MPEP § 2295 — MPEP § 2295
Current through: 2022-07-01

2295-Reexamination of a Reexamination 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2295 
 

 
 
 
 
 
 2295 Reexamination of a Reexamination [R-07.2015]

 This section provides guidance for the processing and examination of a
 reexamination request filed on a patent for which a reexamination certificate has already
 issued, or a reexamination certificate issues on a prior reexamination, while the new
 reexamination is pending. This reexamination request is generally referred to as a
 “Reexamination of a reexamination.”
 

 The reexamination request is to be considered based on the claims in the
 patent as modified by the previously issued reexamination certificate, 
 and not based on the original claims of the patent. Accordingly, when the file for the new
 reexamination proceeding (reexamination of a reexamination) is first received by the
 Central Reexamination Unit (CRU), the CRU technical support staff will print out a copy of
 the issued reexamination certificate and make it of record in the second reexamination file
 wrapper as a preliminary amendment. Such incorporation must be done prior to forwarding the
 proceeding to the examiner for action.
 

 The examiner should review the CRU support staff's entry of the
 reexamination certificate to ensure that all certificate changes are properly entered so
 that (A) the reexamination will be given on an accurate specification and claims, and (B)
 the appropriate version of the patent will be printed in any future reexamination
 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 changes entered .
 

 Once reexamination is ordered, the reexamination proceeding is conducted
 in accordance with 35
 U.S.C. 305 , 37 CFR 1.550 and MPEP §§ 2254 -
 2294 .
 

 I. PRIOR REEXAMINATION MATURES TO CERTIFICATE WHILE LATER REEXAMINATION IS
 PENDING If a second request for reexamination of a patent is filed where the
 certificate for the first reexamination of the patent will issue within 3 months from
 the filing of the second request, the proceedings normally will not be merged. If the
 certificate for the first reexamination proceeding will issue before the decision on the
 second request must be decided, the reexamination certificate is allowed to issue. The
 second request is then considered based upon the claims in the patent as indicated in
 the issued reexamination certificate rather than the original claims of the patent. The
 Legal Instrument Examiner (LIE) will print out a copy of the issued reexamination
 certificate and make it of record in the second reexamination file wrapper as a
 preliminary amendment.
 

 In the order/denial decision on the second request, it should be noted
 that this preliminary amendment (the certificate) was entered into the reexamination
 file, and that the determination (order/denial) was based upon the new patent claims in
 the certificate.
 

 A copy of the reexamination certificate should be included as an
 attachment to the order/denial decision to ensure that any third party requester of the
 second reexamination has a copy of the certificate claims.
 

 II. PATENT OWNER’S SUBMISSION OF AMENDMENTS Any amendment to the claims (or specification) of the reexamination
 proceeding must be presented as if the changes made to the patent text via the
 reexamination certificate are a part of the original patent. Thus, all italicized text
 in the certificate is considered as if the text was present without italics in the
 original patent. Further, any certificate text placed in brackets is considered as if it
 were never present in the patent at all. 
 

 For example, an amendment in a “reexamination of a reexamination” might
 include italicized text of claim 1 of the reexamination certificate as underlined (or
 italicized) in the copy of claim 1 submitted in the amendment. This would indicate that
 text already present in the patent (via the reexamination certificate) is again being
 added. This would be an improper amendment, and as such, an “informal submission.”
 Accordingly, the examiner would notify the patent owner that the amendment does not
 comply with 37 CFR
 1.530 . Form PTOL-475 or form PTO-2311 would be used to provide the
 notification of the defect in the amendment, as appropriate, and an appropriate time
 period (see MPEP
 § 2266.02 ) would be set for correction of the defect.
 

 III. COMPLETION OF THE CHECKLISTS After the mailing of the NIRC, the reexamination file will be processed
 by the CRU or the TC so that the Office of Data Management can prepare and issue a
 certificate in accordance with 35 U.S.C. 307 and 37 CFR 1.570 . The
 certificate will set forth the results of the reexamination proceeding and the content
 of the patent following the proceeding. See MPEP § 2287 . The examiner will complete
 a checklist, Form PTO-1516, and the CRU support staff will complete the reexamination
 clerk checklist Form PTO-1517. In completing the checklists, the examiner and CRU
 support staff should keep in mind that the “patent” is the original patent as
 modified by the reexamination certificate. For example, claims canceled by
 the prior reexamination certificate should be listed in Item 8 - “Claim(s) __________
 was (were) previously canceled.” Likewise, in Item 12 of the examiner checklist -
 “Claim(s) ________ is (are) determined to be patentable as amended”; any claims amended
 only by the prior reexamination certificate (i.e., not further amended
 in the present reexamination) should not be listed . 
 

 Each “reexamination of a reexamination” must be reviewed by a CRU
 Supervisory Patent Reexamination Specialist (SPRS) or TC Quality Assurance Specialist
 (QAS) and a paralegal to ensure compliance with the above guidelines.
 

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 2201-Introduction 

 2202-Citation of Prior Art and Written Statements 

 2203-Persons Who May Cite Prior Art or Written Statements 

 2204-Time for Filing Prior Art or Section 301 Written Statements 

 2205-Content of Prior Art or Section 301 Written Statements 

 2206-Submission and Handling of Prior Art or Section 301 Written Statements 

 2207-Entry of Court Decision in Patent File 

 2208-Service of Prior Art or Section 301 Written Statements on Patent Owner 

 2209-Ex Parte Reexamination 

 2210-Request for Ex Parte Reexamination under 35 U.S.C. 302 

 2211-Time for Requesting Ex Parte Reexamination under 35 U.S.C. 302 

 2212-Persons Who May File a Request for Ex Parte Reexamination under 35 U.S.C. 302 
 2212.01-Inquiries from Persons Other Than the Patent Owner 

 
 

 2213-Representative of Requester 

 2214-Content of Request for Ex Parte Reexamination Filed under 35 U.S.C. 302 

 2215-Fee for Requesting Ex Parte Reexamination under 35 U.S.C. 302 

 2216-Substantial New Question of Patentability 

 2217-Statement Applying Prior Art in a Request Filed under 35 U.S.C. 302 

 2218-Copies of Prior Art 

 2219-Copy of Printed Patent 

 2220-Certificate of Service 

 2221-Amendments Included in Request Filed under 35 U.S.C. 302 by Patent Owner 

 2222-Address of Patent Owner 

 2223-Withdrawal of Attorney or Agent 

 2224-Correspondence 

 2225-Untimely Paper Filed Prior to Order under 35 U.S.C. 304 

 2226-Initial Processing of Request for Ex Parte Reexamination Filed under 35 U.S.C. 302 

 2227-Incomplete Request for Ex Parte Reexamination Filed under 35 U.S.C. 302 

 2228-[Reserved] 

 2229-Notice of Request under 35 U.S.C. 302 for Ex Parte Reexamination in Official Gazette 

 2230-Constructive Notice to Patent Owner 

 2231-Processing of Request Corrections 

 2232-Public Access to Reexaminations Filed under 35 U.S.C. 302 
 2232.01-Determining if a Reexamination Request Was Filed under 35 U.S.C. 302 for a Patent 

 
 

 2233-Processing in Central Reexamination Unit and Technology Center 

 2234-Entry of Amendments 

 2235-Record Systems 

 2236-Assignment of Reexamination 

 2237-Transfer Procedure 

 2238-Time Reporting 

 2239-Reexamination Ordered at the Director’s Initiative 

 2240-Decision on Request Filed under 35 U.S.C. 302 

 2241-Time for Deciding Request Filed under 35 U.S.C. 302 

 2242-Criteria for Deciding Request Filed under 35 U.S.C. 302 

 2243-Claims Considered in Deciding Request Filed under 35 U.S.C. 302 

 2244-Prior Art on Which the Determination Is Based in Requests Filed under 35 U.S.C. 302 

 2245-Processing of Decision 

 2246-Decision Ordering Reexamination under 35 U.S.C. 304 

 2247-Decision under 35 U.S.C. 303 on Request for Reexamination filed Under 35 U.S.C. 302, Request Denied 
 2247.01-Examples of Decisions on Request for Reexamination 

 
 

 2248-Petition From Denial of Request Filed Under 35 U.S.C. 302 

 2249-Patent Owner’s Statement in Reexaminations Filed Under 35 U.S.C. 302 

 2250-Amendment by Patent Owner 
 2250.01-Correction of Patent Drawings 

 2250.02-Correction of Inventorship 

 2250.03-Fees for Adding Claims and for Filing a Petition 

 
 

 2251-Reply by Third Party Requester 

 2252-Consideration of Statement and Reply 

 2253-Consideration by Examiner 

 2254-Conduct of Ex Parte Reexamination Proceedings 

 2255-Who Reexamines 

 2256-Prior Art Patents and Printed Publications Reviewed by Examiner in Reexamination 

 2257-Listing of Prior Art 

 2258-Scope of Ex Parte Reexamination 
 2258.01-Use of Previously Cited/Considered Art in Rejections 

 2258.02-Claiming Foreign Priority and Domestic Benefit in Reexamination 

 
 

 2259-Res Judicata and Collateral Estoppel in Reexamination Proceedings 

 2260-Office Actions 
 2260.01-Dependent Claims 

 
 

 2261-Special Status for Action 

 2262-Form and Content of Office Action 

 2263-Time for Response 

 2264-Mailing of Office Action 

 2265-Extension of Time 

 2266-Responses 
 2266.01-Submission Not Fully Responsive to Non-Final Office Action 

 2266.02-Examiner Issues Notice of Defective Paper in Ex Parte Reexamination 

 2266.03-Service of Papers 

 
 

 2267-Handling of Inappropriate or Untimely Filed Papers 

 2268-Petition for Entry of Late Papers for Revival of Reexamination Proceeding 

 2269-Reconsideration 

 2270-Clerical Handling 

 2271-Final Action 
 2271.01-Panel Review 

 
 

 2272-After Final Practice 

 2273-Appeal in Ex Parte Reexamination 

 2274-Appeal Brief 

 2275-Examiner’s Answer 

 2276-Oral Hearing 

 2277-Board Decision 

 2278-Action Following Decision 

 2279-Appeal to Courts 

 2280-Information Material to Patentability in Reexamination Proceeding Filed under 35 U.S.C. 302 

 2281-Interviews in Ex Parte Reexamination Proceedings 

 2282-Notification of Existence of Prior or Concurrent Proceedings and Decisions Thereon 

 2283-Multiple Copending Ex Parte Reexamination Proceedings 

 2284-Copending Ex Parte Reexamination and Interference Proceedings 

 2285-Copending Ex Parte Reexamination and Reissue Proceedings 

 2286-Ex Parte Reexamination and Litigation Proceedings 
 2286.01-Reexamination and Inter Partes Review Proceedings, Post-Grant Review, and Covered Business Method Patent Review 

 
 

 2287-Conclusion of Ex Parte Reexamination Proceeding 
 2287.01-Examiner Consideration of Submissions After a NIRC 

 
 

 2288-Issuance of Ex Parte Reexamination Certificate 

 2289-Reexamination Review 

 2290-Format of Ex Parte Reexamination Certificate 

 2291-Notice of Ex Parte Reexamination Certificate Issuance in Official Gazette 

 2292-Distribution of Certificate 

 2293-Intervening Rights 

 2294-Concluded Reexamination Proceedings 

 2295-Reexamination of a Reexamination 

 2296-USPTO Forms To Be Used In Ex Parte Reexamination 

 

 

 
 

 
 
 

 
 

 

 
 
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 Last Modified: 
 
 03/09/2026 20:50:45