MPEP § 2212 — MPEP § 2212
Current through: 2022-07-01

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

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2212 
 

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

 
 37 CFR 1.510 Request for ex parte reexamination. 

 
 (a) Any person may, at any time during the period of enforceability
 of a patent, file a request for an ex parte reexamination by
 the Office of any claim of the patent on the basis 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 for
 requesting reexamination set in § 1.20(c)(1) .
 

 
 *****

 

 35 U.S.C.
 302 and 37 CFR 1.510(a) both indicate that “any
 person” may file a request for ex parte reexamination of a patent,
 unless prohibited by AIA 35 U.S.C. 315(e)(1) or
 35 U.S.C.
 325(e)(1) . Accordingly, there are no types of “persons” who are
 excluded from being able to seek reexamination under 35 U.S.C. 302 . Corporations and/or
 governmental entities are included within the scope of the term “any person.” The only
 “person” who is barred from filing a request for ex parte reexamination
 of a patent under 35
 U.S.C. 302 is one who is barred from doing so by the estoppel
 provisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C.
 325(e)(1) based on inter partes review and post
 grant review, respectively, once the estoppel attaches. The patent owner can ask for
 reexamination which will be limited to an ex parte consideration of
 prior art patents or printed publications. If the patent owner wishes to have a wider
 consideration of issues by the Office, including matters such as prior public use or on
 sale, the patent owner may file a reissue application (see, e.g., MPEP § 1401 -
 §
 1403 ), or, where appropriate, a supplemental examination
 proceeding (see, e.g., MPEP § 2801 – § 2803 ).
 It is also possible for the Director of the Office to initiate reexamination on the
 Director’s own initiative under 37 CFR 1.520 . Some of the persons
 likely to use reexamination under 35 U.S.C. 302 are patentees, licensees,
 potential licensees, attorneys without identification of their real client in interest,
 infringers, potential exporters, patent litigants, interference applicants, and
 International Trade Commission respondents. The name of the person who files the request
 will not be maintained in confidence.
 

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

 Examiners should not discuss or answer inquiries from third parties
 (i.e., parties who are not the patent owner) in reexamination proceedings. A party who
 is not the patent owner should be referred by the examiner to the Technology Center (TC)
 Quality Assurance Specialist (QAS) or Central Reexamination Unit (CRU) Supervisory
 Patent Reexamination Specialist (SPRS) for the examiner’s art unit. The CRU SPRS or TC
 QAS will address any such questions. Only questions on strictly procedural
 matters, i.e., not directed to any specific reexamination proceeding, may be
 discussed by the CRU SPRS or TC QAS with that
 party. 

 Employees of the Office, particularly patent examiners who conducted a
 concluded reexamination proceeding, should not discuss or answer inquiries from any
 person outside the Office as to whether a certain reference or other particular evidence
 was considered during the proceeding and whether a claim would have been allowed over
 that reference or other evidence had it been considered during the proceeding.
 

 Patent practitioners must not make improper inquiries of members of the
 patent examining corps and the Office as a whole. See 37 CFR
 11.804 . Inquiries from members of the public relating to the
 matters discussed above must, of necessity, be refused and such refusal should not be
 considered discourteous or an expression of opinion by the Office as to the validity,
 patentability, or enforceability of the patent.
 

 The definitions set forth in 37 CFR 104.1 and the exceptions in
 37 CFR
 104.21 are applicable to this section.
 

 

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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 20:50:42