MPEP § 2283 — MPEP § 2283
Current through: 2022-07-01

2283-Multiple Copending Ex Parte Reexamination Proceedings 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2283 
 

 
 
 
 
 
 2283 Multiple Copending Ex Parte Reexamination
 Proceedings [R-07.2015]
 

 
 37 CFR 1.565 Concurrent office proceedings which include an ex parte reexamination
 proceeding. 

 *****

 
 (c) If ex parte reexamination is ordered while a prior ex parte reexamination proceeding is pending and prosecution in the prior ex parte reexamination proceeding has not been terminated, the ex parte reexamination proceedings will usually be merged and result in the
 issuance and publication of a single certificate under § 1.570 . For
 merger of inter partes reexamination proceedings, see § 1.989(a) . For merger of ex parte reexamination and inter partes reexamination proceedings, see § 1.989(b) .
 

 
 *****

 

 This section discusses multiple copending reexamination requests which are
 filed on the same patent, where none of the requests is an inter partes 
 request. If one of the multiple copending reexamination requests is an inter
 partes request, see MPEP § 2686.01 .
 

 In order for a second or subsequent request for ex
 parte reexamination to be granted, a substantial new question of patentability
 must be raised by the art (patents and/or printed publications) cited in the second or
 subsequent request for reexamination. MPEP § 2240 provides a discussion as to
 whether a substantial new question of patentability is raised by the prior art cited in a
 second or subsequent request for reexamination filed while a reexamination proceeding is
 pending.
 

 If the second or subsequent request is granted, the decision on whether or
 not to combine the proceedings will be made by the Central Reexamination Unit (CRU)
 Director where the reexamination is pending. The CRU Director may delegate this to the CRU
 Supervisory Patent Reexamination Specialist (SPRS). No decision on combining the
 reexaminations should be made until after reexamination is actually ordered in the later
 filed request for reexamination. See subsection I below.
 

 I. PROCEEDINGS MERGED Where a second request for reexamination is filed and reexamination is
 ordered, and a first reexamination proceeding is pending, 37 CFR 1.565(c) 
 provides that the proceedings will usually be merged. However, a decision not to merge
 is within the sole discretion of the Office to facilitate/carry out the statutory
 mandate of 35 U.S.C.
 305 to conduct reexamination proceedings with “special dispatch.” 
 

 Where a second request for reexamination is filed while a first
 reexamination proceeding is pending, the second request is decided based on the claims
 in effect at the time of the determination (see 37 CFR 1.515(a) ), and if
 reexamination is ordered, the patent owner and the second requester are given an
 opportunity to file a statement and reply, respectively. It is then considered whether
 the proceedings will, or will not, be merged. If the proceedings are merged, the
 prosecution will then continue at the most advanced point possible for the first
 proceeding. It should be noted that if a final rejection has been issued in the first
 proceeding, prosecution will be ordinarily be reopened where any of the new patents or
 printed publications presented in the second request are applied to the merged
 proceeding in a new ground of rejection.
 

 The patent owner will be provided with an opportunity to respond to any
 new rejection in a merged reexamination proceeding prior to the action being made final.
 See MPEP §
 2271 . If the reexamination proceedings are merged, a single
 certificate will be issued based upon the merged proceedings. See 37 CFR
 1.565(c) .
 

 II. WHEN PROCEEDING IS SUSPENDED It may also be desirable in certain situations to suspend a proceeding
 for a short and specified period of time. For example, a suspension of a first
 reexamination proceeding may be issued to allow time for the patent owner’s statement
 and the requester’s reply in a second proceeding prior to merging. A suspension will
 only be granted in extraordinary instances, because of the statutory requirements that
 examination proceed with “special dispatch.” Suspension will not 
 be granted when there is an outstanding Office action.
 

 III. MERGER OF REEXAMINATIONS The following guidelines should be observed when two requests for
 reexamination directed to a single patent have been filed.
 

 The second request (i.e., Request 2) should be processed as quickly as
 possible and assigned to the same examiner to whom the first request (i.e., Request 1)
 is assigned. If neither request for reexamination has been ordered, the examiner must
 address each request within three months of its filing date. If Request 1 has been
 ordered, Request 2 should be decided immediately. If Request 2 is denied, ex
 parte prosecution of Request 1 should continue. If Request 2 is granted,
 the order in the second proceeding should be mailed immediately. The two proceedings
 should not be acted upon until the patent owner’s statement and any reply by the
 requester have been received in Request 2, or until the time for filing same expires.
 Then, the CRU Director or the CRU Director’s delegate will prepare a decision whether to
 merge the two proceedings.
 

 A decision by the CRU Director to merge the reexamination proceedings
 should include a requirement that the patent owner maintain identical claims in both
 files. It will further require that responses by the patent owner, and any other paper
 filed in the merged proceeding, must consist of a single response, addressed to both
 files, filed in duplicate, each bearing a signature and containing identifying data for
 both files, for entry in both files. The decision will point out that both files will be
 maintained as separate complete files. Where the claims are not the same in both files,
 the decision of merger will indicate at its conclusion that the patent owner is given
 one month to provide an amendment to make the claims the same in each file. Where the
 claims are already the same in both files, the decision will indicate at its conclusion
 that an Office action will be mailed in due course, and that the patent owner need not
 take any action at present. The decision of merger will be mailed immediately.
 

 Where the merger decision indicates that an Office action will follow,
 the merged proceeding is returned to the examiner immediately after the decision to
 issue an Office action. Where the merger decision indicates that the patent owner is
 given one month to provide an amendment to make the claims the same in each file
 (identical amendments to be placed in all files), the CRU will await submission of the
 amendment or the expiration of the time to submit the amendment. After the amendment is
 received and processed by the technical support staff or the time for submitting the
 amendment expires, the merged proceeding will be returned to the examiner to issue an
 Office action.
 

 Once the merged proceeding is returned to the examiner for issuance of
 an Office action, the examiner should prepare an Office action at the most advanced
 point possible for the first proceeding. Thus, if the first proceeding is ready for a
 final rejection and the second proceeding does not provide any new information which
 would call for a new ground of rejection, the examiner should issue a final rejection
 for the merged proceeding using the guidelines for the prosecution stage set forth
 below.
 

 If the ex parte prosecution stage has not yet begun
 in Request 1 when Request 2 is received, Request 1 should be processed to the point
 where it is ready for ex parte prosecution. Then, Request 1 is
 normally not acted upon until Request 2 is granted and is ready for ex
 parte action following the statement and reply. Thereafter, the two
 proceedings would be merged. However, if Request 2 is denied, there would be no merger
 and prosecution will be carried out solely on Request 1. Note that Request 2 should be
 determined on its own merits and should not rely on nor refer to the decision issued in
 Request 1.
 

 In the event that an amendment to make the claims the same in each file
 is required by the merger decision (identical amendments to be placed in all files) but
 is not timely submitted, any claim that does not contain identical text in all of the
 merged proceedings (or is present in one proceeding but not present in the other(s))
 should be rejected under 35 U.S.C. 112 , second paragraph, as
 being indefinite as to the content of the claim, and thus failing to particularly point
 out the invention.
 

 IV. THE PROSECUTION STAGE, AFTER MERGER Where merger is ordered, the patent owner is required to maintain
 identical amendments in the merged reexamination files for purposes of the merged
 proceeding. The maintenance of identical amendments in the files is required as long as
 the reexamination proceedings remain merged. Where identical amendments are not present
 in the reexamination files at the time merger is ordered, the patent owner will be
 required to submit an appropriate “housekeeping” amendment placing the same amendments
 in the proceedings. This may be accomplished by amending one or more of the proceedings,
 as appropriate. The patent owner must not address any issue of patentability in the
 housekeeping amendment. In the event that an amendment to make the claims the same in
 each file is required by the merger decision (identical amendments to be placed in all
 files) but is not timely submitted, any claim that does not contain identical text in
 all of the merged proceedings should be rejected under 35 U.S.C. 112 ,
 second paragraph, as being indefinite as to the content of the claim, and thus failing
 to particularly point out the invention.
 

 When prosecution is appropriate in merged proceedings, a single
 combined examiner’s action will be prepared. Each action will contain the control number
 of the two proceedings on every page. A single action cover mailing sheet (having both
 control numbers at the top) will be provided by the examiner to the support staff. The
 support staff will ensure that the action is processed and mailed to the patent owner
 and to each of the requesters, that the action cover mailing sheets accurately reflect
 the mailing to each of these parties, that all parties receive copies of the action, the
 cover mailing sheets, and any other attachments, and that the entire action, including
 the mailing sheets and any other attachments, is scanned into the file of the Image File
 Wrapper (IFW) database.
 

 When a “Notice Of Intent To Issue Ex Parte Reexamination Certificate” (NIRC) is appropriate, a notice will be printed
 for the merged proceeding and scanned into the files of the merged proceeding. Both
 reexamination files will then be processed. The TC or the CRU should prepare the file of
 the concurrent proceedings in the manner specified in MPEP § 2287 before
 release to Office of Data Management.
 

 The above guidelines should be extended to those situations where more
 than two requests for reexamination are filed for a single patent.
 

 V. PROCEEDINGS NOT MERGED Pursuant to 35 U.S.C. 305 , “[a]ll reexamination
 proceedings under this section…will be conducted with special dispatch within the
 Office.” This statutory provision is grounded on the need for certainty and finality as
 to the question of patentability raised by the request for reexamination. Thus, if a
 second request for reexamination will unduly delay the first reexamination proceeding,
 the two proceedings generally will not be merged. If the Office were to merge the two
 proceedings, the first reexamination proceeding would need to be withdrawn from its
 place in the process, thus delaying, instead of advancing, prosecution. This would run
 contrary to the statutory “special dispatch” requirement of 35 U.S.C. 305 and
 its intent. On the other hand, if the Office does not merge, the first reexamination
 proceeding can be concluded, and any substantial new question of patentability raised by
 the second reexamination request can be resolved in the second proceeding, with no delay
 resulting. The second request is then considered based on the claims in the patent as
 indicated in the issued reexamination certificate, rather than the original claims of
 the patent. However, the Office always retains the authority to merge because in some
 instances, it may be more efficient to merge the two proceedings, which would foster
 “special dispatch.” The instances where the Office may, or may not, merge an ongoing
 reexamination proceeding with a subsequent reexamination proceeding, are addressed on a
 case-by-case basis.
 

 For processing of the second reexamination proceeding, see
 MPEP §
 2295 .
 

 VI. FEES IN MERGED PROCEEDINGS Where the proceedings have been merged and a paper is filed which
 requires payment of a fee (e.g., excess claim fee, fee for request for extension of
 time, petition fee, appeal fee, brief fee, oral hearing fee), only a single fee need be
 paid. For example, only one fee need be paid for an appeal brief even though the brief
 relates to merged multiple proceedings and copies must be filed for each file in the
 merged proceeding.
 

 VII. PETITION TO MERGE MULTIPLE COPENDING REEXAMINATION PROCEEDINGS No petition to merge multiple reexamination proceedings is necessary
 since the Office will generally, sua sponte, make a decision as to
 whether it is appropriate to merge the multiple reexamination proceedings. If any
 petition to merge the proceedings is filed prior to the determination ( 37 CFR 1.515 ) and
 order to reexamine ( 37
 CFR 1.525 ) on the second request, it will not be considered but
 will be returned to the party submitting the same by the CRU Director. The decision
 expunging such a premature petition will be made of record in both reexamination files.
 See MPEP §
 2267 .
 

 While the patent owner can file a petition to merge the proceedings at
 any time after the order to reexamine ( 37 CFR 1.525 ) on the second request,
 the better practice is to include any such petition with the patent owner’s statement
 under 37 CFR
 1.530 or subsequent thereto in the event the CRU Director has not
 acted prior to that date to merge the multiple reexamination proceedings. The third
 party requester of a reexamination proceeding (reexamination # 1) does not have a right
 to file a petition under 37 CFR 1.182 to merge that
 reexamination proceeding with another reexamination proceeding (reexamination # 2),
 where that reexamination third party requester does not have any standing to request
 relief with respect to the other reexamination proceeding (reexamination # 2). No such
 standing is provided for anywhere in the statute. Instead of filing a petition under
 37 CFR
 1.182 to merge the reexamination proceedings, the third party
 requester may file a notification of concurrent proceedings pursuant to
 MPEP §
 2282 . After being notified of the existence of the concurrent
 reexamination proceedings and after consideration of the merger and suspension options
 becomes ripe, the Office would 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 reexamination proceeding that it requested.
 

 All decisions on the merits of petitions to merge multiple
 reexamination proceedings will be made by the CRU Director (or to the CRU SPRS, if the
 CRU Director delegates it to him or her).
 

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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 20:50:44