MPEP § 2236 — MPEP § 2236
Current through: 2022-07-01

2236-Assignment of Reexamination 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2236 
 

 
 
 
 
 
 2236 Assignment of Reexamination [R-10.2019]

 Reexamination requests are generally assigned to the Central Reexamination
 Unit (CRU) art unit which examines the technology (Chemical, Electrical, Mechanical, etc.)
 in which the patent to be reexamined is currently classified as an original classification.
 In that art unit, the CRU Supervisory Patent Reexamination Specialist (SPRS) will assign
 the reexamination request to a primary examiner, other than the examiner who originally
 examined the patent application (see “Examiner Assignment Policy” below), who is most
 familiar with the claimed subject matter of the patent. In an extremely rare situation,
 where a proceeding is still in a Technology Center (TC) rather than the CRU, the
 reexamination may be assigned to an assistant examiner if no knowledgeable primary examiner
 is available. In such an instance a primary examiner must sign all actions, conference all
 actions with a SPRS or manager and another examiner, and take responsibility for all
 actions taken.
 

 I. EXAMINER ASSIGNMENT POLICY It is the policy of the Office that the CRU SPRS will assign the
 reexamination request to an examiner different from the examiner(s) who examined the
 patent application. Thus, under normal circumstances, the reexamination request will not
 be assigned to a primary examiner or assistant examiner who was involved in any part of
 the examination of the patent for which reexamination is requested (e.g., by
 preparing/signing an action), or was so involved in the examination of the parent of the
 patent. This would preclude assignment of the request to an examiner who was a conferee
 in an appeal conference or panel review conference in an earlier concluded examination
 of the patent (e.g., the application for patent, a reissue, or a prior concluded
 reexamination proceeding). The conferee is considered to have participated in preparing
 the Office action which is preceded by the conference.
 

 Exceptions to this general policy include cases where the original examiner
 is the only examiner with adequate knowledge of the relevant technology to examine the
 case. In the unusual case where there is a need to assign the request to the original
 examiner, the assignment must be approved by the CRU Director, and the fact that such
 approval was given by the CRU Director must be stated by the examiner in the decision on
 the request for reexamination or must be indicated with the CRU Director’s signature
 affixed at the end of the order or action.
 

 It should be noted that while an examiner who examined an earlier
 concluded reexamination proceeding is generally excluded from assignment of a newly
 filed reexamination, if the earlier reexamination is still ongoing, the same examiner
 will generally be assigned the new reexamination.
 

 Copending reissue and reexamination proceedings: 
 (A) When a reissue application is pending for a patent, and a
 reexamination request is filed under 35 U.S.C. 302 for the same
 patent, the reexamination request is generally assigned to an examiner who did
 not examine the original patent application even if the examiner who examined
 the patent application is also examining the reissue application. If the
 reexamination request is granted and the reissue and reexamination proceedings
 are later merged (see MPEP § 2285 ), the merged
 proceeding will be handled (upon return of the files from the Office of Patent
 Legal Administration (OPLA)) by the examiner who is handling the reissue
 application. However, if that examiner was involved in any part of the
 examination of the patent for which reexamination is requested (e.g., by
 preparing/signing an action), or was involved in the examination of the parent
 application of the patent, a different examiner will be assigned. In this
 instance, the reissue application would be transferred (reassigned) from the
 originally assigned examiner.
 

 (B) When a reexamination proceeding is pending for a patent, and a
 reissue application is filed for the same patent:
 
 (1) Where reexamination has already been ordered (granted)
 in the reexamination proceeding, OPLA should be notified as promptly as
 possible after the reissue application is available for docketing, that
 the proceedings are ready for consideration of merger. If any of the
 reexamination file, the reissue application, and the patent file are
 paper files, they should be scanned into the Image File Wrapper (IFW) at
 the time of the notification to OPLA. If the reissue and reexamination
 proceedings are merged by OPLA, the reissue application will generally be
 assigned to the examiner who would ordinarily handle the reissue
 application. However, if that examiner was involved in any part of the
 examination of patent for which reexamination is requested (e.g., by
 preparing/signing an action), or was so involved in the examination of
 the parent application of the patent, a different examiner will be
 assigned. If the reissue and reexamination proceedings are not merged by
 OPLA, the decision will provide guidance as to assignment of the reissue
 proceeding depending on the individual fact situation.
 

 (2) If reexamination has not yet been ordered, the
 Supervisory Patent Reexamination Specialist (SPRS) will ensure that any
 parallel reissue application is not assigned or acted upon, until a
 decision on the reexamination request under 35 U.S.C.
 302 is made. If reexamination is denied, the
 reexamination proceeding will be concluded pursuant to
 MPEP §
 2294 , and the reissue application assigned in
 accordance with MPEP § 1440 . If the
 reexamination request is granted (i.e., reexamination is ordered), the
 SPRS will await the filing of any statement under 37 CFR
 1.530 and any reply under 37 CFR
 1.535 , or the expiration of the time for same (see
 MPEP §
 2249 – § 2251 ), and then OPLA
 will be promptly notified to consider merger of the proceedings. If any
 of the reexamination file, reissue application, or patent files are in
 paper form, they should be scanned into the Image File Wrapper (IFW) at
 the time OPLA is notified. If the reissue and reexamination proceedings
 are merged, the reissue application will generally be assigned (upon
 return of the files from OPLA) to the examiner who ordinarily handles the
 reissue application. However, if that examiner was involved in any part
 of the examination of the patent for which reexamination is requested
 (e.g., by preparing/signing an action), or was so involved in the
 examination of the parent application of the patent, a different examiner
 will be assigned. If the reissue and reexamination proceedings are not
 merged, the decision may provide guidance as to assignment of the reissue
 proceeding, if necessary, depending on the individual fact situation.
 

 
 

 II. CONSEQUENCES OF INADVERTENT ASSIGNMENT TO AN “ORIGINAL EXAMINER” Should a reexamination be inadvertently assigned to an “original
 examiner” (in a situation where the TC or CRU Director’s approval is not stated in the
 decision on the request), the patent owner or the third party requester who objects must
 promptly file a paper notifying the Office. Any paper notifying the Office of an
 assignment to an “original examiner” must be filed within two months of the first Office
 action or other Office communication indicating the examiner assignment, otherwise
 reassignment based on such objection will not be considered. Reassignment of the
 reexamination proceeding to a different examiner will be addressed on a case-by-case
 basis. In no event will the assignment to the original examiner, by itself, be grounds
 for vacating any Office decision(s) or action(s) and “restarting” the reexamination.
 

 A situation may arise where a party timely (i.e., within the two months
 noted above) files a paper notifying the Office to the assignment of a reexamination to
 the “original examiner,” but that paper does not have a right of entry under the rules.
 An example of this is where a third party requester becomes aware of the assignment to
 the “original examiner” via that examiner signing the order for reexamination, and the
 patent owner does not file a statement under 37 CFR 1.530 . In that situation, the
 third party requester cannot file a reply under 37 CFR 1.535 , and thus has no way to
 present the paper directed to the examiner assignment (no right of entry under the
 rules). In situations where a paper directed to the examiner assignment has no right of
 entry under the rules, the Office may waive the rules to the extent that the paper
 directed to the examiner assignment will be entered and considered.
 

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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 20:49:34