MPEP § 2286 — MPEP § 2286
Current through: 2022-07-01

2286-Ex Parte Reexamination and Litigation Proceedings 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2286 
 

 
 
 
 
 
 2286 Ex Parte Reexamination and Litigation Proceedings [R-10.2019]
 

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

 *****

 
 (b) If a patent in the process of ex parte 
 reexamination is or becomes involved in litigation, the Director shall determine
 whether or not to suspend the reexamination. See § 1.987 for
 inter partes reexamination proceedings.
 

 
 *****

 

 35 U.S.C.
 302 permits a request for ex parte reexamination
 to be filed “at any time.” Requests for ex parte reexamination are
 frequently filed where the patent for which reexamination is requested is involved in
 concurrent litigation. The guidelines set forth below will generally govern Office handling
 of ex parte reexamination requests where there is concurrent litigation
 in the federal courts.
 

 I. COURT-ORDERED/ SANCTIONED REEXAMINATION PROCEEDING, LITIGATION STAYED FOR
 REEXAMINATION, OR EXTENDED PENDENCY OF REEXAMINATION PROCEEDING CONCURRENT WITH
 LITIGATION Where a request for ex parte reexamination indicates
 (A) that it is filed as a result of an order by a court or an agreement by parties to
 litigation which agreement is sanctioned by a court, or (B) that litigation is stayed
 for the filing of a reexamination request, all aspects of the proceeding will be
 expedited to the extent possible. If reexamination is ordered, the examination following
 the statement by the patent owner under 37 CFR 1.530 and the reply by the
 requester under 37 CFR
 1.535 will be expedited to the extent possible.
 

 II. FEDERAL COURT DECISION KNOWN TO EXAMINER AT THE TIME THE DETERMINATION ON THE
 REQUEST FOR REEXAMINATION IS MADE If a federal court decision on the merits of a
 patent is known to the examiner at the time the determination on the request for
 ex parte reexamination is made, the following guidelines will be
 followed by the examiner, whether or not the person who filed the request was a party to
 the litigation. When the initial question as to whether the prior art raises a
 substantial new question of patentability as to a patent claim is under consideration,
 the existence of a final court decision of claim validity in view of
 the same or different prior art does not necessarily mean that no new question is
 present. This is true because of the different standards of proof employed by the
 district courts and the Office and different standards of claim interpretation used in
 reexamination proceedings involving unexpired patent claims. See for example In
 re Zletz, 893 F.2d 319, 322, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) (manner
 of claim interpretation that is used by courts in litigation is not the manner of claim
 interpretation that is applicable during prosecution of a pending application before the
 PTO) and In re Etter, 756 F.2d 852, 225 USPQ 1 (Fed. Cir. 1985) (the
 35 U.S.C.
 282 presumption of patent validity does not apply in reexamination
 proceedings). Thus, while the Office may accord deference to factual findings made by
 the court, the determination of whether a substantial new question of patentability
 exists will be made independently of the court’s validity determination as it is not
 controlling on the Office. See In re Swanson et al., 540 F.3d 1368,
 1378, 88 USPQ2d 1196, 1203 (Fed. Cir. 2008), where the Federal Circuit approved of the
 Office’s interpretation in MPEP § 2242 . A
 non-final holding of claim invalidity or
 unenforceability will not be controlling on the question of whether a substantial new
 question of patentability is present. A final holding of claim invalidity 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 or unenforceable because such claims no longer
 exist in the patent. See Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d
 1152 (Fed. Cir. 1988).
 

 Note the following Federal Circuit decisions involving reexamination
 proceedings where the court affirmed the Office’s rejections even though parallel
 district court proceedings held that the claims at issue had not been proven invalid and
 were 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 Swanson et al., 540
 F.3d 1368, 88 USPQ2d 1196 (Fed. Cir. 2008) and In re Baxter International
 Inc., 678 F.3d 1357, 102 USPQ2d 1925 (Fed. Cir. 2012). 
 

 In Trans Texas, the patent being reexamined was
 subject to an infringement suit, in which the district court had issued its claim
 construction ruling (in a district court opinion) as to the definition of a term. The
 parties ultimately reached a settlement before trial, and the district court issued an
 “Order of Dismissal with Prejudice.” The patent owner relied on that district court
 claim construction ruling in a reexamination proceeding, and argued that the Office was
 bound by that district court claim construction ruling, under the doctrine of issue
 preclusion. The Federal Circuit stated that issue preclusion could not be applied
 against the Office based on a district court holding in an infringement proceeding,
 because the Office was not a party to that earlier infringement proceeding and the
 Office applied different standards and burden of proof. 
 

 In Translogic, a district court infringement suit
 proceeded in parallel with a reexamination proceeding. The district court held that the
 claims at issue had not been proven invalid, while in the reexamination proceeding, the
 examiner found the same claims to be unpatentable as obvious. The examiner’s rejection
 was affirmed by the Board. The defendant (the alleged infringer) of the infringement
 suit appealed the district court decision to the Federal Circuit, while the patent owner
 appealed the Board’s decision to the Federal Circuit. The Federal Circuit consolidated
 the appeals, and addressed the patent owner’s reexamination appeal from the Board. The
 Federal Circuit affirmed the examiner’s conclusion of obviousness by relying upon and
 providing an extensive discussion of KSR International Co. v. Teleflex
 Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). Since the claims were found to
 be unpatentable, the inconsistent district court decision was vacated and remanded.
 

 Note also In re Swanson et al., 540
 F.3d 1368, 88 USPQ2d 1196 (Fed. Cir. 2008) where the Federal Circuit held that the prior
 federal court judgment holding that the claims were not proven invalid over a specific
 prior art reference (in Abbott Labs. v. Syntron Bioreseach, Inc., 334
 F.3d 1343, 67 USPQ2d 1337 (Fed. Cir. 2003)), did not preclude the Office’s finding that
 a substantial new question of patentability existed as to the same claims based on the
 same prior art reference applied in the same manner in the
 subsequent ex parte reexamination proceeding, and did not preclude
 the Office’s finding that the patent claims were unpatentable.
 

 Finally, see In re Baxter International
 Inc., 678 F.3d 1357, 102 USPQ2d 1925 (Fed. Cir. 2012)(patent reexamination
 should take notice of a court decision but the Office need not come to the same
 conclusion as the court).
 

 Any determination on a request for reexamination which the examiner
 makes after a federal court decision must be reviewed by the Central Reexamination Unit
 (CRU) Supervisory Patent Reexamination Specialist (SPRS) to ensure that it conforms to
 the current Office litigation policy and guidelines. See MPEP § 2240 . 
 

 For a discussion of the policy in specific situations where a federal
 court decision has been issued, see MPEP § 2242 .
 

 III. REEXAMINATION WITH CONCURRENT LITIGATION BUT ORDERED PRIOR TO FEDERAL COURT
 DECISION In view of the statutory mandate to make the determination on the
 request within 3 months, the determination on the request based on the record before the
 examiner will be made without awaiting a decision by the federal court. It is not
 realistic to attempt to determine what issues will be treated by the federal court prior
 to the court decision. Accordingly, the determination on the request will be made
 without considering the issues allegedly before the court. If an ex
 parte reexamination is ordered, the reexamination will continue until the
 Office becomes aware that a court decision has issued. At such time, the request will be
 reviewed in accordance with the guidelines set forth below. The patent owner is required
 by 37 CFR
 1.565(a) to call the attention of the Office to any prior or
 concurrent proceeding in which the patent is involved or was involved. Thus, the patent
 owner has an obligation to promptly notify the Office that a 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 promptly notify the Office
 of any federal court decision involving the patent. Where the reexamination proceeding
 is currently pending and the court decision issues, or the Office becomes aware of a
 court decision relating to a pending reexamination proceeding, the order to reexamine is
 reviewed to see if a substantial new question of patentability is still present. If no
 substantial new question of patentability is still present, the reexamination is
 terminated by the CRU or TC Director.
 

 A non-final federal court decision concerning a
 patent under reexamination shall have no binding effect on a reexamination
 proceeding.
 

 The issuance of a final federal court decision
 holding that a claim has not been proven to be invalid during an ex
 parte reexamination also will have no binding effect on the examination of
 the reexamination. This is because, as the court stated, in Ethicon v.
 Quigg, 849 F.2d 1422, 1428, 7 USPQ2d 1152, 1157 (Fed. Cir. 1988) that the
 Office is not bound by a court’s holding that a patent is "not
 invalid", and therefore, should continue the reexamination. The court notes that
 district courts and the Office use different standards of claim construction and
 different standards of proof in evaluating patentability and validity, and thus, on the
 same evidence, could quite correctly come to different conclusions. Specifically,
 invalidity in a district court must be shown by “clear and convincing” evidence, whereas
 in the Office, it is sufficient to show unpatentability by a “preponderance of
 evidence.” Since the “clear and convincing” standard is more difficult to satisfy than
 the “preponderance” standard, deference will ordinarily be accorded to the factual
 findings of the court where the evidence before the Office and the court is the same. If
 sufficient reasons are present, however, claims held as "not invalid" by the court may
 still be rejected in reexamination.
 

 On the other hand, a final federal court holding of
 invalidity or unenforceability (after all appeals), is binding on the Office. Upon the
 issuance of a final holding of invalidity or unenforceability, the claims being examined
 which are held invalid or unenforceable are no longer in force, and therefore, will be
 withdrawn from consideration in the reexamination. The reexamination will continue as to
 any remaining claims being examined. Thus, the reexamination will continue if any
 original, new, or amended claim being examined that was not found invalid or
 unenforceable by the court. If all of the claims
 being examined in the reexamination proceeding 
 are finally held invalid or unenforceable ,
 the reexamination will be vacated by the CRU or TC Director if
 the decision was rendered prior to the order, or terminated by the CRU or TC Director as
 no longer containing a substantial new question of patentability if the decision was
 rendered subsequent to the order, and the reexamination will be concluded. If all claims
 being examined were not held invalid (or unenforceable) (i.e., some claims still
 remain), a substantial new question of patentability may still exist as to the remaining
 claims. In such a situation, the remaining claims would be examined; and, as to the
 claims held invalid or unenforceable, form paragraph 22.20 should be used at
 the beginning of the Office action.
 

 ¶ 22.20 Claims Held Invalid By Court, No Longer Being
 Reexamined
 

 Claims [1] of the
 [2] patent are not being reexamined in view of the final decision of
 [3] . Claim(s) [1] was/were held invalid/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 et al).
 

 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 Court of 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 prior or concurrent
 litigation, the examiner is responsible for conducting a reasonable investigation for
 evidence as to whether the patent for which ex parte reexamination is
 requested has been or is involved in litigation. The investigation will include a review
 of the reexamination file, the patent file, and the results of the litigation computer
 search.
 

 If the examiner discovers, at any time during the
 reexamination proceeding, that there is litigation or that there has been a federal
 court decision on the patent, the fact will be brought to the attention of the CRU SPRS
 or Technology Center (TC) Quality Assurance Specialist (QAS) prior to any further action
 by the examiner. The CRU SPRS or TC QAS must review any action taken by the examiner in
 such circumstances to ensure current Office litigation policy is being followed.
 

 VI. FEDERAL COURT DECISION CONTROLLING IN REEXAMINATION PROCEEDING Once a federal court has ruled upon the merits of a patent and an
 ex parte reexamination is still appropriate under the guidelines
 set forth above, the federal court decision will be considered controlling and will be
 followed as to claims finally held to be invalid by the court. 
 

 

 
 2286.01 Reexamination and Inter Partes 
 Review Proceedings, Post-Grant Review, and Covered Business Method Patent
 Review [R-07.2015]
 

 The Leahy-Smith America Invents Act amended
 35 U.S.C.
 315(d) and added 35 U.S.C. 325(d) to provide that,
 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) or matter involving the patent
 is before the Office, the Director may determine the manner in which the PTAB Review
 Proceeding and the other proceeding or matter may proceed, including providing for stay,
 transfer, consolidation, or termination of such matter or proceeding. If an examiner
 becomes aware of a PTAB Review Proceeding for the same patent that is being reexamined,
 the ex parte reexamination proceeding must be referred to the
 examiner’s SPRS. The SPRS will coordinate with the PTAB before taking any action on the
 reexamination proceeding.
 

 The existence of a PTAB Review Proceeding does not change
 the fact that any reexamination request must, by statute, be decided (a grant or a
 denial) within three months of its filing date.
 

 

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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