstandards of 37 CFR 1.116. Further, considerationof amendments submitted after appeal will begoverned by the strict standards of 37 CFR 41.33.Both the examiner and the patent owner shouldrecognize that substantial patent rights will be atissue with no opportunity for the patent owner torefile under 37 CFR 1.53(b), or 1.53(d), and with noopportunity to file a request for continuedexamination under 37 CFR 1.114. Accordingly, boththe examiner and the patent owner should identifyand develop all issues prior to the final Office action,including the presentation of evidence under 37 CFR1.131(a) and 1.132.

In the event that the patent owner is of the opinionthat (A) a final rejection is improper or premature,or (B) that an amendment submitted after finalrejection complies with 37 CFR 1.116 but theexaminer improperly refused entry of such anamendment, the patent owner may file a petitionunder 37 CFR 1.181 requesting that the finalrejection be withdrawn and that prosecution bereopened, or file a petition under 37 CFR 1.181requesting entry of the amendment, whereappropriate. The petition under 37 CFR 1.181 mustbe filed within the time period for filing a notice ofappeal. Note that the filing of a petition under 37CFR 1.181 does not toll the time period for filing anotice of appeal.

I. FINAL REJECTION — TIME FOR RESPONSE

The statutory period for response to a final rejectionin a reexamination proceeding will normally be two(2) months. If a response to the final rejection isfiled, the time period set in the final rejectioncontinues to run. In any ex parte reexaminationproceeding, including third party requestedreexaminations, patent owner requestedreexaminations (including reexaminations orderedunder 35 U.S.C. 257) or Director orderedreexaminations, the time period is automaticallyextended by two months (in accordance with theguidelines set forth in MPEP § 2265) if the responseis the first response after the final rejection and anotice of appeal has not yet been filed. Any advisoryOffice action using form PTOL-467, Ex Parte

Reexamination Advisory Action Before the Filingof an Appeal Brief, which is issued in reply to patentowner’s response after final rejection (and prior tothe filing of the notice of appeal) will inform thepatent owner of the automatic two month extensionof time. It should be noted that the filing of anytimely first response to a final rejection (even aninformal response or even a response that is notsigned) will automatically result in the extension ofthe shortened statutory period for an additional twomonths. Note further that the patent owner is entitledto know the examiner’s ruling on a timely responsefiled after final rejection before being required tofile a notice of appeal. Notification of the examiner’sruling should reach the patent owner with sufficienttime for the patent owner to consider the ruling andact on it. Accordingly, the period for response to thefinal rejection should be appropriately extended inthe examiner’s advisory action. See Theodore Groz& Sohne & Ernst Bechert Nadelfabrik KG v. Quigg,10 USPQ2d 1787 (D.D.C. 1988). The period forresponse may not, however, be extended to run past6 months from the date of the final rejection.

The present after final practice of providing anautomatic two-month extension for filing a responseto a final Office action is in conformance with theminimum reply period provisions of the Patent LawTreaty (PLT). For this reason, additional “no cause”extensions of time for filing a response to a finalOffice action in patent owner requested or Directorordered reexaminations are not available. Anyextensions of time for more than two months fromthe time for response set in the final rejection mustprovide a showing of sufficient cause in accordancewith 37 CFR 1.550(c)(3). See MPEP § 2265,subsections VI-VII.

II. ACTION BY EXAMINER

It should be kept in mind that a patent owner cannot,as a matter of right, amend any finally rejectedclaims, add new claims after a final rejection, orreinstate previously canceled claims. For anamendment filed after final rejection and prior to theappeal brief, a showing under 37 CFR 1.116(b) isrequired and will be evaluated by the examiner forall proposed amendments after final rejection exceptwhere an amendment merely cancels claims, adoptsexaminer’s suggestions, removes issues for appeal,

2200-148Rev. 08.2017, January 2018


or in some other way requires only a cursory reviewby the examiner. An amendment filed at any timeafter final rejection but before an appeal brief is filed,may be entered upon or after filing of an appealprovided:

(A) the total effect of the amendment is to cancelclaims or comply with any requirement of formexpressly set forth in a previous Office action, orpresent rejected claims in better form forconsideration on appeal;

(B) for an amendment touching the merits of thepatent under reexamination, the patent ownerprovides a showing of good and sufficient reasonswhy the amendment is necessary and was not earlierpresented.

The first proposed amendment after final action ina reexamination proceeding will be given sufficientconsideration to determine whether it places all theclaims in condition where they are patentable and/orwhether the issues on appeal are reduced orsimplified. Unless the proposed amendment isentered in its entirety, the examiner will brieflyexplain the reasons for not entering a proposedamendment. For example, if the claims as amendedpresent a new issue requiring further considerationor search, the new issue should be identified and abrief explanation provided as to why a new searchor consideration is necessary. The patent ownershould be notified if certain portions of theamendment would be entered if a separate paper wasfiled containing only such amendment.

Any second or subsequent amendment after finalwill be considered only to the extent that it removesissues for appeal or puts a claim in obviouspatentable condition.

Since patents undergoing reexamination cannotbecome abandoned and cannot be refiled, and sincethe holding of claims unpatentable and canceled ina certificate is absolutely final, it is appropriate thatthe examiner consider the feasibility of enteringamendments touching the merits after final rejectionor after appeal has been taken, where there is ashowing why the amendments are necessary and asuitable reason is given why they were not earlierpresented.

The practice of giving the patent owner a time periodto supply an omission in a bona fide response (asset forth in MPEP § 2266.01) does not apply aftera final Office action. If a bona fide response to anexaminer’s action is filed after final rejection(before the expiration of the permissible responseperiod), but through an apparent oversight orinadvertence, some point necessary to fully respondhas been omitted, the examiner should not issue (tothe patent owner) a notice of failure to fully respond.Rather, an advisory Office action (e.g., formPTOL-467) should be issued with an explanation ofthe omission.

Likewise, the practice of notifying the patent ownerof the defects present in a submission via formPTOL-475 or form PTO-2311 and setting a timeperiod for correction of the defect(s) (as set forth inMPEP § 2266.02) does not apply after a final Officeaction. If a defective (informal) response to anexaminer’s action is filed after final rejection(before the expiration of the permissible responseperiod), the examiner should not issue a formPTOL-475 or form PTO-2311 notification to thepatent owner. Rather, an advisory Office action (e.g.,form PTOL-467) should be issued with anexplanation of the defect (informality) beingprovided in the advisory action.

2273 Appeal in Ex Parte Reexamination[R-07.2015]

35 U.S.C. 306 Appeal.

The patent owner involved in a reexamination proceeding underthis chapter may appeal under the provisions of section 134,and may seek court review under the provisions of sections 141to 144, with respect to any decision adverse to the patentabilityof any original or proposed amended or new claim of the patent.

A patent owner who is dissatisfied with the primaryexaminer’s decision to reject claims in an ex partereexamination proceeding may appeal to the Boardfor review of the examiner’s rejection by filing anotice of appeal within the required time. A thirdparty requester may not appeal, and may notparticipate in the patent owner’s appeal.

The patent owner may appeal to the Board only afterthe final rejection of the claims. This is based on theversion of 35 U.S.C. 134 as amended by Public Law

Rev. 08.2017, January 20182200-149


106-113. This version of 35 U.S.C. 134 applies toappeals in reexamination, where the reexaminationwas filed in the Office on or after November 29,1999. See Section 13202(d) of Public Law 107-273.

The notice of appeal need not be signed. See 37 CFR41.31(b). The fee required by 37 CFR 41.20(b)(1)must accompany the notice of appeal. See 37 CFR41.31(a)(2) and (a)(3).

The period for filing the notice of appeal is theperiod set for response in the last Office action whichis normally 2 months. The timely filing of a firstresponse to a final rejection having a shortenedstatutory period for response is construed asincluding a request to extend the period for responsean additional two months, even if an extension hasbeen previously granted, as long as the period forresponse does not exceed 6 months from the date ofthe final rejection. The normal ex parte appealprocedures set forth at 37 CFR 41.31 through 37CFR 41.54 apply in ex parte reexamination, exceptas pointed out in this Chapter. A third party requestermay not appeal or otherwise participate in the appeal.

The reexamination statute does not provide forreview of a patentability decision favoring thepatentee. Greenwood v. Seiko Instruments, 8USPQ2d 1455 (D.D.C. 1988).

See MPEP § 1204 for a discussion of therequirements for a proper appeal. However, note thatin the unusual circumstances where an appeal isdefective (e.g., no proof of service is included, itwas filed for the wrong proceeding), patent ownershould not be advised by the examiner to obtain anextension of time under 37 CFR 1.136(a), becausean extension of time under 37 CFR 1.136 cannot beobtained in a reexamination proceeding.

Where a notice of appeal is defective, the patentowner will be so notified. In third party requestedreexaminations, Form PTOL-475 will be used toprovide the notification. A time period of one monthor thirty days, whichever is longer, will be providedfor the patent owner to cure the defect(s) in theappeal. In patent owner requested reexaminations(including reexaminations ordered under 35 U.S.C.257) or Director ordered reexaminations, FormPTO-2311 will be used to provide the notification,

and a two-month time period will be provided forthe patent owner to cure the defect(s) in the appeal.An explanation of the defect(s) in the notice ofappeal must accompany the appropriate form forproviding the notification of the defects (PTOL-475or PTO-2311).

If the patent owner does not timely file a notice ofappeal and/or does not timely file the appropriateappeal fee, the patent owner will be notified that theappeal is dismissed. Form PTOL-468 may be usedto provide the notification. The reexaminationprosecution is then terminated, and a Notice of Intentto Issue Ex Parte Reexamination Certificate (NIRC)will subsequently be issued indicating the status ofthe claims at the time of final rejection (or after thesecond rejection of the claims, where an appeal wastaken from that action without waiting for a finalrejection). See MPEP § 2287.

2274 Appeal Brief [R-07.2015]

I. AMENDMENT

Where the appeal brief is not filed, but within theperiod allowed for filing the brief an amendment ispresented which places the claims of the patent underreexamination in a patentable condition, theamendment may be entered. Amendments shouldnot be included in the appeal brief.

As to separate amendments, i.e., amendments notincluded with the appeal brief, filed with or after theappeal, see MPEP § 1206.

II. TIME FOR FILING APPEAL BRIEF

The time for filing the appeal brief is two (2) monthsfrom the date of the appeal.

III. EXTENSION OF TIME FOR FILING APPEALBRIEF

In the event that the patent owner finds that he orshe is unable to file a brief within the time allowedby the rules, he or she may file a request with theappropriate extension of time fee, to the CentralReexamination Unit (CRU) or Technology Center(TC), requesting additional time. See MPEP § 2265for specific guidance. The request should contain

2200-150Rev. 08.2017, January 2018


the address to which the response is to be sent. If therequest and the required fee are filed prior to theexpiration of the period sought to be extended (37CFR 1.550(c)), the CRU SPRS or TC Director isauthorized to grant the extension for up to one monthin third party requested reexamination proceedings,and for up to two months (i.e., a “no cause”extension) in patent owner requested reexaminationproceedings (including reexaminations ordered under35 U.S.C. 257) or Director ordered reexaminationproceedings. Requests for extensions of time formore than one month in third party requestedreexaminations and for more than two months inpatent owner requested reexaminations (includingreexaminations ordered under 35 U.S.C. 257) orDirector ordered reexaminations, will also be decidedby the CRU SPRS or TC Director, but will not begranted unless extraordinary circumstances areinvolved; e.g., death or incapacitation of the patentowner. The time extended is added to the lastcalendar day of the original period, as opposed tobeing added to the day it would have been due whensaid last day is a Saturday, Sunday, or federalholiday.

IV. FAILURE TO TIMELY FILE APPEAL BRIEF

Failure to file the brief and/or the appeal brief feewithin the permissible time will result in dismissalof the appeal. Form PTOL-468 may be used to notifythe patent owner that the appeal is dismissed. Thereexamination prosecution is then terminated, anda Notice of Intent to Issue Ex Parte ReexaminationCertificate (NIRC) (see MPEP § 2287) willsubsequently be issued indicating the status of theclaims at the time of appeal.

V. REQUIREMENTS FOR THE APPEAL BRIEF

A fee as set forth in 37 CFR 41.20(b)(2) is requiredwhen the appeal brief is filed for the first time in aparticular reexamination proceeding, 35 U.S.C.41(a). 37 CFR 41.37 provides that the appellant shallfile a brief of the authorities and arguments on whichhe or she will rely to maintain his or her appeal,including a summary of claimed subject matterwhich must refer to the specification by page andline number, and to the drawing, if any, by referencecharacters, and a copy of the claims involved. Onlyone copy of the appeal brief is required. Where the

request for reexamination was filed by a third partyrequester, a copy of the brief must be served on thatthird party requester.

In the case of a merged proceeding (see MPEP§ 2283 and § 2285), one original copy of the briefshould be provided for each reexaminationproceeding and reissue application in the mergedproceeding. In addition, a copy of the brief must beserved on any third party requesters who are part ofthe merged proceeding.

For the sake of convenience, the copy of the claimsinvolved should be double spaced and should starton a new page. Note that the copy of the claims onappeal in reexamination proceedings must includeall underlining and bracketing, as required by37 CFR 1.530(f), to reflect the changes made to theoriginal patent claims throughout the prosecution ofthe reexamination. In addition, any new claims addedin the reexamination should be completelyunderlined. This represents a departure from theprocedure set forth in MPEP § 1205.02 forapplications.

The brief, as well as every other paper relating to anappeal, should indicate the number of the art unit towhich the reexamination is assigned and thereexamination control number. When the brief isreceived, it is forwarded to the CRU or TC(depending which is examining the proceeding)where it is entered in the file and referred to theexaminer.

Patent owners are reminded that their briefs in appealcases must be responsive to every ground of rejectionstated by the examiner. A reply brief, if filed, shallbe entered, except that amendments or affidavits orother evidence are subject to 37 CFR 1.116 and41.33. See 37 CFR 41.41(a)(2).

It is essential that the Board should be provided witha brief fully stating the position of the appellant withrespect to each issue involved in the appeal so thatno search of the record is required in order todetermine that position. The fact that appellant mayconsider a ground to be clearly improper does notjustify a failure on the part of the appellant to pointout to the Board the reasons for that view in the brief.

Rev. 08.2017, January 20182200-151


See MPEP § 1205.02 for further discussion of therequirements for an appeal brief.

VI. SEEKING REVIEW OF A FINDING OF ASUBSTANTIAL NEW QUESTION OFPATENTABILITY

The patent owner may seek review on the examiner'sSNQ determination before the Board along with anyappeal of the examiner's rejections. To obtain reviewof the SNQ issue, patent owner must include theSNQ issue and the appropriate arguments in itsappeal brief to the Board. In order to preserve theright to have the Board review of the SNQ issue, apatent owner must have first requestedreconsideration of the SNQ issue by the examiner.Accordingly, for ex parte reexamination proceedingsordered on or after June 25, 2010, the patent ownermay seek a final agency decision from the Board onthe SNQ issue only if the patent owner has firstrequested reconsideration before the examiner (e.g.,in a patent owner's statement under 37 CFR 1.530or in a patent owner's response under 37 CFR 1.111)and then seeks review of the examiner's SNQdetermination before the Board. In its appeal brief,the patent owner is to clearly present the issue andarguments regarding the examiner's SNQdetermination under a separate heading and identifythe communication in which the patent owner firstrequested reconsideration before the examiner. (For ex parte reexamination proceedings ordered priorto June 25, 2010, if the patent owner presents theSNQ issue in its appeal brief, the Board panel willreview the procedural SNQ issue along with itsreview of any rejections in an appeal and will entera final agency decision accordingly.)

The final decision by the Board panel in the ex parte reexamination proceeding may include: (1) its reviewof the procedural SNQ issue in a separate section,and (2) its review of the merits of the rejections. See,e.g., In re Searles, 422 F.2d 431, 434-35 (C.C.P.A.1970) (holding certain procedural matters that are“determinative of the rejection” are properlyappealable to the Board); see also In re Hengehold, 440 F.2d 1395, 1404 (C.C.P.A. 1971) (“[T]he kindof adverse decisions of examiners which arereviewable by the board must be those which relate,at least indirectly, to matters involving the rejectionof the claims.''); cf. 37 CFR 41.121 (providing both

"substantive" motions and "miscellaneous," i.e.,procedural motions, which may be decided togetherin a single decision).

The patent owner may file a single request forrehearing under 37 CFR 11.52 for both the decisionon the SNQ issue and the merits decision on theexaminer's rejections, resulting in a single finaldecision for purposes of judicial review. Judicialreview of the Board's final decision issued pursuantto 35 U.S.C. 134, which will incorporate the decisionon the finding of a SNQ, is directly to the UnitedStates Court of Appeals for the Federal Circuit under35 U.S.C. 141. See In re Hiniker Co., 150 F.3d1362, 1367 (Fed. Cir. 1998) (“With direct reviewby this court of the Board's reexamination decisions,a patentee can be certain that it cannot be subjectedto harassing duplicative examination.”); see also Heinl v. Godici, 143 F. Supp. 2d 593, 597-598 (E.D.Va. 2001).

VII. DEFECTIVE APPEAL BRIEF

Since May 25, 2010, the Patent Trial and AppealBoard, (Board), has the sole responsibility fordetermining whether appeal briefs filed in ex parte reexamination proceedings comply with 37 CFR41.37, and will complete the determination beforethe appeal brief is forwarded to the examiner forconsideration. If the appeal brief is determined to becompliant with the rules or it contains only minorinformalities that do not affect the Board panel’sability to render a decision, the Board will acceptthe appeal brief and forward it to the examiner forconsideration. If the Board determines that the appealbrief is non-compliant with 37 CFR 41.37 and sendsappellant a notice of non-compliant brief requiringa corrected brief, appellant will be required to file acorrected brief within the time period set forth in thenotice to avoid the dismissal of the appeal. TheBoard also has the sole responsibility for determiningwhether corrected briefs comply with 37 CFR 41.37,and addresses any inquiries and petitions regardingnotices of non-compliant briefs.

Once an appeal brief is accepted by the Board as incompliance with 37 CFR 41.37, the appeal brief willnot later be held as defective by the CRU or theexaminer. The Board will not return or remand theproceeding to the examiner for issues related to a

2200-152Rev. 08.2017, January 2018


non-compliant appeal brief. Furthermore, examinersare not required to review appeal briefs for thepurposes of determining whether the appeal briefscomply with 37 CFR 41.37. Accordingly, theNotification of Non-Compliant Appeal Brief(PTOL-462R) and form paragraphs for holding anappeal brief defective are no longer be available inOACS for the CRU to use.

Examiners are no longer to hold any appeal briefsdefective. Rather, the Board will correspond directlywith the appellant on non-compliant brief issues. Ina rare situation where an appeal brief containsserious defects that will prevent the examiner fromdrafting an examiner’s answer, the examiner shouldreport the issue to the Director of CRU who willcommunicate with the Board regarding the issue ifappropriate.

In addition, examiners are not required to make anydetermination whether fewer than all of the rejectedclaims are identified by the appellant as beingappealed. If the notice of appeal or appeal briefidentifies fewer than all of the rejected claims asbeing appealed, the issue will be addressed by theBoard panel. Therefore, the examiner will treat allpending, rejected claims as being on appeal, and theexaminer must maintain all of the rejections set forthin the Office action from which the appeal is taken,unless appellant has overcome the rejection (e.g., bysubmitting persuasive arguments, an acceptableterminal disclaimer, or evidence). In situations wherethe appellant makes a request to hold a rejection inabeyance or did not present any argument on arejection in the appeal brief, the examiner shouldmaintain the rejection in the examiner’s answer.

The responsibility of the Board for determiningwhether appeal briefs comply with 37 CFR 41.37 isnot considered a transfer of jurisdiction when anappeal brief is filed, but rather is only a transfer ofthe specific responsibility of notifying appellantsunder 37 CFR 41.37(d) of the reasons fornon-compliance. The CRU retains the jurisdictionover the reexamination proceeding to consider theappeal brief, conduct a conference, draft anexaminer’s answer, and decide the entry ofamendments, evidence, and information disclosurestatements filed after final or after the filing of anotice of appeal. Furthermore, petitions concerning

the refusal to enter amendments and/or evidenceremain delegated as per MPEP §§ 1002.02(b) and1002.02(c). The jurisdiction of the ex partereexamination proceeding is transferred to the Boardwhen a docketing notice is entered after the timeperiod for filing a reply brief expires or the examineracknowledges the receipt and entry of the reply brief.

It is to be noted that the mere filing of any paperwhatsoever entitled as a brief cannot necessarily beconsidered as compliance with 37 CFR 41.37. Therule requires that the brief must set forth theauthorities and arguments relied on, and to the extentthat it fails to do so with respect to any ground ofrejection, that ground may be summarily sustained.A distinction must be made between the lack of anyargument and the presentation of arguments thatcarry no conviction. In the former case summarilysustaining the rejection is in order, while in the lattercase a decision on the merits is made, although itmay well be merely an affirmance based on thegrounds relied on by the examiner.

Appellant must traverse every ground of rejectionset forth in the final rejection that appellant ispresenting for review in the appeal. Oral argumentat the hearing will not remedy a deficiency of failureto traverse a ground of rejection in the brief. Ignoringor acquiescing in any rejection, even one based uponformal matters which could be cured by subsequentamendment, will invite summarily affirmance of therejection.

The reexamination prosecution is consideredterminated as of the date of the dismissal of theappeal. After the appeal is dismissed, the examinerwill proceed to issue a Notice of Intent to Issue ExParte Reexamination Certificate for the proceeding;see MPEP § 2287.

2275 Examiner’s Answer [R-08.2017]

37 CFR 41.39 Examiner’s answer.

(a) Content of examiner's answer. The primary examinermay, within such time as may be directed by the Director, furnisha written answer to the appeal brief.

(1) An examiner's answer is deemed to incorporate allof the grounds of rejection set forth in the Office action fromwhich the appeal is taken (as modified by any advisory actionand pre-appeal brief conference decision), unless the examiner'sanswer expressly indicates that a ground of rejection has beenwithdrawn.

Rev. 08.2017, January 20182200-153


(2) An examiner's answer may include a new groundof rejection. For purposes of the examiner's answer, any rejectionthat relies upon any Evidence not relied upon in the Office actionfrom which the appeal is taken (as modified by any advisoryaction) shall be designated by the primary examiner as a newground of rejection. The examiner must obtain the approval ofthe Director to furnish an answer that includes a new ground ofrejection.

(b) Appellant's response to new ground of rejection. If anexaminer’s answer contains a rejection designated as a newground of rejection, appellant must within two months from thedate of the examiner’s answer exercise one of the following twooptions to avoid sua sponte dismissal of the appeal as to theclaims subject to the new ground of rejection:

(1) Reopen prosecution. Request that prosecution bereopened before the primary examiner by filing a reply under§ 1.111 of this title with or without amendment or submissionof affidavits (§§ 1.130, 1.131 or 1.132 of this of this [sic] title)or other Evidence. Any amendment or submission of affidavitsor other Evidence must be relevant to the new ground ofrejection. A request that complies with this paragraph will beentered and the application or the patent under ex parte reexamination will be reconsidered by the examiner under theprovisions of § 1.112 of this title. Any request that prosecutionbe reopened under this paragraph will be treated as a request towithdraw the appeal.

(2) Maintain appeal. Request that the appeal bemaintained by filing a reply brief as set forth in § 41.41. Sucha reply brief must address as set forth in § 41.37(c)(1)(iv) eachnew ground of rejection and should follow the otherrequirements of a brief as set forth in § 41.37(c). A reply briefmay not be accompanied by any amendment, affidavit (§§ 1.130,1.131 or 1.132 of this of this [sic] title) or other Evidence. If areply brief filed pursuant to this section is accompanied by anyamendment, affidavit or other Evidence, it shall be treated as arequest that prosecution be reopened before the primaryexaminer under paragraph (b)(1) of this section.

(c) Extensions of time. Extensions of time under § 1.136(a)of this title for patent applications are not applicable to the timeperiod set forth in this section. See § 1.136(b) of this title forextensions of time to reply for patent applications and § 1.550(c)of this title for extensions of time to reply for ex partereexamination proceedings.

MPEP § 1207 through § 1207.05 relate topreparation of examiner’s answers in appeals. Theprocedures covered in these sections apply to appealsin both patent applications and patents undergoing ex parte reexamination proceedings, except asprovided for in this Chapter. For example, there isno requirement for pre-appeal conferences inreexamination proceedings but there is a requirementfor panel review of the examiner’s answer.

After receipt of a reply brief in compliance with 37CFR 41.41 or the expiration of the time in which tofile such a reply brief (37 CFR 41.35), jurisdiction

over the appeal passes to the Board. Normally, theexaminer does not need to acknowledge the replybrief and will not have an opportunity for furthercomment prior to a decision by the Board. However,the Board may remand the appeal to the examinerto furnish a substitute examiner’s answer responsiveto the remand or the Director may remand theproceeding under 37 CFR 41.35(c), such as wherethere has been a change of law that would requirethat a new ground of rejection be considered. See37 CFR 41.50(a)(2) and MPEP § 1207.05 forinformation on substitute examiner’s answer. Asubstitute examiner’s answer is not permitted unlessthe reexamination proceeding has been remandedby the Board or Director for such purposes.

2276 Oral Hearing [R-08.2012]

If appellant (patent owner) desires an oral hearing,appellant must file a written request for such hearingaccompanied by the fee set forth in 37 CFR41.20(b)(3) within two months after the date of theexaminer’s answer or supplemental examiner’sanswer. The time for requesting an oral hearing maynot be extended. 37 CFR 41.73(b). No appellant willbe permitted to participate in an oral hearing unlesshe or she has requested an oral hearing and submittedthe fee set forth in 37 CFR 41.20(b)(3).

Where the appeal involves reexaminationproceedings, oral hearings are open to the public asobservers (subject to the admittance proceduresestablished by the Board), unless the appellant (A)petitions under 37 CFR 41.3 that the hearing not beopen to the public, (B) presents sufficient reasonsfor such a request, (C) pays the petition fee set forthin 37 CFR 41.20(a), and (D) the petition is granted.

MPEP § 1209 relates to oral hearings in appeals inboth patent applications and ex parte reexaminationproceedings.

2277 Board Decision [R-11.2013]

MPEP § 1213 through § 1213.03 relate to decisionsof the Board for both applications and ex partereexamination proceedings.

2200-154Rev. 08.2017, January 2018


2278 Action Following Decision [R-08.2017]

MPEP § 1214 through § 1214.07 provide theprocedures to be followed after the conclusion ofthe appeal to the Board, for both patent applicationsand ex parte reexamination proceedings, except asprovided for in this Chapter.

Claims indicated as allowable but objected to priorto appeal because of their dependency from rejectednew or amended claims will be treated as if theywere rejected. In other words, dependent claims withallowable subject matter but based on rejected newor amended claims would be “objected to” in thesame manner as in applications and handled in asimilar manner as discussed in MPEP § 1214.06.However, allowable dependent claims based on anunamended patent claim that has been rejected,canceled, or otherwise not subject to reexaminationshould not be objected to or rejected because of itsdependency. See MPEP § 2260.01 and subsectionII below.

I. EXAMINER SUSTAINED IN WHOLE OR INPART - NO CLAIMS STAND ALLOWED

The following examples illustrate the appropriateapproach to be taken by the examiner in varioussituations in a reexamination proceeding assumingno further appeal has been filed and the time periodfor filing a further appeal has expired:

(A) Example 1: Amended claim 1 is rejected inthe examiner’s answer and claim 2 was objected toprior to appeal as being allowable except for itsdependency from amended claim 1. If the Boardaffirms a rejection of amended patent claim 1, theexaminer should prepare a “Notice of Intent to Issue Ex Parte Reexamination Certificate” (NIRC)indicating that claims 1 and 2 are canceled.

(B) Example 2: All claims are rejected in theexaminer’s answer. If the Board affirms a rejectionagainst a new or amended independent claim andreverses all rejections against a claim dependentthereon, after expiration of the period for furtherappeal, the examiner should proceed in one of twoways:

(1) Convert the dependent claim intoindependent form by examiner’s amendment, cancel

all claims in which the rejection was affirmed, andprepare the NIRC as appropriate; or

(2) Set a 1-month time limit in whichappellant may rewrite the dependent claim(s) inindependent form. Extensions of time under 37 CFR1.550(c) will not be permitted. If no timely reply isreceived, the examiner will prepare the NIRCindicating all claims are canceled, because no claimsstand allowed.

II. EXAMINER SUSTAINED IN WHOLE OR INPART - CLAIMS STAND ALLOWED

The appellant is not required to file a reply, and theexaminer prepares the NIRC indicating which theclaims stand allowed and which claims are canceled.It is not necessary for the patent owner to cancel therejected claims because they may be canceled by anexaminer’s amendment. The following examplesillustrate the appropriate approach to be taken by theexaminer in various situations in a reexaminationproceeding assuming no further appeal has been filedand the time period for filing a further appeal hasexpired:

(A) Example 1: Amended claim 1 is rejected inthe examiner’s answer, claim 2 was objected to priorto appeal as being allowable except for itsdependency from amended claim 1, and independentclaim 3 was allowed prior to the appeal. If the Boardaffirms a rejection of amended claim 1, the examinershould issue the NIRC with claims 1 and 2 ascanceled and claim 3 as confirmed or patentable.

(B) Example 2: Amended claim 1 and itsdependent claim 2 are rejected in the examiner’sanswer and independent claim 3 was allowed priorto the appeal. If the Board affirms a rejection againstamended independent claim 1, and reverses allrejections against dependent claim 2, the examinershould either:

(1) Convert dependent claim 2 intoindependent form by examiner’s amendment, cancelclaim 1 in which the rejection was affirmed, andissue the NIRC indicating claims 2 and 3 aspatentable and claim 1 as canceled; or

(2) Set a 1-month time limit in whichappellant may rewrite dependent claim 2 inindependent form. Extensions of time under 37 CFR1.550(c) will not be permitted. If no timely reply isreceived, the examiner will cancel claims 1 and 2

Rev. 08.2017, January 20182200-155


and issue the NIRC indicating only claim 3 aspatentable.

(C) Example 3: Unamended patent claim 1 isrejected in the examiner’s answer, claim 2 wasobjected to prior to appeal as being allowable exceptfor its dependency from unamended patent claim 1and independent claim 3 was allowed prior to theappeal. Dependent claim 2 may be either unamendedor amended. If the Board affirms a rejection ofunamended patent claim 1, the examiner should issuethe NIRC with claim 1 as canceled and claims 2 and3 as confirmed or patentable.

(D) Example 4: Unamended patent claim 1 anddependent claim 2 are rejected in the examiner’sanswer. Dependent claim 2 may be either unamendedor amended. If the Board affirms a rejection ofunamended patent claim 1 and reverses the rejectionof dependent claim 2, the examiner should preparethe NIRC indicating that claim 1 is canceled andclaim 2 is allowed.

2279 Appeal to Courts [R-07.2015]

A patent owner who is not satisfied with the decisionof the Board may seek judicial review.

The patent owner may appeal the decision of theBoard only to the United States Court of Appealsfor the Federal Circuit pursuant to 35 U.S.C. 141.This is based on the version of 35 U.S.C. 141 and35 U.S.C. 145 as they were amended by Public Law106-113. This version of 35 U.S.C. 141 and 35U.S.C. 145 applies to appeals in reexamination,where the reexamination was filed in the Office onor after November 29, 1999 and the proceeding wascommenced before September 16, 2012. See Section13202(d) of Public Law 107-273. Similarly, 35U.S.C. 141(b), as further amended by Public Law112-29 (effective September 16, 2012), onlyprovides for appeal of a final decision in areexamination proceeding to the United States Courtof Appeals for the Federal Circuit.

A third party requester of an ex parte reexaminationmay not seek judicial review. Yuasa Battery v. Comm’r, 3 USPQ2d 1143 (D.D.C. 1987).

While the reexamination statutory provisions do notprovide for participation by any third party requester

during any court review, the courts have permittedintervention by a third party requester in appropriatecircumstances. See In re Etter, 756 F.2d 852, 225USPQ 1 (Fed. Cir. 1985) and Reed v. Quigg, 230USPQ 62 (D.D.C. 1986). See also MPEP §§ 1216,1216.01, and 1216.02. A third party requester whois permitted to intervene in a civil action has nostanding to appeal the court’s decision, BoeingCo. v. Comm’r, 853 F.2d 878, 7 USPQ2d 1487 (Fed.Cir. 1988).

2280 Information Material to Patentabilityin Reexamination Proceeding Filed under 35U.S.C. 302 [R-08.2017]

37 CFR 1.555 Information material to patentability in exparte reexamination and inter partes reexaminationproceedings.

(a) A patent by its very nature is affected with a publicinterest. The public interest is best served, and the most effectivereexamination occurs when, at the time a reexaminationproceeding is being conducted, the Office is aware of andevaluates the teachings of all information material topatentability in a reexamination proceeding. Each individualassociated with the patent owner in a reexamination proceedinghas a duty of candor and good faith in dealing with the Office,which includes a duty to disclose to the Office all informationknown to that individual to be material to patentability in areexamination proceeding. The individuals who have a duty todisclose to the Office all information known to them to bematerial to patentability in a reexamination proceeding are thepatent owner, each attorney or agent who represents the patentowner, and every other individual who is substantively involvedon behalf of the patent owner in a reexamination proceeding.The duty to disclose the information exists with respect to eachclaim pending in the reexamination proceeding until the claimis cancelled. Information material to the patentability of acancelled claim need not be submitted if the information is notmaterial to patentability of any claim remaining underconsideration in the reexamination proceeding. The duty todisclose all information known to be material to patentabilityin a reexamination proceeding is deemed to be satisfied if allinformation known to be material to patentability of any claimin the patent after issuance of the reexamination certificate wascited by the Office or submitted to the Office in an informationdisclosure statement. However, the duties of candor, good faith,and disclosure have not been complied with if any fraud on theOffice was practiced or attempted or the duty of disclosure wasviolated through bad faith or intentional misconduct by, or onbehalf of, the patent owner in the reexamination proceeding.Any information disclosure statement must be filed with theitems listed in § 1.98(a) as applied to individuals associated withthe patent owner in a reexamination proceeding, and should befiled within two months of the date of the order forreexamination, or as soon thereafter as possible.

(b) Under this section, information is material topatentability in a reexamination proceeding when it is not

2200-156Rev. 08.2017, January 2018


cumulative to information of record or being made of record inthe reexamination proceeding, and

(1) It is a patent or printed publication that establishes,by itself or in combination with other patents or printedpublications, a prima facie case of unpatentability of a claim;or

(2) It refutes, or is inconsistent with, a position thepatent owner takes in:

(i) Opposing an argument of unpatentability reliedon by the Office, or

(ii) Asserting an argument of patentability.

A prima facie case of unpatentability of a claim pending in areexamination proceeding is established when the informationcompels a conclusion that a claim is unpatentable under thepreponderance of evidence, burden-of-proof standard, givingeach term in the claim its broadest reasonable constructionconsistent with the specification, and before any considerationis given to evidence which may be submitted in an attempt toestablish a contrary conclusion of patentability.

(c) The responsibility for compliance with this section restsupon the individuals designated in paragraph (a) of this sectionand no evaluation will be made by the Office in thereexamination proceeding as to compliance with this section.If questions of compliance with this section are raised by thepatent owner or the third party requester during a reexaminationproceeding, they will be noted as unresolved questions inaccordance with § 1.552(c).

The duty of disclosure in reexamination proceedingsfiled under 35 U.S.C. 302 applies to the patentowner; to each attorney or agent who represents thepatent owner, and to every other individual who issubstantively involved on behalf of the patent owner.That duty is a continuing obligation on all suchindividuals throughout the proceeding. Thecontinuing obligation during the reexaminationproceeding is that any such individual to whom theduty applies who is aware of, or becomes aware of,patents or printed publications which (A) are materialto patentability in a reexamination proceeding, and(B) which have not previously been made of recordin the patent file, must bring such patents or printedpublications to the attention of the Office.

Such individuals are strongly encouraged to fileinformation disclosure statements in accordance with37 CFR 1.98, within two months of the date of theorder to reexamine, or as soon thereafter as possible,in order to bring the patents or printed publicationsto the attention of the Office. An informationdisclosure statement filed under 37 CFR 1.555 bythe patent owner after the order for reexaminationand before the first action on the merits may be

submitted as part of the statement under 37 CFR1.530, or it may be filed as a separate paper. If theinformation disclosure statement is filed as part ofa statement under 37 CFR 1.530, the submissionmay include a discussion of the patentability issuesin the reexamination. If, however, the submission isfiled as a separate paper, not part of a statementunder 37 CFR 1.530, the submission must be limitedto a listing of the information disclosed and anexplanation of its relevance. See 37 CFR 1.98. Anydiscussion of the information disclosed relating topatentability issues in the reexamination would beimproper.

To comply with 37 CFR 1.98(a) as to documentscited in the patent or its parent applications that aparty wishes to submit, the party must supply copiesof the information. 37 CFR 1.98(a)(2) requires alegible copy of:

(1) each foreign patent;

(2) each publication or that portion which causedit to be listed, other than U.S. patents and U.S. patentapplication publications unless required by theOffice;

(3) for each cited pending unpublished U.S.application, the application specification includingthe claims, and any drawing of the application, orthat portion of the application which caused it to belisted including any claims directed to that portion;

(4) all other information or that portion whichcaused it to be listed.

The exception to the requirement for copies notedin 37 CFR 1.98(d) does not apply to ex parte and inter partes reexamination proceedings, since areexamination proceeding does not rely on the patentfor an earlier effective filing date.

Any individual substantively involved in thereexamination proceeding filed under 35 U.S.C. 302may satisfy the duty by disclosing the informationto the attorney or agent having responsibility for thereexamination proceeding or to a patent owner actingin their own behalf. A patent owner may satisfy theduty by disclosing the information to the attorneyor agent having responsibility for the reexaminationproceeding. An attorney, agent, or patent owner whoreceives information has no duty to submit such

Rev. 08.2017, January 20182200-157


information if it is not material to patentability inthe reexamination proceeding. See 37 CFR 1.555(b)for the definition of “material to patentability.”

The responsibility of compliance with 37 CFR 1.555rests on all such individuals. Any fraud practiced orattempted on the Office or any violation of the dutyof disclosure through bad faith or intentionalmisconduct by any such individual results innoncompliance with 37 CFR 1.555(a). This duty ofdisclosure is consistent with the duty placed onpatent applicants by 37 CFR 1.56. Any such issuesraised by the patent owner or the third party requesterduring a reexamination proceeding will merely benoted as unresolved questions under 37 CFR1.552(c).

All such individuals who fail to comply with 37 CFR1.555(a) do so at the risk of diminishing the qualityand reliability of the reexamination certificate issuingfrom the proceeding.

However, the material to patentability standard setforth in 37 CFR 1.56(b), which is applicable to patentapplications, and not the standard set forth in 37 CFR1.555(b), applies in ex parte reexaminationproceedings ordered under 35 U.S.C. 257 (as a resultof a supplemental reexamination proceeding). Likepatent application examination, ex parte reexamination proceedings ordered under 35 U.S.C.257 are not limited to patents and printedpublications. In contrast, the material to patentabilitystandard under 37 CFR 1.555(b), which is applicableto ex parte reexaminations filed under 35 U.S.C.302, is limited to patents and printed publications.Any reference to “applicant” in 37 CFR 1.56(b) willbe read as “patent owner” in the context of ex partereexamination proceedings ordered under 35 U.S.C.257, because these proceedings are only availableto a patent owner. See MPEP § 2818.01; see alsoMPEP Chapter 2000.

See MPEP § 2282 (ex parte reexamination) andMPEP § 2686 (inter partes reexamination) for thepatent owner’s duty to disclose prior or concurrentproceedings in which the patent is or was involved.

2281 Interviews in Ex Parte ReexaminationProceedings [R-07.2015]

37 CFR 1.560 Interviews in ex parte reexaminationproceedings.

(a) Interviews in ex parte reexamination proceedingspending before the Office between examiners and the ownersof such patents or their attorneys or agents of record must beconducted in the Office at such times, within Office hours, asthe respective examiners may designate. Interviews will not bepermitted at any other time or place without the authority of theDirector. Interviews for the discussion of the patentability ofclaims in patents involved in ex parte reexaminationproceedings will not be conducted prior to the first officialaction. Interviews should be arranged in advance. Requests thatreexamination requesters participate in interviews withexaminers will not be granted.

(b) In every instance of an interview with an examiner inan ex parte reexamination proceeding, a complete writtenstatement of the reasons presented at the interview as warrantingfavorable action must be filed by the patent owner. An interviewdoes not remove the necessity for response to Office actions asspecified in § 1.111. Patent owner’s response to an outstandingOffice action after the interview does not remove the necessityfor filing the written statement. The written statement must befiled as a separate part of a response to an Office actionoutstanding at the time of the interview, or as a separate paperwithin one month from the date of the interview, whichever islater.

Interviews are permitted in an ex partereexamination proceeding. In the ex parteproceeding, only ex parte interviews between theexaminer and patent owner and/or the patent owner’srepresentative are permitted. Requests by third partyrequesters to participate in interviews or to attendinterviews will not be granted. However, it ispermitted for a Paralegal or Legal InstrumentsExaminer (or support staff in general) to telephonea requester to discuss a request that fails to complywith the filing date requirements for filing areexamination request, because there is noreexamination proceeding yet.

In person interviews between examiner and theowners of patents undergoing ex partereexamination or their attorneys or agents must behad in the Office at its Alexandria location or oneof the Office’s satellite locations at such times,within Office hours when building security permitspublic admission, as the respective examiners maydesignate. Telephonic and videoconferencinginterviews are permitted in ex parte reexaminationproceedings according to the guidelines set forth inMPEP § 713.01 for ex parte prosecution of

2200-158Rev. 08.2017, January 2018


applications. See MPEP § 713.01 for moreinformation on the general policies on how aninterview may be conducted.

Where a panel review has been conducted for anaction in a reexamination proceeding, every effortwill be made to have the panel members present atan interview requested by the patent owner to discussthat action. An interview initiated by the examinerto obtain an amendment to render the reexaminedclaims patentable might not have the panel membersparticipating in the interview.

Interviews for the discussion of the patentability ofclaims in patents involved in reexaminationproceedings will ordinarily not be had prior to thefirst Office action following the order forreexamination and any submissions pursuant to 37CFR 1.530 and 1.535. Such interviews will bepermitted prior to the first Office action only wherethe examiner initiates the interview for the purposeof providing an amendment which will make theclaims patentable and the patent owner’s role ispassive. The patent owner’s role (or patent owner’sattorney or agent) is limited to agreeing to the changeor not. The patent owner should not otherwisediscuss the case on the merits during this interview.

The patent owner’s questions on purely proceduralmatters may be answered by the examiner at anytime during the proceeding.

Where any party who is not the patent ownerrequests information as to the merits of areexamination proceeding, the examiner will notconduct an interview with that party to provide theinformation. Only questions on strictly proceduralmatters, i.e., not directed to any specificreexamination proceeding, may be discussed withthat party. The party who is not the patent ownershould be referred by the examiner to the CentralReexamination Unit (CRU) Supervisory PatentReexamination Specialist (SPRS) or TechnologyCenter (TC) Quality Assurance Specialist (QAS) toaddress any such questions on strictly proceduralmatters. See MPEP § 2212.01. The followingguidelines are to be followed in determining whethera question is strictly directed to a procedural matter:(A) any information which a person could obtain byreading the file (which is open to the public) is

procedural, and it may be discussed only to theextent of the information provided in the public file;(B) a matter not available from a reading of the fileis considered as relating to the merits of theproceeding, and may not be discussed. Thus, forexample, a question relating to when the next Officeaction will be rendered is improper as it relates tothe merits of the proceeding (because thisinformation cannot be obtained from a reading ofthe file). Such a question by a party who is not thepatent owner should not be responded to by theexaminer or any other official. As another example,a question regarding how the examiner is interpretinga claim limitation relates to the merits of theproceeding, and may not be discussed. If theexaminer has set forth an interpretation of a claimlimitation in an Office action, the examiner may onlyquote the Office action. The interpretation may notbe further discussed, because any further informationcannot be obtained from a reading of the file.

The examiner must complete an Ex Parte InterviewSummary form PTOL-474 for each interview heldwhere a matter of substance has been discussed (seeMPEP § 713.04). If practicable, a copy of the formshould be given to the patent owner at the conclusionof the interview. The original should be made ofrecord in the reexamination file, and a copy shouldbe mailed to any third party requester and the patentowner, if not already provided with a copy.

The general procedure for conducting interviewsand recording same is described at MPEP § 713.01- § 713.04.

Pursuant to 35 U.S.C. 305, however, “[a]llreexamination proceedings … will be conductedwith special dispatch within the Office.”Accordingly, there are additional proceduralrequirements to facilitate the statutory mandate for“special dispatch.”

In the case where the patent owner desires to initiatean interview, the patent owner should initiallycontact the examiner in charge of the proceeding toindicate what issues are sought to be discussed, andto determine if an interview will be granted. If theexaminer agrees to grant the interview, the patentowner must file, at least three (3) working days priorto the interview, an informal written statement of

Rev. 08.2017, January 20182200-159


the issues to be discussed at the interview, and aninformal copy of any proposed claims to bediscussed, unless examiner waives this requirement.The copy of these materials is to be submitted byfacsimile transmission (FAX) directly to theexaminer or hand-carried to the examiner so as toavoid the possibility of delay in matching thematerials with the file. The informal copies that areconsidered by the examiner will be made of recordin the reexamination proceeding as an attachmentto the Interview Summary form PTOL-474completed by the examiner after the interview. Thesepreliminary steps are for the purpose of providingstructure to the interview so as to facilitate thestatutory mandate for special dispatch.

The duration of the interview will not exceed onehour, unless the patent owner files a petition under37 CFR 1.182 showing sufficient cause where moretime is needed. In a reexamination proceeding, theinvention should be well defined after the patent hasissued, and it is simply a matter of defining theclaims over art applied, to the extent such is deemednecessary. An hour of time in a structured plannedinterview should be sufficient to accomplish this,and in those rare instances where it is not, a patentowner may show cause to extend the time. Duringthe interview, the examiner is always free to extendthe duration of the interview to discuss issues thatthe examiner deems appropriate for (further)discussion. Such an extension of the duration of theinterview is permitted at the examiner’s solediscretion.

Only one interview may be requested after an Officeaction and prior to filing the response to that action,absent a showing of good cause to conduct a secondinterview during this period. The showing of goodcause will explain why the information to bepresented could not have been presented sooner,given the statutory requirement for "special dispatch"in reexamination. It is to be noted that a partyrequesting a second interview after final rejectionmust provide an advance showing that would"convince" a reasonable examiner that "it willexpedite the issues for appeal or disposal of theapplication." See MPEP § 713.09.

PATENT OWNER’S STATEMENT OF THEINTERVIEW

In every instance of an interview with the examiner,a patent owner’s statement of the interview,including a complete written statement of the reasonspresented at the interview as warranting favorableaction, must be filed by the patent owner. 37 CFR1.560(b). The written statement must be filed eitheras a separate paper within one month after the dateof the interview, or as a separate part of a responseto an outstanding Office action, whichever is later.

The requirement for a patent owner’s statement ofthe interview cannot be waived by the examiner. Itshould be noted that, pursuant to 37 CFR 1.550(d),the failure to file a written statement of an interviewas required under 37 CFR 1.560(b) will result in thetermination of the reexamination prosecution (in thesame way that failure to timely respond to an Officeaction results in the termination of the reexaminationprosecution).

2282 Notification of Existence of Prior orConcurrent Proceedings and DecisionsThereon [R-07.2015]

37 CFR 1.565 Concurrent office proceedings which includean ex parte reexamination proceeding.

(a) In an ex parte reexamination proceeding before theOffice, the patent owner must inform the Office of any prior orconcurrent proceedings in which the patent is or was involvedsuch as interferences, reissues, ex parte reexaminations, interpartes reexaminations, or litigation and the results of suchproceedings. See § 1.985 for notification of prior or concurrentproceedings in an inter partes reexamination proceeding.

*****

It is important for the Office to be aware of any prioror concurrent proceedings in which apatent undergoing ex parte reexamination is orwas involved, and any results of such proceedings.In accordance with 37 CFR 1.565(a), the patentowner is required to provide the Office withinformation regarding the existence of any suchproceedings, and the results thereof, if known. Thisrequirement includes supplemental examinationproceedings and reviews before the Patent Trial andAppeal Board in addition to the examples providedin 37 CFR 1.565(a) reproduced above. Ordinarily,no submissions of any kind by third parties filedafter the date of the order are entered into the

2200-160Rev. 08.2017, January 2018


reexamination or patent file while the reexaminationproceeding is pending. However, in order to ensurea complete file, with updated status informationregarding prior or concurrent proceedings regardingthe patent under reexamination, the Office will, atany time, accept from any parties, for entry into thereexamination file, copies of notices of suits andother proceedings involving the patent and copiesof decisions or papers filed in the court fromlitigations or other proceedings involving the patent.Such decisions include final court decisions (evenif the decision is still appealable), decisions tovacate, decisions to remand, and decisions as to themerits of the patent claims. Non-merit decisions onmotions such as for a new venue, a newtrial/discovery date, or sanctions will not be enteredinto the patent file, and will be expunged from thepatent file by closing the appropriate paper if theywere entered before discovery of their nature.Further, papers filed in the court from litigations orother proceedings involving the patent will not beentered into the record (and will be expunged ifalready entered) if they provide a party’s arguments,such as a memorandum in support of summaryjudgment. If the argument has an entry right in thereexamination proceeding, it must be submitted viathe vehicle (provision(s) of the rules) that providesfor that entry right. It is not required nor is itpermitted that parties submit copies of copendingreexamination proceedings and applications (whichcopies can be mistaken for a new request/filing);rather, submitters may provide a notice identifyingthe application/proceeding number and its status.Any submission that is not permitted entry will bereturned, expunged, or discarded, at the solediscretion of the Office. It is to be noted that if theOffice, in its sole discretion, deems the volume ofthe papers filed from litigations or other proceedingsto be too extensive/lengthy, the Office may return,expunge or discard, at its sole discretion, all or partof the submission. In such an instance, a party maylimit the submission in accordance with what isdeemed relevant, and resubmit the papers. Personsmaking such submissions must limit the submissionsto the notification, and must not include furtherarguments or information. Where a submission isnot limited to bare notice of the prior or concurrentproceedings (in which a patent undergoingreexamination is or was involved), the submissionwill be returned, expunged or discarded by the

Office. It is to be understood that highlighting ofcertain text by underlining, fluorescent marker, etc.,goes beyond bare notice of the prior or concurrentproceedings.

Any proper submission pursuant to 37 CFR 1.565(a)will be promptly entered into the record of thereexamination file, and will be considered by theexaminer as to its content, when the proceedingcomes up for action on the merits. Thus, for example,if the patent owner properly files in a reexaminationproceeding, pursuant to 37 CFR 1.565(a), anenterable paper from the discovery stage of litigationof the patent being reexamined, the paper would beentered into the reexamination file and consideredby the examiner, the next time the proceeding comesup for action on the merits. See MPEP § 2286 forOffice investigation for prior or concurrent litigation.

Form paragraph 22.07 or 22.08, if appropriate, maybe used to remind the patent owner of the continuingduty under 37 CFR 1.565(a) to apprise the Office ofany litigation activity.

¶ 22.07 Litigation Reminder (Patent Owner Request orDirector Ordered Reexamination)

The patent owner is reminded of the continuing responsibilityunder 37 CFR 1.565(a), to apprise the Office of any litigationactivity, or other prior or concurrent proceeding, involving PatentNo. [1] throughout the course of this reexamination proceeding.See MPEP §§ 2207, 2282 and 2286.

Examiner Note:

This form paragraph is to be used when granting an ex partereexamination request filed by a patent owner and in the firstaction in a Director Ordered reexamination or reexaminationordered under 35 U.S.C. 257.

¶ 22.08 Litigation Reminder (Third Party Requester)

The patent owner is reminded of the continuing responsibilityunder 37 CFR 1.565(a), to apprise the Office of any litigationactivity, or other prior or concurrent proceeding, involving PatentNo. [1] throughout the course of this reexamination proceeding.The third party requester is also reminded of the ability tosimilarly apprise the Office of any such activity or proceedingthroughout the course of this reexamination proceeding. SeeMPEP §§ 2207, 2282 and 2286.

Examiner Note:

This form paragraph is to be used when granting an ex partereexamination request filed by a third party requester.

Rev. 08.2017, January 20182200-161


2283 Multiple Copending Ex ParteReexamination Proceedings [R-07.2015]

37 CFR 1.565 Concurrent Office proceedings which includean ex parte reexamination proceeding.

*****

(c) If ex parte reexamination is ordered while a prior exparte reexamination proceeding is pending and prosecution inthe prior ex parte reexamination proceeding has not beenterminated, the ex parte reexamination proceedings will usuallybe merged and result in the issuance and publication of a singlecertificate under § 1.570. For merger of inter partes reexamination proceedings, see § 1.989(a). For merger of exparte reexamination and inter partes reexaminationproceedings, see § 1.989(b).

*****

This section discusses multiple copendingreexamination requests which are filed on the samepatent, where none of the requests is an inter partesrequest. If one of the multiple copendingreexamination requests is an inter partes request,see MPEP § 2686.01.

In order for a second or subsequent request for exparte reexamination to be granted, a substantial newquestion of patentability must be raised by the art(patents and/or printed publications) cited in thesecond or subsequent request for reexamination.MPEP § 2240 provides a discussion as to whethera substantial new question of patentability is raisedby the prior art cited in a second or subsequentrequest for reexamination filed while areexamination proceeding is pending.

If the second or subsequent request is granted, thedecision on whether or not to combine theproceedings will be made by the CentralReexamination Unit (CRU) Director where thereexamination is pending. The CRU Director maydelegate this to the CRU Supervisory PatentReexamination Specialist (SPRS). No decision oncombining the reexaminations should be made untilafter reexamination is actually ordered in the laterfiled request for reexamination. See subsection Ibelow.

I. PROCEEDINGS MERGED

Where a second request for reexamination is filedand reexamination is ordered, and a firstreexamination proceeding is pending, 37 CFR

1.565(c) provides that the proceedings will usuallybe merged. However, a decision not to merge iswithin the sole discretion of the Office tofacilitate/carry out the statutory mandate of 35U.S.C. 305 to conduct reexamination proceedingswith “special dispatch.”

Where a second request for reexamination is filedwhile a first reexamination proceeding is pending,the second request is decided based on the claims ineffect at the time of the determination (see 37 CFR1.515(a)), and if reexamination is ordered, the patentowner and the second requester are given anopportunity to file a statement and reply,respectively. It is then considered whether theproceedings will, or will not, be merged. If theproceedings are merged, the prosecution will thencontinue at the most advanced point possible for thefirst proceeding. It should be noted that if a finalrejection has been issued in the first proceeding,prosecution will be ordinarily be reopened whereany of the new patents or printed publicationspresented in the second request are applied to themerged proceeding in a new ground of rejection.

The patent owner will be provided with anopportunity to respond to any new rejection in amerged reexamination proceeding prior to the actionbeing made final. See MPEP § 2271. If thereexamination proceedings are merged, a singlecertificate will be issued based upon the mergedproceedings. See 37 CFR 1.565(c).

II. WHEN PROCEEDING IS SUSPENDED

It may also be desirable in certain situations tosuspend a proceeding for a short and specified periodof time. For example, a suspension of a firstreexamination proceeding may be issued to allowtime for the patent owner’s statement and therequester’s reply in a second proceeding prior tomerging. A suspension will only be granted inextraordinary instances, because of the statutoryrequirements that examination proceed with “specialdispatch.” Suspension will not be granted when thereis an outstanding Office action.

2200-162Rev. 08.2017, January 2018


III. MERGER OF REEXAMINATIONS

The following guidelines should be observed whentwo requests for reexamination directed to a singlepatent have been filed.

The second request (i.e., Request 2) should beprocessed as quickly as possible and assigned to thesame examiner to whom the first request (i.e.,Request 1) is assigned. If neither request forreexamination has been ordered, the examiner mustaddress each request within three months of its filingdate. If Request 1 has been ordered, Request 2 shouldbe decided immediately. If Request 2 is denied, exparte prosecution of Request 1 should continue. IfRequest 2 is granted, the order in the secondproceeding should be mailed immediately. The twoproceedings should not be acted upon until the patentowner’s statement and any reply by the requesterhave been received in Request 2, or until the timefor filing same expires. Then, the CRU Director orthe CRU Director’s delegate will prepare a decisionwhether to merge the two proceedings.

A decision by the CRU Director to merge thereexamination proceedings should include arequirement that the patent owner maintain identicalclaims in both files. It will further require thatresponses by the patent owner, and any other paperfiled in the merged proceeding, must consist of asingle response, addressed to both files, filed induplicate, each bearing a signature and containingidentifying data for both files, for entry in both files.The decision will point out that both files will bemaintained as separate complete files. Where theclaims are not the same in both files, the decision ofmerger will indicate at its conclusion that the patentowner is given one month to provide an amendmentto make the claims the same in each file. Where theclaims are already the same in both files, the decisionwill indicate at its conclusion that an Office actionwill be mailed in due course, and that the patentowner need not take any action at present. Thedecision of merger will be mailed immediately.

Where the merger decision indicates that an Officeaction will follow, the merged proceeding is returnedto the examiner immediately after the decision toissue an Office action. Where the merger decisionindicates that the patent owner is given one month

to provide an amendment to make the claims thesame in each file (identical amendments to be placedin all files), the CRU will await submission of theamendment or the expiration of the time to submitthe amendment. After the amendment is receivedand processed by the technical support staff or thetime for submitting the amendment expires, themerged proceeding will be returned to the examinerto issue an Office action.

Once the merged proceeding is returned to theexaminer for issuance of an Office action, theexaminer should prepare an Office action at the mostadvanced point possible for the first proceeding.Thus, if the first proceeding is ready for a finalrejection and the second proceeding does not provideany new information which would call for a newground of rejection, the examiner should issue a finalrejection for the merged proceeding using theguidelines for the prosecution stage set forth below.

If the ex parte prosecution stage has not yet begunin Request 1 when Request 2 is received, Request 1should be processed to the point where it is readyfor ex parte prosecution. Then, Request 1 isnormally not acted upon until Request 2 is grantedand is ready for ex parte action following thestatement and reply. Thereafter, the two proceedingswould be merged. However, if Request 2 is denied,there would be no merger and prosecution will becarried out solely on Request 1. Note that Request2 should be determined on its own merits and shouldnot rely on nor refer to the decision issued in Request1.

In the event that an amendment to make the claimsthe same in each file is required by the mergerdecision (identical amendments to be placed in allfiles) but is not timely submitted, any claim that doesnot contain identical text in all of the mergedproceedings (or is present in one proceeding but notpresent in the other(s)) should be rejected under35 U.S.C. 112, second paragraph, as being indefiniteas to the content of the claim, and thus failing toparticularly point out the invention.

Rev. 08.2017, January 20182200-163


IV. THE PROSECUTION STAGE, AFTERMERGER

Where merger is ordered, the patent owner isrequired to maintain identical amendments in themerged reexamination files for purposes of themerged proceeding. The maintenance of identicalamendments in the files is required as long as thereexamination proceedings remain merged. Whereidentical amendments are not present in thereexamination files at the time merger is ordered,the patent owner will be required to submit anappropriate “housekeeping” amendment placing thesame amendments in the proceedings. This may beaccomplished by amending one or more of theproceedings, as appropriate. The patent owner mustnot address any issue of patentability in thehousekeeping amendment. In the event that anamendment to make the claims the same in each fileis required by the merger decision (identicalamendments to be placed in all files) but is nottimely submitted, any claim that does not containidentical text in all of the merged proceedings shouldbe rejected under 35 U.S.C. 112, second paragraph,as being indefinite as to the content of the claim, andthus failing to particularly point out the invention.

When prosecution is appropriate in mergedproceedings, a single combined examiner’s actionwill be prepared. Each action will contain the controlnumber of the two proceedings on every page. Asingle action cover mailing sheet (having bothcontrol numbers at the top) will be provided by theexaminer to the support staff. The support staff willensure that the action is processed and mailed to thepatent owner and to each of the requesters, that theaction cover mailing sheets accurately reflect themailing to each of these parties, that all partiesreceive copies of the action, the cover mailing sheets,and any other attachments, and that the entire action,including the mailing sheets and any otherattachments, is scanned into the file of the ImageFile Wrapper (IFW) database.

When a “Notice Of Intent To Issue Ex ParteReexamination Certificate” (NIRC) is appropriate,a notice will be printed for the merged proceedingand scanned into the files of the merged proceeding.Both reexamination files will then be processed. TheTC or the CRU should prepare the file of the

concurrent proceedings in the manner specified inMPEP § 2287 before release to Office of DataManagement.

The above guidelines should be extended to thosesituations where more than two requests forreexamination are filed for a single patent.

V. PROCEEDINGS NOT MERGED

Pursuant to 35 U.S.C. 305, “[a]ll reexaminationproceedings under this section…will be conductedwith special dispatch within the Office.” Thisstatutory provision is grounded on the need forcertainty and finality as to the question ofpatentability raised by the request for reexamination.Thus, if a second request for reexamination willunduly delay the first reexamination proceeding, thetwo proceedings generally will not be merged. If theOffice were to merge the two proceedings, the firstreexamination proceeding would need to bewithdrawn from its place in the process, thusdelaying, instead of advancing, prosecution. Thiswould run contrary to the statutory “special dispatch”requirement of 35 U.S.C. 305 and its intent. On theother hand, if the Office does not merge, the firstreexamination proceeding can be concluded, andany substantial new question of patentability raisedby the second reexamination request can be resolvedin the second proceeding, with no delay resulting.The second request is then considered based on theclaims in the patent as indicated in the issuedreexamination certificate, rather than the originalclaims of the patent. However, the Office alwaysretains the authority to merge because in someinstances, it may be more efficient to merge the twoproceedings, which would foster “special dispatch.”The instances where the Office may, or may not,merge an ongoing reexamination proceeding with asubsequent reexamination proceeding, are addressedon a case-by-case basis.

For processing of the second reexaminationproceeding, see MPEP § 2295.

VI. FEES IN MERGED PROCEEDINGS

Where the proceedings have been merged and apaper is filed which requires payment of a fee (e.g.,excess claim fee, fee for request for extension of

2200-164Rev. 08.2017, January 2018


time, petition fee, appeal fee, brief fee, oral hearingfee), only a single fee need be paid. For example,only one fee need be paid for an appeal brief eventhough the brief relates to merged multipleproceedings and copies must be filed for each filein the merged proceeding.

VII. PETITION TO MERGE MULTIPLECOPENDING REEXAMINATION PROCEEDINGS

No petition to merge multiple reexaminationproceedings is necessary since the Office willgenerally, sua sponte, make a decision as to whetherit is appropriate to merge the multiple reexaminationproceedings. If any petition to merge the proceedingsis filed prior to the determination (37 CFR 1.515)and order to reexamine (37 CFR 1.525) on thesecond request, it will not be considered but will bereturned to the party submitting the same by the CRUDirector. The decision expunging such a prematurepetition will be made of record in both reexaminationfiles. See MPEP § 2267.

While the patent owner can file a petition to mergethe proceedings at any time after the order toreexamine (37 CFR 1.525) on the second request,the better practice is to include any such petitionwith the patent owner’s statement under 37 CFR1.530 or subsequent thereto in the event the CRUDirector has not acted prior to that date to merge themultiple reexamination proceedings. The third partyrequester of a reexamination proceeding(reexamination # 1) does not have a right to file apetition under 37 CFR 1.182 to merge thatreexamination proceeding with anotherreexamination proceeding (reexamination # 2),where that reexamination third party requester doesnot have any standing to request relief with respectto the other reexamination proceeding(reexamination # 2). No such standing is providedfor anywhere in the statute. Instead of filing apetition under 37 CFR 1.182 to merge thereexamination proceedings, the third party requestermay file a notification of concurrent proceedingspursuant to MPEP § 2282. After being notified ofthe existence of the concurrent reexaminationproceedings and after consideration of the mergerand suspension options becomes ripe, the Officewould sua sponte consider any action to be taken.The requester does have the right to file a petition

under 37 CFR 1.182 to stay the reexaminationproceeding that it requested.

All decisions on the merits of petitions to mergemultiple reexamination proceedings will be madeby the CRU Director (or to the CRU SPRS, if theCRU Director delegates it to him or her).

2284 Copending Ex Parte Reexaminationand Interference Proceedings [R-11.2013]


(a) In an ex parte reexamination proceeding before theOffice, the patent owner must inform the Office of any prior orconcurrent proceedings in which the patent is or was involvedsuch as interferences, reissues, ex parte reexaminations, interpartes reexaminations, or litigation and the results of suchproceedings. See § 1.985 for notification of prior or concurrentproceedings in an inter partes reexamination proceeding.

*****

(e) If a patent in the process of ex parte reexamination isor becomes involved in an interference, the Director maysuspend the reexamination or the interference. The Director willnot consider a request to suspend an interference unless a motion(§ 41.121(a)(3) of this title) to suspend the interference has beenpresented to, and denied by, an administrative patent judge, andthe request is filed within ten (10) days of a decision by anadministrative patent judge denying the motion for suspensionor such other time as the administrative patent judge may set.For concurrent inter partes reexamination and interference ofa patent, see § 1.993.

37 CFR 41.8 Mandatory notices.

(a) In an appeal brief (§§ 41.37, 41.67, or 41.68) or at theinitiation of a contested case (§ 41.101), and within 20 days ofany change during the proceeding, a party must identify:

(1) Its real party-in-interest, and

(2) Each judicial or administrative proceeding thatcould affect, or be affected by, the Board proceeding.

(b) For contested cases, a party seeking judicial review ofa Board proceeding must file a notice with the Board of thejudicial review within 20 days of the filing of the complaint orthe notice of appeal. The notice to the Board must include acopy of the complaint or notice of appeal. See also §§ 1.301 to1.304 of this title.

37 CFR 41.102 Completion of examination.

Before a contested case is initiated, except as the Board mayotherwise authorize, for each involved application and patent:

(a) Examination or reexamination must be completed, and

(b) There must be at least one claim that:

(1) Is patentable but for a judgment in the contestedcase, and

(2) Would be involved in the contested case.

Rev. 08.2017, January 20182200-165


37 CFR 41.103 Jurisdiction over involved files.

The Board acquires jurisdiction over any involved file when theBoard initiates a contested case. Other proceedings for theinvolved file within the Office are suspended except as the Boardmay order.

A patent being reexamined in an ex partereexamination proceeding may be involved in aninterference proceeding with at least one application,where the patent and the application are claimingthe same patentable invention, and at least one ofthe application’s claims to that invention arepatentable to the applicant. See MPEP Chapter 2300.

The general policy of the Office is that areexamination proceeding will not be delayed, orstayed, because of an interference or the possibilityof an interference. The reason for this policy is therequirement of 35 U.S.C. 305 that all reexaminationproceedings be conducted with “special dispatch”within the Office. In general, the Office will followthe practice of making the required and necessarydecisions in the reexamination proceeding and, atthe same time, going forward with the interferenceto the extent desirable. It is noted that 37 CFR 41.103provides the Board with the flexibility to tailor aspecific solution to occurrences where reexaminationand interference proceedings for the same patent arecopending, as such occurrences may arise. Decisionsin the interference will take into consideration thestatus of the reexamination proceeding and what isoccurring therein. The decision as to what actionsare taken in the interference will, in general, be takenin accordance with normal interference practice.

Although a patent being reexamined via areexamination proceeding may become involved inan interference proceeding, the reexaminationproceeding itself can never be involved in aninterference proceeding. See 35 U.S.C. 135subsection (a) which states that “[w]henever anapplication is made for a patent which, in the opinionof the Director, would interfere with any pending application, or with any unexpired patent, aninterference may be declared” (emphasis added).The reexamination proceeding is neither anapplication nor a patent.

I. ATTEMPTING TO PROVOKE ANINTERFERENCE WITH A PATENT INVOLVEDIN A REEXAMINATION PROCEEDING

When an amendment is filed in a pending applicationseeking to provoke an interference with a patentinvolved in a reexamination proceeding, theapplicant must comply with 37 CFR 41.202(a),including identifying the patent under reexaminationwith which interference is sought. The correspondingapplication claims may be rejected on any applicableground including, if appropriate, the prior art citedin the reexamination proceeding. See MPEP Chapter2300. Prosecution of the application should continueas far as possible. If the application is placed incondition for allowance and still contains claimswhich interfere with claims of the patent underreexamination, then an interference should ordinarilybe proposed between the application and the patent.The examiner must notify the Office of Patent LegalAdministration (OPLA) before proposing theinterference, and such an interference may not beproposed unless authorized by OPLA.

If the interference is not authorized (e.g., resolutionof an issue in the reexamination proceeding isnecessary to the interference), further action on theapplication should be suspended until the certificateon the reexamination proceeding has been issuedand published. Form paragraph 23.16 may be usedto notify applicant of the suspension.

Once the reexamination certificate has issued andpublished, the examiner should review the certificateto see if it makes any changes in the patent claimsand then evaluate whether the patent still containsclaims which interfere with claims of the application.If the claims do interfere, then the examiner shouldpropose an interference. See MPEP Chapter 2300.

II. MOTION/REQUEST TO SUSPENDINTERFERENCE PENDING THE OUTCOME OFA REEXAMINATION PROCEEDING

A miscellaneous motion under 37 CFR 41.121(a)(3)to suspend an interference pending the outcome ofa reexamination proceeding may be made at anytime during the interference by any party thereto.See 37 CFR 41.123(b) for the procedure. The motionmust be presented to the administrative patent judge

2200-166Rev. 08.2017, January 2018


who will decide the motion based on the particularfact situation. However, suspension is not favored.Normally, no consideration will be given such amotion unless and until a reexamination order isissued, nor will suspension of the interferencenormally be permitted until after any motions havebeen disposed of in the interference proceeding. Ifthe motion under 37 CFR 41.121(a)(3) is denied bythe administrative patent judge, a request to stay theinterference may be made to the Director of theUSPTO under 37 CFR 1.565(e).

A request to stay an interference under 37 CFR1.565(e) will be decided by the Chief AdministrativePatent Judge of the Board.

III. REQUEST FOR REEXAMINATION FILEDDURING INTERFERENCE

In view of the provisions of 37 CFR 1.510(a), “[a]nyperson may, at any time during the period ofenforceability of a patent” file a request forreexamination. Under 37 CFR 41.8(a), the patentowner must notify the Board that a request forreexamination was filed, within 20 days of receivingnotice of the request having been filed. Where it isthe patent owner that files the request forreexamination, the 20 days run from the filing dateof the request, since that is when the patent owner“received the notice” of filing the request. Suchrequests for reexamination will be processed in thenormal manner. No delay, or stay, of thereexamination will occur because the requester isnot a party to the interference. If the examiner ordersreexamination pursuant to 37 CFR 1.525 andsubsequently rejects a patent claim correspondingto a count in the interference, the attention of theBoard shall be called thereto.

IV. INTERFERENCE DECLARED WHILEREEXAMINATION PROCEEDING IS ONGOING

Under 37 CFR 1.565, the patent owner in areexamination proceeding before the Office isrequired to notify the Office when the patent beingreexamined becomes involved in an interference.To do so, the patent owner must file in thereexamination proceeding a paper giving notice ofthe interference proceeding. The requirements of37 CFR 1.565, and of 37 CFR 41.8(a) (see the

preceding paragraph), are designed to keep theOffice and the appropriate parties informed ofactivity which is relevant to reexamination andinterference proceedings and, to the extent possible,to eliminate procedural surprise.

V. PETITION TO STAY REEXAMINATIONPROCEEDING BECAUSE OF INTERFERENCE

Any petition to stay a reexamination proceeding,because of an interference, which is filed prior tothe determination (37 CFR 1.515) and order toreexamine (37 CFR 1.525) will not be considered,but will be returned to the party submitting the same.The decision returning such a premature petitionwill be made of record in the reexamination file, butno copy of the petition will be retained by the Office.A petition to stay the reexamination proceedingbecause of the interference may be filed by the patentowner as a part of the patent owner’s statement under37 CFR 1.530 or subsequent thereto. If a party tothe interference, other than the patent owner, is arequester of the reexamination, that party maypetition to stay the reexamination proceeding as apart of a reply pursuant to 37 CFR 1.535. If the otherparty to the interference is not the requester, anypetition by that party is improper under 37 CFR1.550(g) and will not be considered. Any suchimproper petitions will be returned to the partysubmitting the same. Premature petitions to stay thereexamination proceedings, i.e., those filed prior tothe determination (37 CFR 1.515) and order toreexamine (37 CFR 1.525), will be returned by theCentral Reexamination Unit (CRU) or TechnologyCenter (TC) Director as premature. Petitions to stayfiled subsequent to the date of the order forreexamination will be referred to OPLA for decision.All decisions on the merits of petitions to stay areexamination proceeding because of an interferencewill be made in OPLA.

VI. ACTION IN INTERFERENCE FOLLOWINGREEXAMINATION

If one or more claims of a patent which is involvedin an interference are canceled or amended by theissuance and publication of a reexaminationcertificate, the Board must be promptly notified.

Rev. 08.2017, January 20182200-167


Upon issuance and publication of the reexaminationcertificate, the patent owner must notify theadministrative patent judge thereof.

2285 Copending Ex Parte Reexaminationand Reissue Proceedings [R-07.2015]


*****

(d) If a reissue application and an ex parte reexaminationproceeding on which an order pursuant to § 1.525 has beenmailed are pending concurrently on a patent, a decision willusually be made to merge the two proceedings or to suspendone of the two proceedings. Where merger of a reissueapplication and an ex parte reexamination proceeding isordered, the merged examination will be conducted inaccordance with §§ 1.171 through 1.179, and the patent ownerwill be required to place and maintain the same claims in thereissue application and the ex parte reexamination proceedingduring the pendency of the merged proceeding. The examiner’sactions and responses by the patent owner in a mergedproceeding will apply to both the reissue application and the exparte reexamination proceeding and will be physically enteredinto both files. Any ex parte reexamination proceeding mergedwith a reissue application shall be concluded by the grant of thereissued patent. For merger of a reissue application and an interpartes reexamination, see § 1.991.

*****

The general policy of the Office is that a reissueapplication examination and an ex partereexamination proceeding will not be conductedseparately at the same time as to a particular patent.The reason for this policy is to permit timelyresolution of both proceedings to the extent possibleand to prevent inconsistent, and possibly conflicting,amendments from being introduced into the twoproceedings on behalf of the patent owner.Accordingly, if both a reissue application and an exparte reexamination proceeding are pendingconcurrently on a patent, a decision will normallybe made (A) to merge the two proceedings or (B) tostay one of the two proceedings. See In re Onda,229 USPQ 235 (Comm’r Pat. 1985). The decisionas to whether the proceedings are to be merged, orwhich proceeding (if any) is to be stayed is made inthe Office of Patent Legal Administration (OPLA).

Where a reissue application and a reexaminationproceeding are pending concurrently on a patent, thepatent owner, i.e., the reissue applicant, has aresponsibility to notify the Office of such. 37 CFR1.178(b), 1.565(a), and 1.985. The patent owner

should file in the reissue application, as early aspossible, a Notification of Concurrent Proceedingspursuant to 37 CFR 1.178(b) in order to notify theOffice in the reissue application of the existence ofthe reexamination proceeding on the same patent.See MPEP § 1418. In addition, the patent ownershould file in the reexamination proceeding, as earlyas possible, a Notification of Concurrent Proceedingspursuant to 37 CFR 1.565(a) or 1.985 (dependingon whether the reexamination proceeding is an exparte reexamination proceeding or an inter partesreexamination proceeding) to notify the Office inthe reexamination proceeding of the existence of thetwo concurrent proceedings.

I. TIME FOR MAKING DECISION ON MERGINGOR STAYING THE PROCEEDINGS

A decision whether or not to merge the reissueapplication examination and the ex parte reexamination proceeding, or to stay one of the twoproceedings, will not be made prior to the mailingof an order to reexamine the patent pursuant to 37CFR 1.525, and the expiration of the statement-replyperiod following the order to reexamine. Until suchtime, the examination of the reissue application willproceed. A determination on the request must notbe delayed because of the existence of a copendingreissue application, since 35 U.S.C. 304 and 37 CFR1.515 require a determination within 3 months following the filing date of the request. See MPEP§ 2241. If the decision on the request deniesreexamination (MPEP § 2247), the examination ofthe reissue application should be continued. Ifreexamination is ordered (MPEP § 2246), the CentralReexamination Unit (CRU) Supervisory PatentReexamination Specialist (SPRS) or TechnologyCenter Quality Assurance Specialist (QAS) willawait the filing of any statement under 37 CFR 1.530and any reply under 37 CFR 1.535, or the expirationof the time for same (see MPEP § 2249 to § 2251).Thereafter, CRU SPRS or TC QAS should promptlynotify OPLA that the proceedings are ready forconsideration of merger. If any of the reexaminationfile, the reissue application, and the patent file arepaper files, they should be hand delivered to OPLAat the time of the notification to OPLA.

If a reissue application is filed during the pendencyof a reexamination proceeding, OPLA should be

2200-168Rev. 08.2017, January 2018


notified as promptly as possible after the reissueapplication reaches the TC, that the proceedings areready for consideration of merger. If any of thereexamination file, the reissue application, and thepatent file are paper files, they should be handdelivered to the OPLA at the time of the notificationto OPLA.

The decision on whether or not the proceedings areto be merged, or which proceeding (if any) is to bestayed, will generally be made as promptly aspossible after receipt of the notification to OPLAand, if applicable, delivery of all the paper files toOPLA. Until a decision is mailed merging theproceedings or staying one of the proceedings, thetwo proceedings will continue and be conductedsimultaneously, but separately.

The Office may in certain situations issue acertificate at the termination of a reexaminationprosecution, even if a copending reissue applicationor another reexamination request has already beenfiled.

II. CONSIDERATIONS IN DECIDING WHETHERTO MERGE THE PROCEEDINGS OR WHETHERTO STAY A PROCEEDING

The decision on whether to merge the proceedingsor stay a proceeding will be made on a case-by-casebasis based upon the status of the variousproceedings. The decision to merge, or not to merge,is within the sole discretion of the Office tofacilitate/carry out the orderly operation of the Officein addressing the proceedings. The status of thereissue application and the reexamination proceedingwill be taken into account in the decision as towhether merger will be ordered, or one of the twoproceedings stayed.

A. Reissue About To Issue, Reexamination Requested

If the reissue patent will issue before thedetermination on the reexamination request must bemade (e.g., within three months from the request’sfiling date), the determination on the request shouldnormally be delayed until after the granting of thereissue patent; and then the determination should bemade on the basis of the claims in the reissue patent.The reexamination, if ordered, would then be on the

reissue patent claims rather than the original patentclaims. Since the reissue application would no longerbe pending, the reexamination would be processedin a normal manner.

Where a reissue patent has been issued, thedetermination on the request for reexaminationshould specifically point out that the determinationhas been made on the claims of the reissue patentand not on the claims of the original patent. Anyamendment made in the reexamination proceedingshould treat the changes made by the reissue as thetext of the patent, and all bracketing and underliningmade with respect to the patent as changed by thereissue. Note that the reissue claims used as thestarting point in the reexamination proceeding mustbe presented in the reexamination proceeding as a“clean copy.” Thus, words bracketed in the reissuepatent claim(s) would not appear at all in thereexamination clean copy of the claim(s). Also,words that were added via the reissue patent willappear in italics in the reissue patent, but must appearin plain format in the reexamination clean copy ofthe claim(s).

If a reissue patent issues on the patent underreexamination after reexamination is ordered, thenext action from the examiner in the reexaminationshould point out that further proceedings in thereexamination will be based on the claims of thereissue patent and not on the patent surrendered.Form paragraph 22.05 may be used in the Officeaction.

¶ 22.05 Reexamination (Ex Parte or Inter Partes) Based onReissue Claims

In view of the surrender of original Patent No. [1] and thegranting of Reissue Patent No. [2] which issued on [3], allsubsequent proceedings in this reexamination will be based onthe reissue patent claims.

Where the reissue patent has issued prior to the filingof a request for reexamination of the parent patent,see MPEP § 2258.

B. Reissue Pending, Reexamination Request Filed

Where a reissue patent will not be granted prior tothe expiration of the 3-month period for making thedetermination on the reexamination request, adecision will be made as to whether the reissue

Rev. 08.2017, January 20182200-169


application and the reexamination proceeding are tobe merged, or which of the two (if any) is to bestayed, after an order to reexamine has been issued.

The general policy of the Office is to merge the morenarrow reexamination proceeding with the broaderreissue application examination whenever it isdesirable to do so in the interests of expediting theconduct of both proceedings. In making a decisionon whether or not to merge the reissue applicationand the reexamination proceeding, considerationwill be given to the status of the reissue applicationexamination at the time the order for reexaminationof the patent pursuant to 37 CFR 1.525 is mailed.For example, if examination of the reissueapplication has not begun, or if a rejection by theprimary examiner has not been appealed to the Boardpursuant to 37 CFR 41.31, it is likely that the OPLAwill order a merger of the reissue applicationexamination and the reexamination proceeding. If,however, the reissue application is on appeal to theBoard or the courts, that fact would be consideredin making a decision whether to merge the reissueapplication and the reexamination proceeding or stayone of them. See In re Stoddard, 213 USPQ 386(Comm’r Pat. 1982); and In re Scragg, 215 USPQ715 (Comm’r Pat. 1982).

If such a merger of the reissue application and thereexamination proceeding is ordered, the ordermerging them will also require that the patent ownerplace the same claims in the reissue application andin the reexamination proceeding for purposes of themerged proceedings. An amendment may be requiredto be filed to do this within a specified time set inthe order merging the proceedings.

If the reissue application examination has progressedto a point where a merger of the two proceedings isnot desirable at that time, then the reexaminationproceeding will generally be stayed until the reissueapplication examination is complete on the issuesthen pending. After completion of the examinationon the issues then pending in the reissue applicationexamination, the stay of the reexaminationproceeding will be removed and the proceedingswill be merged if the reissue application is pending,or the reexamination proceeding will be conductedseparately if the reissue application has becomeabandoned. The reissue application examination will

be reopened, if necessary, for merger of thereexamination proceeding therewith.

If the reissue application examination and thereexamination proceeding are merged, the issuanceof the reissue patent will also serve as the certificateunder 37 CFR 1.570 and the reissue patent will soindicate.

C. Reexamination Proceedings Underway, ReissueApplication Filed

When a reissue application is filed after an ex partereexamination request has been filed, OPLA shouldbe notified as promptly as possible after the reissueapplication reaches the TC. A determination will bemade as to whether reexamination should be ordered.If reexamination is ordered, no first Office actionwill accompany the decision ordering reexamination.The order and any of the files that are paper filesshould then be hand delivered to OPLA.

Where reexamination has already been ordered priorto the filing of a reissue application, OPLA shouldbe notified as promptly as possible after the reissueapplication reaches the TC, that the proceedings areready for consideration of merger. If any of thereexamination file, the reissue application, and thepatent file are paper files, they should be handdelivered to the OPLA at the time of the notificationto OPLA.

In making a decision on whether or not to merge thereissue application examination and thereexamination proceeding, consideration will begiven as to whether issues are raised in the reissueapplication that would not be proper forconsideration in reexamination. In addition,consideration will also be given to the status of thereexamination proceeding. For example, if thereexamination proceeding is on appeal to the Boardor to the U.S. Court of Appeals for the FederalCircuit, or a Notice of Intent to Issue aReexamination Certificate was issued for thereexamination, that fact would be considered inmaking a decision whether to merge the reissueapplication examination and the reexaminationproceeding or stay one of them.

2200-170Rev. 08.2017, January 2018


III. EXAMINER ASSIGNMENT

With respect to the appropriate examiner assignmentof the merged reexamination/reissue proceeding, seeMPEP § 2236.

IV. CONDUCT OF MERGED REISSUEAPPLICATION AND REEXAMINATIONPROCEEDING

Where merger is ordered, the patent owner isrequired to maintain identical amendments in thereissue application and the reexamination file forpurposes of the merged proceeding. The maintenanceof identical amendments in both files is required aslong as the reissue and reexamination proceedingsremain merged. See 37 CFR 1.565(d). Whereidentical amendments are not present in both filesat the time merger is ordered, the patent owner willbe required to submit an appropriate “housekeeping”amendment placing the same amendments in bothproceedings. This may be accomplished by amendingeither of the two proceedings (the reissue applicationor the reexamination) or both of them, as appropriate.The patent owner must not address any issue ofpatentability in the housekeeping amendment.Amendments in a merged reexamination/reissueproceeding are submitted under 37 CFR 1.173, inaccordance with reissue practice.

Where the merger decision indicates that an Officeaction will follow, the merged proceeding is returnedto the examiner immediately after the decision toissue an Office action. Where the merger decisionindicates that the patent owner is given one monthto provide an amendment to make the claims thesame in each file (identical amendments to be placedin all files), the CRU SPRS or TC QAS will retainjurisdiction over the merged reexaminationproceeding to await submission of the amendmentor the expiration of the time to submit theamendment. After the amendment is received andprocessed by the technical support staff or the timefor submitting the amendment expires, the mergedproceeding will be returned to the examiner to issuean Office action.

Once the proceeding is returned to the examiner forissuance of an Office action, the examiner shouldprepare an Office action at the most advanced point

possible for the first proceeding. Thus, if the firstproceeding is ready for a final rejection and thesecond proceeding does not provide any newinformation which would call for a new ground ofrejection, the examiner should issue a final rejectionfor the merged proceeding.

In the event that a “housekeeping” amendment tomake the claims the same in each file is required bythe merger decision (identical amendments to beplaced in all files) but is not timely submitted, anyclaim that does not contain identical text in all of themerged proceedings should be rejected under 35U.S.C. 112, second paragraph, as being indefiniteas to the content of the claim, and thus failing toparticularly point out the invention.

If a reissue application examination and areexamination proceeding are merged, the mergedexamination will be conducted on the basis of therules relating to the broader reissue applicationexamination. Amendments should be submitted inaccordance with the reissue practice under 37 CFR1.121(i) and 37 CFR 1.173; see MPEP § 1453. Theexaminer, in examining the merged proceeding, willapply the reissue statute, rules, procedures, and caselaw to the merged proceeding. This is appropriatein view of the fact that the statutory provisions forreissue applications and reissue applicationexamination include provisions equivalent to 35U.S.C. 305 relating to the conduct of reexaminationproceedings.

In any merged reissue application and reexaminationproceeding, each Office action issued by theexaminer will take the form of a single action whichjointly applies to both the reissue application andthe reexamination proceeding. Each action willcontain identifying data for both the reissueapplication and the reexamination proceeding, andeach action will be physically entered into both files,which will be maintained as separate files.

Any response by the applicant/patent owner in sucha merged proceeding must consist of a singleresponse, filed in duplicate for entry in both files (orprovide multiple copies if there are multiplereexamination proceedings being merged with areissue application), and service of a copy must bemade on any third party reexamination requester. A

Rev. 08.2017, January 20182200-171


copy of all Office actions will be mailed to the thirdparty reexamination requester but not to any otherthird party.

If the applicant/patent owner in such a mergedproceeding fails to file a timely and appropriateresponse to any Office action, then the merger willbe automatically dissolved (severed). The reissueapplication will be held abandoned. A NIRC will beissued (see MPEP § 2287), and the Director willproceed to issue a reexamination certificate under37 CFR 1.570 in accordance with the last action ofthe Office, unless further action is clearly needed inview of the difference in rules relating toreexamination and reissue proceedings.

If the applicant/patent owner in a merged proceedingfiles an express abandonment of the reissueapplication pursuant to 37 CFR 1.138, the nextOffice action of the examiner will accept the expressabandonment, dissolve the merged proceeding, andcontinue the reexamination proceeding. If theapplicant/patent owner files a continued prosecutionreissue application (a CPA) of a reissue designapplication under 37 CFR 1.53(d), whereby theexisting reissue design application is considered tobe expressly abandoned, this will most likely resultin the dissolution of the merged proceeding, a stayof the CPA reissue application, and separate,continued prosecution of the reexaminationproceeding.

Where the merged proceeding is dissolved based onabandonment of the reissue application and thereexamination proceeding continues, any groundsof rejection which are not applicable underreexamination should be withdrawn (e.g., based onpublic use or on sale) and any new grounds ofrejection which are applicable under reexamination(e.g., improper broadened claims) should be madeby the examiner. The existence of any questionsremaining which cannot be considered underreexamination following dissolution of the mergedproceeding would be noted by the examiner as notbeing proper under reexamination pursuant to 37CFR 1.552(c).

Where the merged proceeding is dissolved basedon abandonment of the reissue application and thereexamination proceeding continues, there is no

guarantee that any continuation reissue applicationwill be merged with the reexamination proceeding(the continuation reissue application might be stayedpending conclusion of the reexamination). Thispolicy is necessary to prevent the patent owner fromfiling reissue continuation applications to delay adecision by the Board on rejected claims.

If applicant/patent owner files a request for continuedexamination (RCE) of the reissue application under37 CFR 1.114 (which may be filed on or after May29, 2000 for an application filed on or after June 8,1995), then the merger will be automaticallydissolved (severed), and the reissue application willthen be suspended. Patent owners are put on noticethat, in such event, a request for continuedexamination (RCE) is not available in thereexamination proceeding, and any response to anOffice action (e.g., response to a final rejection) inthe reexamination proceeding must be made takinginto account the non-availability of RCE practice.Any failure to timely respond would result in thetermination of the prosecution pursuant to 37 CFR1.550(d).

V. PETITION TO MERGE REISSUEAPPLICATION AND REEXAMINATIONPROCEEDING OR TO STAY EITHER OF THETWO BECAUSE OF THE EXISTENCE OF THEOTHER

No petition to merge the reissue application and thereexamination proceeding, or stay one of them,should be filed before an order grantingreexamination is issued because the Office willgenerally, sua sponte, make a decision to merge thereissue application and the reexamination proceedingor stay one of them. If any petition to merge thereissue application and the reexaminationproceeding, or to stay one of them because of theother, is filed prior to the determination (37 CFR1.515) and order to reexamine (37 CFR 1.525), itwill not be considered, but will be returned to theparty submitting the same by the CRU or TCDirector, regardless of whether the petition is filedin the reexamination proceeding, the reissueapplication, or both. This is necessary to preventpremature papers relating to the reexaminationproceeding from being filed. The decision expungingsuch a premature petition will be made of record in

2200-172Rev. 08.2017, January 2018


both the reexamination file and the reissueapplication file. See MPEP § 2267.

The patent owner may file a petition under 37 CFR1.182 to merge the reissue application and thereexamination proceeding, or stay one of thembecause of the other, at the time the patent owner’sstatement under 37 CFR 1.530 is filed or subsequentthereto in the event the Office has not acted prior tothat date to merge or stay. The third party requesterdoes not have a right to file a petition under 37 CFR1.182 to merge a reexamination proceeding and areissue application examination, since areexamination third party requester does not haveany standing to request relief with respect to a reissueapplication, to which requester cannot be a party.No such standing is provided for anywhere in thestatute. Instead of filing a petition under 37 CFR1.182 to merge a reexamination proceeding with areissue application, a third party requester may filea notification of concurrent proceedings pursuant toMPEP § 2282. After being notified of the existenceof a reissue application and after consideration ofthe merger and suspension options becomes ripe,the Office of Patent Legal Administration (OPLA)would sua sponte consider the action to be taken.A petition to merge the reissue application and thereexamination proceeding, which is filed by a partyother than the patent owner will not be considered,but will be returned to that party (or expunged ifalready entered) by the CRU or TC Director as beingimproper under 37 CFR 1.550(g). The requester doeshave the right to file a petition under 37 CFR 1.182to stay the reexamination proceeding that itrequested.

All petitions to merge or stay which are filed by thepatent owner or the third party requester subsequentto the date of the order for reexamination will bereferred to OPLA for decision.

VI. FEES IN MERGED PROCEEDINGS

Where the proceedings have been merged and apaper is filed which requires payment of a fee (e.g.,excess claim fee, extension of time fee, petition fee,appeal fee, brief fee, oral hearing fee), only a singlefee need be paid. For example, only one fee need bepaid for an appeal brief even though the brief relatesto merged multiple proceedings and copies must be

filed for each file in the merged proceeding. As toexcess claim fees, reissue practice will control.

2286 Ex Parte Reexamination and LitigationProceedings [R-07.2015]


*****

(b) If a patent in the process of ex parte reexamination isor becomes involved in litigation, the Director shall determinewhether or not to suspend the reexamination. See § 1.987 for inter partes reexamination proceedings.

*****

35 U.S.C. 302 permits a request for ex partereexamination to be filed “at any time.” Requestsfor ex parte reexamination are frequently filedwhere the patent for which reexamination isrequested is involved in concurrent litigation. Theguidelines set forth below will generally governOffice handling of ex parte reexamination requestswhere there is concurrent litigation in the federalcourts.

I. COURT-ORDERED/ SANCTIONEDREEXAMINATION PROCEEDING, LITIGATIONSTAYED FOR REEXAMINATION, OR EXTENDEDPENDENCY OF REEXAMINATION PROCEEDINGCONCURRENT WITH LITIGATION

Where a request for ex parte reexamination indicates(A) that it is filed as a result of an order by a courtor an agreement by parties to litigation whichagreement is sanctioned by a court, or (B) thatlitigation is stayed for the filing of a reexaminationrequest, all aspects of the proceeding will beexpedited to the extent possible. If reexamination isordered, the examination following the statement bythe patent owner under 37 CFR 1.530 and the replyby the requester under 37 CFR 1.535 will beexpedited to the extent possible.

II. FEDERAL COURT DECISION KNOWN TOEXAMINER AT THE TIME THEDETERMINATION ON THE REQUEST FORREEXAMINATION IS MADE

If a federal court decision on the merits of a patentis known to the examiner at the time thedetermination on the request for ex partereexamination is made, the following guidelines will

Rev. 08.2017, January 20182200-173


be followed by the examiner, whether or not theperson who filed the request was a party to thelitigation. When the initial question as to whetherthe prior art raises a substantial new question ofpatentability as to a patent claim is underconsideration, the existence of a final court decisionof claim validity in view of the same or differentprior art does not necessarily mean that no newquestion is present. This is true because of thedifferent standards of proof and claim interpretationemployed by the district courts and the Office. Seefor example In re Zletz, 893 F.2d 319, 322,13 USPQ2d 1320, 1322 (Fed. Cir. 1989) (mannerof claim interpretation that is used by courts inlitigation is not the manner of claim interpretationthat is applicable during prosecution of a pendingapplication before the PTO) and In re Etter, 756F.2d 852, 225 USPQ 1 (Fed. Cir. 1985) (the 35U.S.C. 282 presumption of patent validity has noapplication in reexamination proceedings). Thus,while the Office may accord deference to factualfindings made by the court, the determination ofwhether a substantial new question of patentabilityexists will be made independently of the court’sdecision on validity as it is not controlling on theOffice. See In re Swanson et al., 540 F.3d 1368,1378 (Fed. Cir. 2008), where the Federal Circuitapproved of the Office’s interpretation in MPEP §2242. A non-final holding of claim invalidity orunenforceability will not be controlling on thequestion of whether a substantial new question ofpatentability is present. A final holding of claiminvalidity or unenforceability (after all appeals),however, is controlling on the Office. In such cases,a substantial new question of patentability would not be present as to the claims held invalid orunenforceable. See Ethicon v. Quigg, 849 F.2d 1422,7 USPQ2d 1152 (Fed. Cir. 1988).

Note the following Federal Circuit decisionsinvolving reexamination proceedings where the courtaffirmed the Office’s rejections even though paralleldistrict court proceeding upheld the claims as validand infringed. In re Trans Texas Holdings Corp.,498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007), In re Translogic Technology, Inc., 504 F.3d 1249,84 USPQ2d 1929 (Fed. Cir. 2007), In re Swansonet al., 540 F.3d 1368, 88 USPQ 2d 1196 (Fed. Cir.2008) and In re Baxter International Inc., 678 F.3d1357, 102 USPQ2d 1925 (Fed. Cir. 2012).

In Trans Texas, the patent being reexamined wassubject to an infringement suit, in which the districtcourt had issued its claim construction ruling (in adistrict court opinion) as to the definition of a term.The parties ultimately reached a settlement beforetrial, and the district court issued an “Order ofDismissal with Prejudice.” The patent owner reliedon that district court claim construction ruling in areexamination proceeding, and argued that the Officewas bound by that district court claim constructionruling, under the doctrine of issue preclusion. TheFederal Circuit stated that issue preclusion could notbe applied against the Office based on a district courtholding in an infringement proceeding, since theOffice was not a party to that earlier infringementproceeding.

In Translogic, a district court infringement suitproceeded in parallel with a reexaminationproceeding. The district court upheld the validity ofthe patent in the infringement suit, while thereexamination examiner found the claim combinationto be obvious. The examiner’s rejection was affirmedby the Board. The defendant (the alleged infringer)of the infringement suit appealed the district courtdecision to the Federal Circuit, while the patentowner appealed the Board’s decision to the FederalCircuit. The Federal Circuit consolidated the appeals,and then addressed only the patent owner’sreexamination appeal from the Board. The FederalCircuit affirmed the examiner’s conclusion ofobviousness by relying upon and providing anextensive discussion of KSR International Co. v.Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).

Note also In re Swanson et al., 540 F.3d 1368, 88USPQ 2d 1196 (Fed. Cir. 2008) where the FederalCircuit held that the prior federal court judgmentupholding validity over a specific prior art reference(in Abbott Labs. v. Syntron Bioreseach, Inc., 334F.3d 1343 (Fed. Cir. 2003)), did not preclude theOffice’s finding that a substantial new question ofpatentability existed as to the same claims based onthe same prior art reference applied in the samemanner in the subsequent ex parte reexaminationproceeding, and did not preclude the Office’s findingthat the patent claims were unpatentable.

Finally, see In re Baxter International Inc., 678 F.3d1357, 102 USPQ2d 1925 (Fed. Cir. 2012)(patent

2200-174Rev. 08.2017, January 2018


reexamination should take notice of a court decisionbut the Office need not come to the same conclusionas the court).

Any determination on a request for reexaminationwhich the examiner makes after a federal courtdecision must be reviewed by the CentralReexamination Unit (CRU) Supervisory PatentReexamination Specialist (SPRS) to ensure that itconforms to the current Office litigation policy andguidelines. See MPEP § 2240.

For a discussion of the policy in specific situationswhere a federal court decision has been issued, seeMPEP § 2242.

III. REEXAMINATION WITH CONCURRENTLITIGATION BUT ORDERED PRIOR TOFEDERAL COURT DECISION

In view of the statutory mandate to make thedetermination on the request within 3 months, thedetermination on the request based on the recordbefore the examiner will be made without awaitinga decision by the federal court. It is not realistic toattempt to determine what issues will be treated bythe federal court prior to the court decision.Accordingly, the determination on the request willbe made without considering the issues allegedlybefore the court. If an ex parte reexamination isordered, the reexamination will continue until theOffice becomes aware that a court decision hasissued. At such time, the request will be reviewedin accordance with the guidelines set forth below.The patent owner is required by 37 CFR 1.565(a) tocall the attention of the Office to any prior orconcurrent proceeding in which the patent isinvolved or was involved. Thus, the patent ownerhas an obligation to promptly notify the Office thata decision has been issued in the federal court.

IV. FEDERAL COURT DECISION ISSUES AFTER EX PARTE REEXAMINATION ORDERED

Pursuant to 37 CFR 1.565(a), the patent owner in an ex parte reexamination proceeding must promptlynotify the Office of any federal court decisioninvolving the patent. Where the reexaminationproceeding is currently pending and the courtdecision issues, or the Office becomes aware of a

court decision relating to a pending reexaminationproceeding, the order to reexamine is reviewed tosee if a substantial new question of patentability isstill present. If no substantial new question ofpatentability is still present, the reexamination isterminated by the CRU or TC Director.

A non-final federal court decision concerning apatent under reexamination shall have no bindingeffect on a reexamination proceeding.

The issuance of a final federal court decisionupholding validity during an ex parte reexaminationalso will have no binding effect on the examinationof the reexamination. This is because the court statesin Ethicon v. Quigg, 849 F.2d 1422, 1428, 7USPQ2d 1152, 1157 (Fed. Cir. 1988) that the Officeis not bound by a court’s holding of patent validityand should continue the reexamination. The courtnotes that district courts and the Office use differentstandards of proof in determining invalidity, andthus, on the same evidence, could quite correctlycome to different conclusions. Specifically, invalidityin a district court must be shown by “clear andconvincing” evidence, whereas in the Office, it issufficient to show nonpatentability by a“preponderance of evidence.” Since the “clear andconvincing” standard is harder to satisfy than the“preponderance” standard, deference will ordinarilybe accorded to the factual findings of the court wherethe evidence before the Office and the court is thesame. If sufficient reasons are present, claims heldvalid by the court may be rejected in reexamination.

On the other hand, a final federal court holding ofinvalidity or unenforceability (after all appeals), isbinding on the Office. Upon the issuance of a finalholding of invalidity or unenforceability, the claimsbeing examined which are held invalid orunenforceable will be withdrawn from considerationin the reexamination. The reexamination willcontinue as to any remaining claims being examined.Thus, the reexamination will continue if any original,new, or amended claim being examined that was notfound invalid or unenforceable by the court. If allof the claims being examined in the reexaminationproceeding are finally held invalid or unenforceable,the reexamination will be vacated by the CRU orTC Director if the decision was rendered prior to theorder, or terminated by the CRU or TC Director as

Rev. 08.2017, January 20182200-175


no longer containing a substantial new question ofpatentability if the decision was rendered subsequentto the order, and the reexamination will beconcluded. If not all claims being examined wereheld invalid (or unenforceable), a substantial newquestion of patentability may still exist as to theremaining claims. In such a situation, the remainingclaims would be examined; and, as to the claimsheld invalid/unenforceable, form paragraph 22.20should be used at the beginning of the Office action.

¶ 22.20 Claims Held Invalid By Court, No Longer BeingReexamined

Claims [1] of the [2] patent are not being reexamined in viewof the final decision of [3]. Claim(s) [1] was/were heldinvalid/unenforceable by the [4].

Examiner Note:

1. In bracket 1, insert the claim(s) held invalid.

2. In bracket 2, insert the patentee (e.g., Rosenthal, J. Doe etal).

3. In bracket 3, insert the decision (e.g., ABC Corp. v. Smith,888 F. 3d 88, 999 USPQ2d 99 (Fed. Cir. 1999) or XYZ Corp.v. Jones, 888 F. Supp. 2d 88, 999 USPQ2d 1024 (N.D. Cal.1999)).

4. In bracket 4, insert the name of the court (e.g., the Courtof Appeals for the Federal Circuit, or the Federal District Court).

V. LITIGATION REVIEW AND APPROVAL

In order to ensure that the Office is aware of prioror concurrent litigation, the examiner is responsiblefor conducting a reasonable investigation forevidence as to whether the patent for which ex partereexamination is requested has been or is involvedin litigation. The investigation will include a reviewof the reexamination file, the patent file, and theresults of the litigation computer search.

If the examiner discovers, at any time during thereexamination proceeding, that there is litigation orthat there has been a federal court decision on thepatent, the fact will be brought to the attention ofthe CRU SPRS or Technology Center (TC) QualityAssurance Specialist (QAS) prior to any furtheraction by the examiner. The CRU SPRS or TC QASmust review any action taken by the examiner insuch circumstances to ensure current Office litigationpolicy is being followed.

VI. FEDERAL COURT DECISION CONTROLLINGIN REEXAMINATION PROCEEDING

Once a federal court has ruled upon the merits of apatent and an ex parte reexamination is stillappropriate under the guidelines set forth above, thefederal court decision will be considered controllingand will be followed as to claims finally held to beinvalid by the court.

2286.01 Reexamination and Inter PartesReview Proceedings, Post-Grant Review, andCovered Business Method Patent Review[R-07.2015]

The Leahy-Smith America Invents Act amended 35U.S.C. 315(d) and added 35 U.S.C. 325(d) to providethat, during the pendency of an inter partes review,post grant review or covered business method review("PTAB Review Proceeding"), if another proceeding(e.g., an ex parte reexamination proceeding) ormatter involving the patent is before the Office, theDirector may determine the manner in which thePTAB Review Proceeding and the other proceedingor matter may proceed, including providing for stay,transfer, consolidation, or termination of such matteror proceeding. If an examiner becomes aware of aPTAB Review Proceeding for the same patent thatis being reexamined, the ex parte reexaminationproceeding must be referred to the examiner’s SPRS.The SPRS will coordinate with the PTAB beforetaking any action on the reexamination proceeding.

The existence of a PTAB Review Proceeding doesnot change the fact that any reexamination requestmust, by statute, be decided (a grant or a denial)within three months of its filing date.

2287 Conclusion of Ex Parte ReexaminationProceeding [R-08.2017]

Upon conclusion of the ex parte reexaminationproceeding, the examiner must prepare a “Notice ofIntent to Issue Ex Parte Reexamination Certificate”(NIRC) by completing form PTOL-469. Ifappropriate, an examiner’s amendment will also beprepared. Where claims are found patentable, reasonsmust be given for each claim found patentable.

2200-176Rev. 08.2017, January 2018


See the discussion as to preparation of an examiner’samendment and reasons for allowance at the end ofthis section. In addition, the examiner must preparethe reexamination file so that the Office of DataManagement can prepare and issue a certificate inaccordance with 35 U.S.C. 307 and 37 CFR 1.570setting forth the results of the reexaminationproceeding and the content of the patent followingthe proceeding. See MPEP § 2288.

The examiner will so inform the examiner's CentralReexamination Unit (CRU) Supervisory PatentReexamination Specialist (SPRS) or TechnologyCenter (TC) Quality Assurance Specialist (QAS) ofthe conclusion of the reexamination proceeding. TheCRU SPRS/TC QAS will convene a panel reviewconference (see MPEP § 2271.01), and theconference members will review the patentabilityof the claim(s). If the conference confirms theexaminer’s decision, a NIRC shall be issued andsigned by the examiner, with the two, or more, otherconferees initialing the NIRC (as “conferee”) toindicate their participation in the conference. Allconferees will initial, even though one of them mayhave dissented from the conference decision on thepatentability of the claim(s). If the conference doesnot confirm the patentability of the claim(s), theexaminer will reevaluate and issue an appropriateOffice action rejecting the claim(s), not confirmedas patentable.

A panel review conference is not to be held as toany claim that was in the case (proceeding) at thetime the case was reviewed by the Board or a federalcourt. The following example will serve to illustratethis point. In a reexamination proceeding, claims5-10 are allowed by the examiner, and claims 1-4are rejected. The rejection of claims 1-4 is thenappealed to the Board. The Board reverses therejection of claims 1-4 and imposes a new groundof rejection of claims 1-4 under 37 CFR 41.50(b).The patent owner then elects further prosecutionbefore the examiner pursuant to 37 CFR 41.50(b)(1)and submits an amended set of claims 1-4. Theexaminer finds amended claims 1-4 to be allowableand wishes to “allow” the entire case by issuing aNIRC. A panel review conference must be held atthis stage of the proceeding. The conferees willreview the allowance of amended claims 1-4. Theconferees will not, however, review the allowance

of claims 5-10, because claims 5-10 were in the case,and before the Board at the time the Board decidedthe appeal.

A panel review conference is not to be held wherethe proceeding is to be concluded by the cancellationof all claims. No panel review conference is neededin this instance, as the issuance of the NIRC isessentially ministerial.

Thus, a panel review conference must be held ineach instance where a NIRC is about to be issued,unless the NIRC is being issued: (A) following andconsistent with a decision by the Board (or court)on the merits of the proceeding; or (B) as aconsequence of the patent owner’s failure to respondor take other action where such a response or actionis necessary to maintain pendency of the proceedingand, as a result of which failure to respond, all ofthe claims will be canceled.

A NIRC informs the patent owner and any third partyrequester that the reexamination prosecution hasbeen terminated. The rules do not provide for anamendment to be filed in a reexamination proceedingafter prosecution has been terminated. The provisionsof 37 CFR 1.312 do not apply in reexamination.Any amendment, information disclosure statement,or other paper related to the merits of thereexamination proceeding filed after prosecution hasbeen terminated must be accompanied by a petitionunder 37 CFR 1.182 to have the amendment,information disclosure statement, or other paperconsidered.

If all of the claims are disclaimed in a patent underreexamination, a certificate under 37 CFR 1.570 willbe issued indicating that fact.

I. PREPARATION OF THE CASE FORPUBLICATION

In preparing the reexamination file for publicationof the certificate, the examiner must review thereexamination and patent files (IFW and paper files)to be sure that all the appropriate parts arecompleted. The review should include completionof the following items:

Rev. 08.2017, January 20182200-177


(A) The IFW file wrapper Search Notes form— The “SEARCHED” and the “SEARCH NOTES”boxes are to be filled in with the classes andsubclasses that were actually searched and otherareas consulted. See MPEP § 719.05.

(B) The IFW file jacket form — Check to besure that the necessary data is included thereon, suchas the certificate number, e.g., “C1” or “C2”. The“Litigation Review” and “Copending OfficeProceedings” boxes should be completed to ensurethat the Office is aware of prior or concurrentlitigation and Office proceedings.

(C) The Bibliographic Data Sheet — Check tobe sure that the data included thereon is correct andthe blank spaces have been initialed.

(D) The Issue Classification IFW form — Theform must be completed to set forth the status ofeach claim and the final claim numbers. Theappropriate information must be included in the“Issue Classification” boxes. The examiner shouldenter the classification in the Issue Classificationboxes that corresponds to the current classificationof the patent and any additional classification basedon newly claimed subject matter. See MPEP §903.07. The current classification of the patent maybe found by viewing the patent in the EAST orWEST automated search tools. See MPEP §902.03(e). Completion of the Issue Classificationboxes is required, even if all of the claims arecanceled.

An appropriate drawing figure is to be indicated forprinting on the certificate cover sheet and in the Official Gazette. In addition, a representative claimwhich has been reexamined is to be indicated forpublication in the Official Gazette. The claim orclaims for the Official Gazette should be selectedin accordance with the following instructions:

(A) The broadest claim should be selected;

(B) Examiners should ordinarily designate butone claim on each invention, although when aplurality of inventions are claimed in one application,additional claims up to a maximum of five may bedesignated for publication. In the case ofreexamination, the examiner must select only oneclaim;

(C) A dependent claim should not be selectedunless the independent claim from which it dependsis also printed. In the case where a multiple

dependent claim is selected, the entire chain ofclaims for one embodiment should be listed. In thecase of reexamination, a dependent patent claim maybe selected where the independent original patentclaim has been canceled; in such a case, thedependent claim would be printed while theindependent claim would not be printed; and

(D) In reissue applications, the broadest claimwith changes or the broadest additional reissue claimshould be selected for printing.

When recording this information in the box provided,the following items should be kept in mind:

(A) Enter the claim number clearly;

(B) If multiple claims are selected, the claimnumbers should be separated by commas; and

(C) The claim designated must be referred to byusing the renumbered patent claim number ratherthan the original claim number if different.

If the patent owner desires the names of the attorneysor agents, or law firm, to be printed on the certificate,a separate paper limited to this issue which lists thenames and positively states that they should beprinted on the certificate must be filed. A merepower of attorney or change of address is not arequest that the name appear on the certificate.

The examiner must also complete a checklist, formPTO-1516, for the reexamination file which will beforwarded to the Office of Data Managementidentifying information used in printing thereexamination certificate. A copy of this form maybe obtained from the CRU SPRS or TC QAS or theirsupport staff.

The examiner should inspect the title report, or patentabstract of title, in the file. If the title report, or patentabstract of title, indicates a title in the inventors, butthe patent copy shows an assignment to an assignee,a telephone call can be made to the patent owner,and the patent owner can be asked to submit astatement under 37 CFR 3.73 indicating that title isin the assignee (i.e., it has not reverted back to theinventors). If communication could not be made viatelephone, the examiner could also use email (ifauthorized by the patent owner) to contact the patentowner. See MPEP § 320.

2200-178Rev. 08.2017, January 2018


After the examiner has prepared the NIRC andattachments for mailing, completed the review andpreparation of the case as discussed above, andcompleted the Examiner Checklist form PTOL-1516,the reexamination and patent files will be given tothe CRU support staff. The CRU support staff willcomplete the Reexamination Clerk Checklist formPTO-1517. The CRU support staff will revise andupdate the files. The clerk should check to see if anychanges in especially:

(A) the title;

(B) the inventor;

(C) the assignee;

(D) the continuing data;

(E) the foreign priority;

(F) the address of the owner’s attorney; and

(G) the requester’s address

have been properly entered in the reexamination andpatent files (in the file history of an IFW file and onthe face of a paper file) and properly entered in thePALM database. After the clerk has finished theprocessing, the clerk will forward the reexaminationproceeding to the CRU SPRS or TC QAS for review.After approval by the CRU SPRS or TC QAS, theCRU support staff will process the NIRC withattachments for mailing.

II. REEXAMINATION PROCEEDINGS IN WHICHALL THE CLAIMS ARE CANCELED

There will be instances where all claims in thereexamination proceeding are to be canceled, and aNIRC will be issued indicating that fact. This wouldoccur where the patent owner fails to timely respondto an Office action, and all live claims in thereexamination proceeding are under rejection. Itwould also occur where all live claims in thereexamination proceeding are to be canceled as aresult of a Board decision affirming the examiner,and the time for appeal to the court and forrequesting reconsideration or modification hasexpired.

Prior to canceling the claims and issuing the NIRC,the examiner should telephone the patent owner toinquire if a timely response, timely appeal, etc., was

filed with the Office so as to make certain that atimely response has not been misdirected within theOffice. If communication could not be made viatelephone, the examiner could also use email (ifauthorized by the patent owner) to contact the patentowner. Where the patent owner indicates that nosuch filing was made, or where the patent ownercannot be reached, the examiner will proceed to issuea NIRC terminating prosecution.

A panel review conference is not to be held, becausethe proceeding is to be concluded by the cancellationof all claims. Rather, the examiner will issue a NIRCaction, and as an attachment to the NIRC, theexaminer will draft an examiner’s amendmentcanceling all live claims in the reexaminationproceeding. In the examiner’s amendment, theexaminer should point out why the claims have beencanceled. For example, the examiner might makeone of the two following statements, as appropriate:

“Claims 1-5 and 6-8 (all live claims in theproceeding) were subject to rejection in the lastOffice action mailed 9/9/99. Patent owner failedto timely respond to that Office action.Accordingly claims 1-5 and 6-8 have beencanceled. See 37 CFR 1.550(d) and MPEP §2266.”“The rejection of claims 1-5 and 6-8 (all liveclaims in the proceeding) has been affirmed inthe Board decision of 9/9/99, and no timelyappeal to the court has been filed. Accordinglyclaims 1-5 and 6-8 have been canceled.”

If the patent owner was contacted and indicated thatthere was no timely filing (as discussed above), theattachment to the NIRC will make the telephoneinterview of record.

The examiner will designate a cancelled originalpatent claim, to be printed in the Official Gazette,on the Issue Classification IFW form in theappropriate place for the claim chosen.

III. HANDLING OF MULTIPLE DEPENDENTCLAIMS

The following discussion provides guidance on howto treat multiple dependent claims when preparing

Rev. 08.2017, January 20182200-179


a reexamination proceeding for publication of thereexamination certificate.

Assume Patent X issues with the following claims:

Patent claims:

1. A method of sintering a particulate ceramicpreform, comprising heating it above 500 degreesF, cooling it to 100 degrees F, and repeating theheating and cooling steps six times.

2. The method of claim 1, where a pressure of300 - 400 psi is applied during the heating steps.

3. The method of claim 1 or claim 2, where thepressure applied during the heating steps is 350 -375 psi.

4. The method of claim 3, where the pressureapplied during the heating steps is 360 - 365 psi.

5. The method of claim 1, where the preformcontains lithium and magnesium oxides.

6. The method of claim 5, where the preformcontains sodium fluoride.

7. The method of claim 1 or claim 5, where thesintered preform is machined into a lens.

A reexamination request is then filed for Patent X,and at the point when the claims are ready forissuance of the certificate, the following claims arepresent in the reexamination file.

In reexamination:

1. (Text Unchanged) A method of sintering aparticulate ceramic preform, comprising heating itabove 500 degrees F, cooling it to 100 degrees F,and repeating the heating and cooling steps six times.

2. (Amended) The method of claim 1 or claim8, where a pressure of 300 - 400 psi is applied duringthe heating steps.

3. (Amended) The method of [claim 1 or] claim2, where the pressure applied during the heatingsteps is 350 - 375 psi.

4. (Amended) The method of claim 3 or claim8, where the pressure applied during the heatingsteps is 355[360] - 365 psi.

5. (Text Unchanged) The method of claim 1,where the preform contains lithium and magnesiumoxides.

6. (Amended) The method of claim 8[5], wherethe preform contains sodium fluoride.

7. (Text Unchanged) The method of claim 1 orclaim 5, where the sintered preform is machined intoa lens.

8. (New) A method of sintering a particulatefluoride ceramic preform comprising heating it above500 degrees F, cooling it to 100 degrees F, andrepeating the heating and cooling steps six times.

The status of the claims would be set forth asfollows:

Part 1(h) of the Notice of Intent to Issue Ex ParteReexamination Certificate Form PTOL-469 (NIRC)would be completed as follows.

Patent claims confirmed: 1, 2/1, 5, 7

Patent claims amended: 3, 4/3

Patent claims canceled: 3/1, 6/5

New claims patentable: 2/8, 4/8, 6/8, 8

The parts of the Examiner’s checklist (FormPTO-1516) directed to the status of the claims wouldbe completed as follows.

7. Patent claims confirmed: 1, 5, 7

11. Patent claims canceled: None

12. Patent claims amended: 2, 3, 4 and 6

13. Patent claims dependent on amended: None

14. New claims patentable: 8

Looking at claim 2:

For the purpose of the NIRC, the addition of a claimof the multiple dependency is viewed as adding anew claim for which protection is now to beprovided. Thus, prior to reexamination, only thesubject matter of claim 2/1 was protected. As a result

2200-180Rev. 08.2017, January 2018


of reexamination, claim 2/8 has been added, and itssubject matter is now protected. Thus, claim 2/8 isdesignated as a new claim. Claim 2/1 has notchanged as to its content and its scope of protection,and is designated as a confirmed claim.

For the purpose of the Examiner’s checklist, theaddition or deletion of a claim of the multipledependency is viewed simply as amending the claim,because of the way claims are printed on thecertificate. Thus, claim 2 is designated as anamended claim and is simply printed on thecertificate in its amended form as:

2. The method of claim 1 or claim 8, where thesintered preform is machined into a lens.

Looking at claim 3:

For the purpose of the NIRC, the deletion of a claimof the multiple dependency is viewed as cancelingthe claim deleted, and protection is no longerprovided for the claim as dependent from the deletedclaim. Thus, prior to reexamination, the subjectmatter of claims 3/1 and 3/2 was protected. As aresult of reexamination, claim 3/1 has been deleted,and its subject matter is no longer protected. Thus,claim 3/1 is designated as a canceled claim. Claim3/2 has not changed as to its content and its scopeof protection, and is designated as a confirmed claim.

For the purpose of the Examiner’s checklist, theaddition or deletion of a claim of the multipledependency is viewed simply as amending the claim,because of the way claims are printed on thecertificate. Thus, claim 3 is designated as anamended claim and is simply printed on thecertificate in its amended form as:

3. The method of [claim 1 or] claim 2, where thepressure applied during the heating steps is 350 -375 psi.

Looking at claim 4:

For the purpose of the NIRC, the addition of a claimof the multiple dependency is viewed as adding anew claim for which protection is now to beprovided. Thus, prior to reexamination, only thesubject matter of claim 4/3 was protected. As a result

of reexamination, claim 4/8 has been added, and itssubject matter is now protected. Thus, claim 4/8 isdesignated as a new claim. Claim 4/3 has changedas to its content and its scope of protection due tothe expanding of the pressure range from 360 - 365psi to 355 - 365 psi, and claim 4/3 is designated asan amended claim.

For the purpose of the Examiner’s checklist,the addition or deletion of a claim of the multipledependency is viewed simply as amending theclaim, because of the way claims are printed on thecertificate. Thus, claim 4 is designated as anamended claim and simply printed on the certificatein its amended form as:

4. (Amended) The method of claim 3 or claim 8,where the pressure applied during the heating stepsis 355 [360] - 365 psi.

Looking at claim 6:

For the purpose of the NIRC, prior to reexamination,the subject matter of claim 6/5 was protected andclaim 6/8 did not exist. As a result of reexamination,claim 6/5 has been deleted and claim 6/8 has beenadded. Thus, claim 6/5 is designated as a canceledclaim, and claim 6/8 is designated as a new claim.

For the Examiner’s checklist, claim 6 is designatedas an amended claim and is simply printed on thecertificate in its amended form as:

6. (Amended) The method of claim 8 [5], where thepreform contains sodium fluoride.

Looking at claim 7:

It is unchanged as to its text. Claim 7 remainsdependent on claim 1 or claim 5, as it did prior toreexamination. Thus, both claims 7/1 and 7/5 areconfirmed. Claims 7/1 and 7/5 are listed in the“Confirmed” part of the NIRC. They are not listedseparately, but rather simply as “7.” This is becausethe entirety of claim 7 has been confirmed.

As to the Examiner’s checklist, claim 7, beingunchanged as to its text and not being dependent onan amended claim, is simply listed in the

Rev. 08.2017, January 20182200-181


“Confirmed” part of the checklist. Claim 7 will notbe printed on the certificate, but will simply be listedas one of the confirmed claims.

IV. REEXAMINATION REMINDERS

The following items deserve special attention. Theexaminer should ensure they have been correctlycompleted or followed before forwarding forprocessing of the NIRC.

(A) All patent claims for which a substantialnew question of patentability has been found musthave been examined. See MPEP § 2243.

(B) No renumbering of patent claims ispermitted. New claims may require renumbering.See MPEP § 2250.

(C) All amendments to the description andclaims must conform to requirements of 37 CFR1.530(d)-(j). This includes any changes made byExaminer’s Amendment. If a portion of the text isamended more than once, each amendment shouldindicate all of the changes (insertions and deletions)in relation to the current text in the patent underreexamination. See MPEP § 2250.

(D) The prior art must be listed on a form PTO892, PTO/SB/08A or 08B, or PTO/SB/42 (or on aform having a format equivalent to one of theseforms). These forms must be properly completed.See MPEP § 2257.

(E) The examiner and reexamination clerkchecklists PTO-1516 and PTO-1517 must be entirely and properly completed. A careful readingof the instructions contained in these checklists isessential. The clerical checklist is designed as acheck and review of the examiner’s responses onthe examiner checklist. Accordingly, the CRUsupport staff should personally review the file beforecompleting an item. The CRU support staff shouldcheck to make certain that the responses to all relateditems on both checklists are in agreement.

(F) Multiple pending reexamination proceedingsare often merged. See MPEP § 2283.

(G) Where the reexamination proceeding iscopending with an application for reissue of thepatent being reexamined, the files must have beenforwarded to the Office of Patent LegalAdministration (OPLA) for a consideration of

potential merger, with a decision (by a Senior LegalAdvisor) on the question being present in thereexamination file. See MPEP § 2285.

(H) Reasons for patentability and/orconfirmation are required for each claim foundpatentable. See below.

(I) There is no issue fee in reexamination. SeeMPEP § 2233.

(J) The patent claims may not be amended nornew claims added after expiration of the patent. SeeMPEP § 2250.

(K) Original drawings cannot be physicallychanged. “Amended” or “New” figures must beappropriately labeled as such and presented on newsheets in compliance with 37 CFR 1.84. See 37 CFR1.530(d)(3) and MPEP § 2250.01.

(L) An amended or new claim may not enlargethe scope of the patent claims. See MPEP § 2250.

(M) If the patent has expired, all amendmentsto the patent claims and all claims added during theproceeding must be withdrawn. Further, all presentlyrejected and objected-to claims are canceled byexaminer’s amendment. See MPEP § 2250,subsection III, Amendment after the Patent HasExpired.

V. EXAMINER’S AMENDMENT

Where it is necessary to amend the patent in orderto place the proceeding in condition to issuance ofa reexamination certificate, the examiner may requestthat the patent owner provide the amendment(s), orthe examiner may make the amendments, with thepatent owner’s approval, by an examiner’samendment. If the changes are made by anexaminer’s amendment, the examiner’s amendmentmust comply with the requirements of 37 CFR1.530(d)-(j) in amending the patent. Thus, theexaminer’s amendment requires presentation of thefull text of any paragraph or claim to be changed,with the 37 CFR 1.530(f) markings. The exceptionfor examiner’s amendments set forth in 37 CFR1.121(g) does not apply to examiner’s amendmentsin reexamination proceedings. See MPEP § 2250.The only exception to the full text presentationrequirement is that an entire claim or an entireparagraph of specification may be deleted from thepatent by a statement deleting the claim or paragraph

2200-182Rev. 08.2017, January 2018


without the presentation of the text of the claim orparagraph.

Normally the title of the invention or the abstractwill not need to be changed during reexamination.If a change to the title or to the abstract is necessary,the patent owner should be notified of the need toprovide an amendment changing the title or abstractas early as possible in the prosecution as a part ofan Office action. If all of the claims are found to bepatentable and a NIRC has been or is to be mailed,the examiner may only change the title of theinvention or the text of the abstract by an examiner’samendment authorized by the patent owner.Changing the title and merely initialing the changeis not permitted in reexamination.

If a patent expires during the pendency of areexamination proceeding for that patent, allamendments to the patent claims and all claimsadded during the proceeding must be withdrawn.The examiner’s amendment is to include a statementsuch as:

“As the patent being reexamined has expiredduring the pendency of the presentreexamination proceeding, all amendmentsmade during the proceeding are improper, andare hereby expressly withdrawn.”

Where an examiner’s amendment is prepared, Box7 of form PTOL-469 (Notice of Intent to Issue ExParte Reexamination Certificate) is checked, andform paragraph 22.06 is used to provide theappropriate attachments.

¶ 22.06 Examiner’s Amendment Accompanying Notice ofIntent To Issue Ex Parte Reexamination Certificate

An examiner’s amendment to the record appears below. Thechanges made by this examiner’s amendment will be reflectedin the reexamination certificate to issue in due course.

[1]

VI. REASONS FOR PATENTABILITY AND/ORCONFIRMATION

Reasons for patentability must be provided, unlessall claims are canceled in the proceeding. Box 2 ofform PTOL-469 is checked, and the reasons are

provided as an attachment. In the attachment to theNIRC, the examiner should indicate why the claimsfound patentable in the reexamination proceedingare clearly patentable over the cited patents orprinted publications. This is done in a manner similarto that used to indicate reasons for allowance in anapplication. See MPEP § 1302.14. Where the recordis clear as to why a claim is patentable, the examinermay refer to the particular portions of the recordwhich clearly establish the patentability of that claim.

The reasons for patentability may be set forth onform PTOL-476, entitled “REASONS FORPATENTABILITY AND/OR CONFIRMATION.”However, as a preferred alternative to using formPTOL-476, the examiner may instead use formparagraph 22.16.

¶ 22.16 Reasons For Patentability and/or Confirmation

STATEMENT OF REASONS FOR PATENTABILITYAND/OR CONFIRMATION

The following is an examiner’s statement of reasons forpatentability and/or confirmation of the claims found patentablein this reexamination proceeding: [1]

Any comments considered necessary by PATENT OWNERregarding the above statement must be submitted promptly toavoid processing delays. Such submission by the patent ownershould be labeled: “Comments on Statement of Reasons forPatentability and/or Confirmation” and will be placed in thereexamination file.

Examiner Note:

This form paragraph may be used as an attachment to the Noticeof Intent to Issue Ex Parte Reexamination Certificate,PTOL-469 (item number 2).

Original patent claims that are found patentable ina reexamination proceeding are generally to bedesignated as “confirmed” claims, while new claimsand amended patent claims are generally to bedesignated as “patentable” claims. However, forpurposes of the examiner setting forth reasons forpatentability or confirmation, the examiner may use“patentable” to refer to any claim that defines overthe cited patents or printed publications. There is noneed to separate the claims into “confirmed” and“patentable” categories when setting forth thereasons.

Obviously, where all claims are canceled in theproceeding, no reasons for patentability are provided.

Rev. 08.2017, January 20182200-183


2287.01 Examiner Consideration ofSubmissions After a NIRC [R-07.2015]

The rules do not provide for an amendment to befiled in a reexamination proceeding after a Noticeof Intent to Issue Ex Parte ReexaminationCertificate (NIRC) has been issued. Note that 37CFR 1.312 does not apply in a reexaminationproceeding. Any amendment, information disclosurestatement, or other paper related to the merits of thereexamination proceeding filed after the NIRC mustbe accompanied by a petition under 37 CFR 1.182.The petition must be granted, in order to have theamendment, information disclosure statement, orother paper related to the merits considered. Wherean amendment, information disclosure statement, orother paper related to the merits of the reexaminationproceeding is filed after the NIRC, and theaccompanying petition under 37 CFR 1.182 isgranted, the examiner will reconsider the case inview of the new information, and if appropriate, willreopen prosecution. See MPEP § 2256 for a detaileddiscussion of the criteria for obtaining entry andconsideration of an information disclosure statementfiled after a NIRC.

Any “Comments on Statement of Reasons forPatentability and/or Confirmation” which arereceived will be placed in the reexamination file,without comment. This will be done even when thereexamination certificate has already issued.

2288 Issuance of Ex Parte ReexaminationCertificate [R-08.2017]

35 U.S.C. 307 Certificate of patentability, unpatentability,and claim cancellation.

(a) In a reexamination proceeding under this chapter, whenthe time for appeal has expired or any appeal proceeding hasterminated, the Director will issue and publish a certificatecanceling any claim of the patent finally determined to beunpatentable, confirming any claim of the patent determined tobe patentable, and incorporating in the patent any proposedamended or new claim determined to be patentable.

*****

37 CFR 1.570 Issuance and publication of ex partereexamination certificate concludes ex parte reexaminationproceeding.

(a) To conclude an ex parte reexamination proceeding, theDirector will issue and publish an ex parte reexaminationcertificate in accordance with 35 U.S.C. 307 setting forth the

results of the ex parte reexamination proceeding and the contentof the patent following the ex parte reexamination proceeding.

(b) An ex parte reexamination certificate will be issuedand published in each patent in which an ex parte reexaminationproceeding has been ordered under § 1.525 and has not beenmerged with any inter partes reexamination proceeding pursuantto § 1.989(a). Any statutory disclaimer filed by the patent ownerwill be made part of the ex parte reexamination certificate.

(c) The ex parte reexamination certificate will be mailedon the day of its date to the patent owner at the address asprovided for in § 1.33(c). A copy of the ex parte reexaminationcertificate will also be mailed to the requester of the ex partereexamination proceeding.

(d) If an ex parte reexamination certificate has been issuedand published which cancels all of the claims of the patent, nofurther Office proceedings will be conducted with that patentor any reissue applications or any reexamination requests relatingthereto.

(e) If the ex parte reexamination proceeding is terminatedby the grant of a reissued patent as provided in § 1.565(d), thereissued patent will constitute the ex parte reexaminationcertificate required by this section and 35 U.S.C. 307.

(f) A notice of the issuance of each ex parte reexaminationcertificate under this section will be published in the OfficialGazette on its date of issuance.

Since abandonment is not possible in areexamination proceeding, a reexaminationcertificate will be issued and published at theconclusion of the proceeding in each patent in whicha reexamination proceeding has been ordered under37 CFR 1.525 except where the reexamination hasbeen concluded by vacating the reexaminationproceeding or by the grant of a reissue patent on thesame patent in which case the reissue patent alsoserves as the reexamination certificate.

Where the reexamination is to be concluded for afailure to timely respond to an Office action, seeMPEP § 2266.

The reexamination certificate will set forth the resultsof the proceeding and the content of the patentfollowing the reexamination proceeding. Thecertificate will:

(A) cancel any patent claims determined to beunpatentable;

(B) confirm any patent claims determined to bepatentable;

(C) incorporate into the patent any amended ornew claims determined to be patentable;

2200-184Rev. 08.2017, January 2018


(D) make any changes in the descriptionapproved during reexamination;

(E) include any statutory disclaimer or terminaldisclaimer filed by the patent owner;

(F) identify unamended claims which were heldinvalid on final holding by another forum on anygrounds;

(G) identify any patent claims not reexamined;

(H) be mailed on the day it is dated to the patentowner at the address provided for in 37 CFR 1.33(c)and a copy will be mailed to the third party requester;and

(I) identify patent claims, dependent on amendedclaims, determined to be patentable.

If a certificate issues and publishes which cancelsall of the claims of the patent, no further Officeproceedings will be conducted with regard to thatpatent or any reissue application or reexaminationrequest directed thereto. However, in an extremelyrare situation in which a reissue application iscopending with a reexamination proceeding in whicha reexamination certificate subsequently issuescancelling all claims of the patent, the patent ownermay file a petition under 37 CFR 1.183 requestingwaiver of the provisions of 37 CFR 1.570(d), toaddress claims that were pending in the reissueapplication prior to the issuance of the certificate.Any such petition must be accompanied by a papercancelling any claim within the scope of the claimscanceled by the certificate and pointing out why theclaims remaining in the reissue application can bepatentable, despite the cancellation of all the patentclaims by certificate, i.e., why the remaining claimsare patentable over the cancelled claims. Such apaper will be available to the examiner, should thepetition be granted. See 37 CFR 1.570(d). See alsoMPEP § 1449.01, subsection I.A. If a reexaminationproceeding is concluded by the grant of a reissuedpatent as provided for in 37 CFR 1.565(b), thereissued patent will constitute the reexaminationcertificate required by 35 U.S.C. 307 and thissection. See 37 CFR 1.570(e).

A notice of the issuance of each reexaminationcertificate will be published in the Official Gazette on its date of issuance in a format similar to that usedfor reissue patents. See 37 CFR 1.570(f) and MPEP§ 2291.

2289 Reexamination Review [R-07.2015]

All reexamination cases are monitored and reviewedin the Central Reexamination Unit (CRU) orTechnology Center (TC) by the CRU SupervisoryPatent Reexamination Specialist (SPRS) or TCQuality Assurance Specialist (QAS), paralegal orother technical support who might be assigned asbackup at several stages during the prosecution. Thisis done to ensure that practice and procedure uniqueto reexamination has been carried out for thereexamination proceeding. In addition to the CRUSPRS or TC QAS review of the reexamination cases,a panel review is made prior to issuing Office actionsas set forth in MPEP § 2271.01.

The above identified review processes areappropriate vehicles for correcting errors, identifyingproblem areas and recognizing trends, providinginformation on the uniformity of practice, andproviding feedback to the Office personnel thatprocess and examine reexamination cases.

2290 Format of Ex Parte ReexaminationCertificate [R-07.2015]

An ex parte reexamination certificate is issued atthe close of each ex parte reexamination proceedingin which reexamination has been ordered under37 CFR 1.525, except for the following two cases:

(A) The ex parte reexamination proceeding ismerged with a reissue application pursuant to 37CFR 1.565(d). If the ex parte reexaminationproceeding is concluded by the grant of a reissuepatent, the reissue patent will constitute thereexamination certificate;

(B) The ex parte reexamination proceeding ismerged with an inter partes reexaminationproceeding pursuant to 37 CFR 1.989(a). If the exparte reexamination proceeding is to be concludedas part of a merged proceeding containing an interpartes reexamination proceeding, a singlereexamination certificate will issue for bothproceedings; see MPEP § 2690.

The ex parte reexamination certificate is formattedmuch the same as the title page of current U.S.patents.

Rev. 08.2017, January 20182200-185


The certificate is titled “ Ex Parte ReexaminationCertificate.” The title is followed by an “ordinal”number in parentheses. For example, ifreexamination was ordered under 35 U.S.C. 304, theordinal number may be, for example, “(235th),”which indicates that it is the two hundred and thirtyfifth ex parte reexamination certificate that hasissued. The certificates continue the ordinalnumbering sequence that has already beenestablished for ex parte reexamination proceedingsordered under 35 U.S.C. 304.

If the reexamination proceeding was ordered under35 U.S.C. 257 as a result of a supplementalexamination proceeding, the certificate is also titled“ Ex Parte Reexamination Certificate.” In addition,the certificate will state “ Ex Parte ReexaminationOrdered under 35 U.S.C. 257”. Ex partereexamination certificates for reexaminations orderedunder 35 U.S.C. 257 are numbered in a separate and

new ordinal sequence, beginning with “(1st).”

Inter partes reexamination certificates are alsonumbered in a separate and new ordinal sequence,

beginning with “(1st).”

The ex parte reexamination certificate numberwill always be the patent number of the originalpatent followed by a two-character “kind code”suffix. The first letter of the “kind code” suffix is“B” for reexamination certificates published priorto January 2, 2001, and “C” for reexaminationcertificates published on or after January 2, 2001.The second letter of the “kind code” suffix is thenumber of the reexamination proceeding of thatpatent, and thus shows how many times that patenthas been reexamined.

Note that where the first reexamination certificatewas a "B1" certificate and a second reexaminationcertificate then issues, the second reexaminationcertificate will be designated “C2” and NOT “C1.”Thus, by looking at the number following the “C,”one will be able to ascertain the number ofreexamination certificates that preceded thecertificate being viewed, i.e., how many priorreexamination certificates have been issued for thepatent. (If this were not the practice and C1 wereused, one would not be able to ascertain from the

number on the certificate how many B certificatescame before.)

The next higher number will be given to thereexamination proceeding for which thereexamination certificate is issued, regardless ofwhether the proceeding is an ex parte reexaminationordered under 35 U.S.C. 304 or 35 U.S.C. 257, oran inter partes reexamination proceeding.

See MPEP § 901.04(a) for a complete list of the kindcodes used by the United States Patent andTrademark Office.

The certificate denotes the date the certificate wasissued at INID code [45] (see MPEP § 901.04). Thetitle, name of inventor, the current classification, theabstract, and the notice regarding the list of prior artdocuments appear at their respective INID codedesignations, much the same as is presently done inutility patents.

The primary differences, other than as indicatedabove, are:

(A) The filing date and number of the request ispreceded by "Reexamination Request" if thereexamination was ordered under 35 U.S.C. 304,and “Supplemental Examination Request” if thereexamination was ordered under 35 U.S.C. 257 (thecontrol number of the supplemental examinationrequest, which is also the control number of thesupplemental examination proceeding, is identicalto the control number of the reexaminationproceeding ordered as a result of the supplementalexamination proceeding).

(B) The patent for which the certification is nowissued is identified under the heading“Reexamination Certificate for”; and

(C) A notice will be present which will informthat the list of cited prior art documents will beavailable via PAIR by control number.

Finally, the certificate will identify the patent claimswhich were confirmed as patentable, canceled,disclaimed, and those claims not examined. Onlythe status of the confirmed, canceled, disclaimed,and not examined claims will be indicated in thecertificate. The text of the new and amended claimswill be printed in the certificate. Any new claims

2200-186Rev. 08.2017, January 2018


will be printed in the certificate completely in italics,and any amended claims will be printed in thecertificate with italics and bracketing indicating theamendments thereto. Any prior court decisions will

be identified, as well as the citation of the courtdecisions.

Below is an example of a certificate for an ex partereexamination ordered under 35 U.S.C. 304:

Rev. 08.2017, January 20182200-187


2200-188Rev. 08.2017, January 2018


2291 Notice of Ex Parte ReexaminationCertificate Issuance in Official Gazette[R-07.2015]

The Official Gazette notice will includebibliographic information, and an indication of thestatus of each claim after the conclusion of thereexamination proceeding. Additionally, arepresentative claim will be published along with an

indication of any changes to the specification ordrawing.

The notice will clearly indicate the type of certificate,e.g., an ex parte reexamination certificate (forproceedings ordered under 35 U.S.C. 304), an interpartes reexamination certificate, a supplementalexamination certificate, or an ex parte reexaminationcertificate from reexamination ordered under 35U.S.C. 257.

Rev. 08.2017, January 20182200-189


2292 Distribution of Certificate [R-08.2012]

An e-copy of the reexamination certificate will beassociated with the e-copy of the patent in the searchfiles. A copy of the certificate will also be made apart of any patent copies prepared by the Officesubsequent to the issuance of the certificate.

A copy of the certificate will also be forwarded toall depository libraries and to those foreign officeswhich have an exchange agreement with the U.S.Patent and Trademark Office.

2293 Intervening Rights [R-11.2013]

35 U.S.C. 307 Certificate of patentability, unpatentability,and claim cancellation.

*****

(b) Any proposed amended or new claim determined to bepatentable and incorporated into a patent following areexamination proceeding will have the same effect as thatspecified in section 252 for reissued patents on the right of anyperson who made, purchased, or used within the United States,or imported into the United States, anything patented by suchproposed amended or new claim, or who made substantialpreparation for the same, prior to issuance of a certificate underthe provisions of subsection (a) of this section.

The situation of intervening rights resulting fromreexamination proceedings parallels the interveningrights situation resulting from reissue proceedings,and the rights detailed in 35 U.S.C. 252 applyequally in reexamination and reissue situations. See Fortel Corp. v. Phone-Mate, Inc., 825 F.2d 1577,3 USPQ2d 1771 (Fed. Cir. 1987); Kaufman Co.,Inc. v. Lantech, Inc., 807 F.2d 970, 1 USPQ2d 1202(Fed. Cir. 1986); Tennant Co. v. Hako Minuteman,Inc., 4 USPQ2d 1167 (N.D. Ill. 1987); Key Mfg.Group, Inc. v. Microdot, Inc., 679 F. Supp. 648, 4USPQ2d 1687 (E.D. Mich. 1987).

2294 Concluded Reexamination Proceedings[R-07.2015]

Ex parte reexamination proceedings may beconcluded in one of four ways:

(A) The prosecution of the proceeding may bebrought to an end, and the proceeding itselfconcluded, by a denial of reexamination, or vacatingthe reexamination proceeding, or terminating the

reexamination proceeding. (In these instances, noReexamination Certificate is issued).

(1) A reexamination file (IFW or paper) inwhich reexamination has been denied or vacated isprocessed by the Central Reexamination Unit (CRU)or Technology Center (TC) to provide the partialrefund set forth in 37 CFR 1.26(c). Thereexamination file will then be given a 420 status(reexamination denied) or a 422 status(reexamination vacated). A copy of the PALM“Application Number Information” screen and the“Contents” screen is printed. The printed copy isannotated by adding the comment “PROCEEDINGCONCLUDED,” and the annotated copy is thenscanned into IFW using the miscellaneous letterdocument code.

(2) A reexamination file (IFW or paper) inwhich the reexamination proceeding has beenterminated should be forwarded to the CentralReexamination Unit (CRU) if the file is not alreadythere. The reexamination file will then be given a420 status. A copy of the PALM “ApplicationNumber Information” screen and the “Contents”screen is printed, the printed copy is annotated byadding the comment “PROCEEDINGCONCLUDED,” and the annotated copy is thenscanned into IFW using the miscellaneous letterdocument code. A partial refund is not made in thisinstance, since the reexamination was properlycommenced and addressed, and was terminated laterbased upon a court decision, or the like.

(B) The proceeding may be concluded under37 CFR 1.570(b) with the issuance of aReexamination Certificate.

A reexamination proceeding that is to be concludedin this manner should be processed as set forth inMPEP § 2287, and reviewed by the CRUSupervisory Patent Reexamination Specialist (SPRS)or TC Quality Assurance Specialist (QAS).

(C) The proceeding may be concluded under37 CFR 1.570(e) where the reexaminationproceeding has been merged with a reissueproceeding and a reissue patent is granted; anindividual reexamination certificate is not issued,but rather the reissue patent serves as the certificate.

A reexamination proceeding that is to be concludedin this manner should be processed, together with

2200-190Rev. 08.2017, January 2018


the reissue proceeding, as set forth in MPEP § 1455and MPEP § 1456.

(D) The proceeding may be concluded under37 CFR 1.997(b) where the ex parte reexaminationproceeding has been merged with an inter partesreexamination proceeding and a single reexaminationcertificate is issued.

A reexamination proceeding that is to be concludedin this manner should be processed, together withthe inter partes reexamination, into a mergedcertificate of the nature set forth in MPEP § 2690and MPEP § 2694.

2295 Reexamination of a Reexamination[R-07.2015]

This section provides guidance for the processingand examination of a reexamination request filed ona patent for which a reexamination certificate hasalready issued, or a reexamination certificate issueson a prior reexamination, while the newreexamination is pending. This reexaminationrequest is generally referred to as a “Reexaminationof a reexamination.”

The reexamination request is to be considered basedon the claims in the patent as modified by thepreviously issued reexamination certificate, and notbased on the original claims of the patent.Accordingly, when the file for the newreexamination proceeding (reexamination of areexamination) is first received by the CentralReexamination Unit (CRU), the CRU technicalsupport staff will print out a copy of the issuedreexamination certificate and make it of record inthe second reexamination file wrapper as apreliminary amendment. Such incorporation mustbe done prior to forwarding the proceeding to theexaminer for action.

The examiner should review the CRU support staff'sentry of the reexamination certificate to ensure thatall certificate changes are properly entered so that(A) the reexamination will be given on an accuratespecification and claims, and (B) the appropriateversion of the patent will be printed in any futurereexamination certificate that will ultimately issue.The examiner will issue a decision on the

reexamination request based on the patent claims(and specification) with the certificate changesentered.

Once reexamination is ordered, the reexaminationproceeding is conducted in accordance with 35U.S.C. 305, 37 CFR 1.550 and MPEP §§ 2254 -2294.

I. PRIOR REEXAMINATION MATURES TOCERTIFICATE WHILE LATER REEXAMINATIONIS PENDING

If a second request for reexamination of a patent isfiled where the certificate for the first reexaminationof the patent will issue within 3 months from thefiling of the second request, the proceedingsnormally will not be merged. If the certificate forthe first reexamination proceeding will issue beforethe decision on the second request must be decided,the reexamination certificate is allowed to issue. Thesecond request is then considered based upon theclaims in the patent as indicated in the issuedreexamination certificate rather than the originalclaims of the patent. The Legal Instrument Examiner(LIE) will print out a copy of the issuedreexamination certificate and make it of record inthe second reexamination file wrapper as apreliminary amendment.

In the order/denial decision on the second request,it should be noted that this preliminary amendment(the certificate) was entered into the reexaminationfile, and that the determination (order/denial) wasbased upon the new patent claims in the certificate.

A copy of the reexamination certificate should beincluded as an attachment to the order/denialdecision to ensure that any third party requester ofthe second reexamination has a copy of thecertificate claims.

II. PATENT OWNER’S SUBMISSION OFAMENDMENTS

Any amendment to the claims (or specification) ofthe reexamination proceeding must be presented asif the changes made to the patent text via thereexamination certificate are a part of the originalpatent. Thus, all italicized text in the certificate is

Rev. 08.2017, January 20182200-191


considered as if the text was present without italicsin the original patent. Further, any certificate textplaced in brackets is considered as if it were neverpresent in the patent at all.

For example, an amendment in a “reexamination ofa reexamination” might include italicized text ofclaim 1 of the reexamination certificate as underlined(or italicized) in the copy of claim 1 submitted inthe amendment. This would indicate that text alreadypresent in the patent (via the reexaminationcertificate) is again being added. This would be animproper amendment, and as such, an “informalsubmission.” Accordingly, the examiner wouldnotify the patent owner that the amendment does notcomply with 37 CFR 1.530. Form PTOL-475 orform PTO-2311 would be used to provide thenotification of the defect in the amendment, asappropriate, and an appropriate time period (seeMPEP § 2266.02) would be set for correction of thedefect.

III. COMPLETION OF THE CHECKLISTS

After the mailing of the NIRC, the reexaminationfile will be processed by the CRU or the TC so thatthe Office of Data Management can prepare andissue a certificate in accordance with 35 U.S.C. 307and 37 CFR 1.570. The certificate will set forth theresults of the reexamination proceeding and thecontent of the patent following the proceeding. SeeMPEP § 2287. The examiner will complete achecklist, Form PTO-1516, and the CRU supportstaff will complete the reexamination clerk checklistForm PTO-1517. In completing the checklists, theexaminer and CRU support staff should keep in mindthat the “patent” is the original patent as modifiedby the reexamination certificate. For example, claimscanceled by the prior reexamination certificateshould be listed in Item 8 - “Claim(s) __________was (were) previously canceled.” Likewise, in Item12 of the examiner checklist - “Claim(s) ________is (are) determined to be patentable as amended”;any claims amended only by the prior reexaminationcertificate (i.e., not further amended in the presentreexamination) should not be listed.

Each “reexamination of a reexamination” must bereviewed by a CRU Supervisory PatentReexamination Specialist (SPRS) or TC Quality

Assurance Specialist (QAS) and a paralegal to ensurecompliance with the above guidelines.

2296 USPTO Forms To Be Used In Ex ParteReexamination [R-07.2015]

The following forms must be used in ex partereexamination actions and processing (these formsare not reproduced below):

(A) Order Denying Request For Ex ParteReexamination – PTOL-471D

(B) Order Granting Request For Ex ParteReexamination – PTOL-471G

(C) Office Action in Ex Parte Reexamination– PTOL-466

(D) Ex Parte Reexamination Advisory ActionBefore the Filing of an Appeal Brief – PTOL-467

(E) Ex Parte Reexamination Advisory ActionAfter the Filing of an Appeal Brief – PTOL-467A

(F) Ex Parte Reexamination Notification Re:Appeal – PTOL-468

(G) Reasons for Patentability/Confirmation –PTOL-476

(H) Notice of Intent to Issue Ex ParteReexamination Certificate – PTOL-469

(I) Ex Parte Reexamination CommunicationTransmittal Form – PTOL-465

(J) Ex Parte Reexamination InterviewSummary- PTOL-474

(K) Notice of Defective Paper In Ex ParteReexamination - Third Party Requested – PTOL-475

(L) Notice of Defective Paper in Ex ParteReexamination - Patent Owner Requested -PTO-2311

(M) Ex Parte Reexamination Communication– PTOL-473

(N) Reexamination Clerk Checklist –PTOL-1517

(O) Examiner Checklist – Reexamination –PTOL-1516

(P) Decision on Petition for Extension of Timein Reexamination - PTO-2293

2200-192Rev. 08.2017, January 2018


A Request for Ex Parte Reexamination TransmittalForm, PTO/SB/57, is available on the USPTOwebsite at www.uspto.gov for use in the filing of arequest for reexamination; its use, however, is notmandatory.

Rev. 08.2017, January 20182200-193



Documents

MPEP - Chapter 2200 - Citation of Prior Art and Ex Parte ... 2200 Citation of Prior Art and Ex Parte Reexamination of Patents 2201 Introduction Citation of Prior Art and Written Statements