MPEP § 2265 — MPEP § 2265
Current through: 2022-07-01

2265-Extension of Time 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Patent Laws, Regulations, Policies & Procedures 

 
 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2265 
 

 
 
 
 
 
 2265 Extension of Time [R-07.2015]

 
 37 CFR 1.550 Conduct of ex parte reexamination proceedings. 

 *****

 
 (c) The time for taking any action by a patent owner in an
 ex parte reexamination proceeding may be extended as
 provided in this paragraph.
 
 (1) Any request for such an extension must
 specify the requested period of extension and be accompanied by the petition
 fee set forth in § 1.17(g) .
 

 (2) Any request for an extension in a third party
 requested ex parte reexamination must be filed on or
 before the day on which action by the patent owner is due, and the mere
 filing of such a request for extension will not effect the extension. A
 request for an extension in a third party requested ex
 parte reexamination will not be granted in the absence of
 sufficient cause or for more than a reasonable time.
 

 (3) Any request for an extension in a patent
 owner requested or Director ordered ex parte 
 reexamination for up to two months from the time period set in the Office
 action must be filed no later than two months from the expiration of the
 time period set in the Office action. A request for an extension in a patent
 owner requested or Director ordered ex parte 
 reexamination for more than two months from the time period set in the
 Office action must be filed on or before the day on which action by the
 patent owner is due, and the mere filing of a request for an extension for
 more than two months from the time period set in the Office action will not
 effect the extension. The time for taking action in a patent owner requested
 or Director ordered ex parte reexamination will not be
 extended for more than two months from the time period set in the Office
 action in the absence of sufficient cause or for more than a reasonable
 time.
 

 (4) The reply or other action must in any event
 be filed prior to the expiration of the period of extension, but in no
 situation may a reply or other action be filed later than the maximum time
 period set by statute.
 

 (5) See §
 90.3(c) of this title for extensions of time for
 filing a notice of appeal to the U.S. Court of Appeals for the Federal
 Circuit or for commencing a civil action.
 

 
 

 
 *****

 
 I. EXTENSIONS UNDER 37 CFR 1.136 ARE NOT PERMITTED IN EX PARTE 
 REEXAMINATION PROCEEDINGS The provisions of 37 CFR 1.136(a) and
 (b) are NOT applicable to ex
 parte reexamination proceedings under any circumstances. Public Law 97-247
 amended 35 U.S.C.
 41 to authorize the Director to provide for extensions of time to
 take action in an “application.” An ex parte reexamination proceeding
 does not involve an “application.” 37 CFR 1.136 authorizes extensions
 of the time period only in an application in which an applicant must respond or take
 action. There is neither an “application,” nor an “applicant” involved in a
 reexamination proceeding. 
 

 An extension of time in an ex parte reexamination
 proceeding is requested pursuant to 37 CFR 1.550(c) which provides that
 any request for such an extension must specify the requested period of extension and be
 accompanied by the fee set forth in 37 CFR 1.17(g) .
 

 Form paragraph 22.04.01 may be used
 to notify the parties in a reexamination proceeding the extension of time practice in
 reexamination.
 

 ¶ 22.04.01 Extension of Time in Reexamination

 Extensions of time under 
 37 CFR 1.136(a) 
 will not be
 permitted in these proceedings because the provisions of 37 CFR 1.136 apply only to
 “an applicant” and not to parties in a reexamination proceeding. Additionally, 
 35 U.S.C. 305 
 requires that reexamination proceedings “will be conducted with special dispatch”
 (
 37 CFR 1.550(a) ). Extensions of time in ex parte reexamination proceedings are provided for in 37 CFR 1.550(c) . 
 

 
 II. FEE FOR AN EXTENSION OF TIME IN EX PARTE REEXAMINATION
 PROCEEDINGS The fee set forth in 37 CFR
 1.17(g) is the required fee for filing a request for an extension
 of time in a reexamination proceeding. Unlike extension of time practice under
 37 CFR
 1.136 , the period of extension is not determined by the amount of
 the fee paid. The fee is for filing the request. Under 37 CFR 1.550(c) ,
 each request for an extension must specify the requested period of extension and must be
 accompanied by the fee set forth in 37 CFR 1.17(g) .
 

 III. GENERAL GUIDANCE ON EXTENSIONS OF TIME IN EX PARTE 
 REEXAMINATION PROCEEDINGS All requests by the patent owner for extensions of time
 to respond to any Office action in an ex parte reexamination
 proceeding, including the submission of a patent owner statement under 37 CFR 1.530 , must
 be filed under 37 CFR
 1.550(c) , in writing, and will be decided by the Director or SPRS
 of the Central Reexamination Unit (CRU) or the Director of a Technology Center (TC)
 conducting the reexamination proceeding, with the exception of an automatic two-month
 extension of time to take further action which will be granted upon filing a first
 timely response to a final Office action (see subsection VII below; see also
 MPEP §
 2272 ). Requests for an extension of time must be filed on or
 before the day on which action by the patent owner is due, and will be granted only for
 sufficient cause (see subsection VI below), except for requests for a “no cause”
 extension in patent owner requested or Director ordered reexaminations as provided in
 37 CFR
 1.550(c) (see subsection V.A. below). Patent owner requested
 reexaminations include reexaminations ordered under 35 U.S.C.
 257 . In no case, other than the “after final” practice and the “no
 cause” extension in patent owner requested or Director ordered reexaminations, will a
 mere filing of a request for extension of time automatically effect any extension.
 

 The time extended is added to the last calendar day of the
 original period, as opposed to being added to the day it would have been due when said
 last day is a Saturday, Sunday, or federal holiday.
 

 A request for an extension of time under 37 CFR 1.550(c) 
 must be submitted as a separate paper which will be forwarded to the CRU SPRS or TC
 Director for action. The certificate of mailing and the certificate of transmission
 procedures ( 37 CFR
 1.8 ) and the Priority Mail Express® mailing procedure
 ( 37 CFR
 1.10 ) may be used to file a request for extension of time.
 

 A request for an extension of time in an ex
 parte reexamination proceeding will be considered only after the decision
 to grant or deny reexamination is mailed. Any request filed before that decision will be
 denied. A request for an extension of the time period to file a petition from the denial
 of a request for reexamination can only be entertained by filing a petition under
 37 CFR
 1.183 with the appropriate fee to waive the time provisions of
 37 CFR
 1.515(c) .
 

 Ex parte prosecution will generally be conducted by initially setting
 a two-month shortened period for response. See MPEP § 2263 . In any ex
 parte reexamination ordered under 35 U.S.C. 304 (i.e., patent owner
 requested, Director ordered, or third party requested), the patent owner also will be
 given a two-month statutory period after the order for reexamination to file a
 statement. See 37 CFR
 1.530(b) . However, in ex parte reexaminations
 ordered under 35 U.S.C. 257 , the statute does not
 permit the patent owner to file such a statement. See MPEP §§
 2818.01 and 2823 .
 

 The time period for filing a third party requester reply
 under 37 CFR
 1.535 to the patent owner’s statement (i.e., two (2) months from
 the date of service of the statement on the third party requester) cannot be extended
 under any circumstances. No extensions will be permitted to the time for filing a reply
 under 37 CFR
 1.535 by the requester because the two-month period for filing the
 reply is a statutory period. See 35 U.S.C. 304 . A statutory period
 for response cannot be waived. See MPEP § 2251 .
 

 IV. THIRD PARTY REQUESTED EX PARTE REEXAMINATIONS The extension of time practice under 37 CFR 1.550(c) 
 for patent owner responses in an ex parte reexamination proceeding
 which has been requested by a third party, i.e., a third party requested ex
 parte reexamination, remains unchanged under the rules and practices
 adopted in view of the Patent Law Treaty (PLT). A third party requested ex
 parte reexamination is initiated by a party other than the patent owner or
 the Office. Thus, it is an “inter partes proceeding” under PLT Rule 12(5)(a)(vi). For
 this reason, the minimum reply period provisions of the PLT do not apply to third party
 requested ex parte reexaminations.
 

 The patent owner must file a written request specifying
 the requested period for extension (e.g., one month), and must file the request, the
 required fee, and the response within the specified period for extension. A request for
 an extension, which must be accompanied by the required fee, may be filed with or
 without the response.
 

 A. Requirements for a Showing of Sufficient Cause and for a Reasonable
 Time Any request for an extension of time for a response by
 the patent owner in a third party requested ex parte reexamination
 must include a showing of sufficient cause, and the requested extension must be for a
 reasonable time. See subsection VI below.
 

 “No cause” extensions of time for up to two months for
 filing a response (see subsection V.A. below), or for filing an appeal brief (see
 also subsection IV.C. below) are not available, because the extension of time
 provisions of the PLT do not apply to third party requested reexaminations. The mere
 filing of a written request for an extension of time and the required fee in a third
 party requested reexamination will not result in an extension of time; i.e., will not
 effect the extension. 
 

 B. Time for Filing 37 CFR
 1.550(c) continues to provide that any request for an extension
 in a third party requested ex parte reexamination must be filed on
 or before the day on which action by the patent owner is due. Because the extension
 of time practice for patent owner responses in third party requested reexaminations
 remains unchanged, “the day on which action by the patent owner is due” continues to
 be no later than the day before the date of expiration of the time period for
 response set in the Office action. For example, if the Office action sets a one-month
 period for response, any request for an extension of time must be filed no later than
 one month from the mail date of the Office action. 
 

 C. Extension of Time for Filing a Notice of Appeal, an Appeal Brief, or a
 Reply Brief Extensions of time for filing a notice of appeal to
 the Patent Trial and Appeal Board (PTAB), an appeal brief, or a reply brief, are
 governed by 37 CFR
 1.550(c) .
 

 A notice of appeal is governed by 37 CFR 1.550(c) 
 in the same manner as a response. 
 

 For the purposes of requesting an extension of time
 for filing an appeal brief or a reply brief, the “the day on which action by the
 patent owner is due” set forth in 37 CFR 1.550(c) is the last day
 of the time period permitted to file the brief. For example, 37 CFR 41.35(a) 
 requires that an appeal brief must be filed within two months from the date of the
 appeal. See MPEP §
 1205 . 37 CFR 41.41(a) governs the time
 for filing a reply brief. See MPEP § 1208 . See also
 MPEP §
 2274 , subsection III.
 

 The request for an extension of time to file a notice
 of appeal, an appeal brief, or a reply brief must include a showing of sufficient
 cause, and the extension must be for a reasonable time. See subsection VI below. The
 request must be filed as a separate paper.
 

 See MPEP § 1216 for specific guidance on
 the time for filing the notice and reasons of appeal to the U.S. Court of Appeals for
 the Federal Circuit or for commencing a civil action. See also MPEP § 2279 .
 

 V. PATENT OWNER REQUESTED AND DIRECTOR ORDERED EX PARTE 
 REEXAMINATIONS The extension of time practice in ex
 parte reexaminations which have been requested by the patent owner (patent
 owner requested reexaminations), and in ex parte reexaminations
 initiated by the Director pursuant to 35 U.S.C. 302 (see
 MPEP §
 2239 ) (Director ordered reexaminations), has been revised as a
 result of the implementation of the Patent Law Treaty (PLT). See Changes to
 Implement the Patent Law Treaty, 78 FR 62368 (October 21, 2013)(final
 rule).
 

 Because a supplemental examination of a patent can only be
 requested by a patent owner (see 37 CFR 1.601 ), any ex
 parte reexamination ordered under 35 U.S.C.
 257 as a result of a supplemental examination is considered to be
 a “patent owner requested” ex parte reexamination for the purposes of
 37 CFR
 1.550(c) .
 

 For specific guidance on extension of time practice in
 ex parte reexaminations which have been requested by a third party
 (third party requested reexaminations), see subsection IV above.
 

 A. “No Cause” Extensions of Time for Up to Two Months from Response Period
 Set in Office Action Effective December 18, 2013, 37 CFR 1.550(c) 
 was amended to omit the requirement, in patent owner requested or Director ordered
 ex parte reexamination proceedings, for a showing of sufficient
 cause in a request for an extension of time for up to two months from the time period
 set in the Office action, i.e., a “no cause” extension. 
 

 As in extension of time practice under
 37 CFR
 1.136 for applications, a patent owner is not required to
 provide a reason why the extension is requested (i.e., the “cause” of the need for
 the extension) in a request for an extension of time for up to two months from the
 time period for response set in the Office action. However, unlike extension of time
 practice under 37
 CFR 1.136 for applications, the mere filing of the fee for the
 extension of time is insufficient. The patent owner must timely file, in
 addition to the response to the Office action: (i) a written request for an
 extension of time which specifies the requested period of extension, i.e., for up
 to two months from the response period set in the Office action; and (ii) the fee
 set forth in 37 CFR 1.17(g) . The written request must be filed as a separate paper. The written request
 for the extension and the fee may be filed with or without the response. However, the
 request for the extension, the required fee, and the response must all be timely
 filed.
 

 The patent owner must, in its written request, specify
 the requested period for extension (e.g., one month or two months), and must file the
 request and the required fee within the specified period for extension. See
 subsection V.C below. The Office may then grant an extension for the time specified,
 up to a period of two months. 
 

 B. Extensions of Time for More than Two Months from Response Period Set in
 Office Action A request for an extension for more than two months
 from the time period for response set in the Office action must include a showing of
 sufficient cause, and the extension must be for a reasonable time. The timely filing
 of a written request for an extension for more than two months from the time period
 for set in the Office action and the required fee, alone, will not result in an
 extension of time; i.e., will not effect the extension. See subsection VI below. 
 

 C. Time for Filing 
 

 1. “No Cause” Extension of Time 37 CFR
 1.550(c) provides that any request in a patent owner
 requested or Director ordered ex parte reexamination for an
 extension of time for up to two months from the time period set in the Office
 action, i.e., a “no cause” extension, must be filed no later than two months from
 the expiration of the time period set in the Office action. The patent owner must
 specify the requested period of extension, not to exceed two months from the time
 period set in the Office action. The patent owner must file the request and the
 required fee within the specified period for extension.
 

 If, for example, the Office action sets a two-month
 period for response, and if the patent owner requests a two-month extension, the
 patent owner is permitted to file the request for such an extension up to the last
 day of the fourth month from the mail date of the Office action. However, if the
 Office action sets a two-month period for response, and if the patent owner
 requests only a one-month extension, the patent owner must file the request for
 the extension by the last day of the third month from the mail date of the Office
 action.
 

 2. Extensions of Time for More than Two Months 37 CFR
 1.550(c) provides that any request in a patent owner
 requested or Director ordered ex parte reexamination for an
 extension of time for more than two months from the time period set in the Office
 action must be filed on or before the day on which action by the patent owner is
 due.
 

 Patent owners are cautioned that a request for an
 extension for more than two months from the time period set in the Office Action
 will only be granted in extraordinary circumstances. See subsection VI below.
 

 If the patent owner wishes to request an extension
 for more than two months, and if the patent owner has timely filed one or more
 requests for an extension of time, the total of which does not exceed two months
 from the time period set in the Office action, i.e., “no cause” extensions, then
 “the day on which action by the patent owner is due” is the expiration of the
 total of the period(s) of extension specified in the request(s) for the “no cause”
 extension, not to exceed two months. Thus, if the patent owner wishes to request
 an extension for more than two months, the patent owner must file, no later than
 two months from the expiration of the time period set in the Office action: 1) one
 or more written requests specifying a period of extension, the total of which does
 not exceed two months from the time period set in the Office action, i.e., “no
 cause” extensions, and the required fee for each request; and 2) an additional
 written request specifying a period of extension, which is more than two months
 from the time period set in the Office action, and an additional required fee. The
 request for an extension for more than two months must also include a showing of
 sufficient cause, and must be for a reasonable time. See subsection VI below. A
 request for an extension for more than two months may be filed in the same paper
 as a request for a “no cause” extension for up to two months, or each request may
 be filed separately. Any request for an extension of time, however, must be filed
 separately from any other paper, such as a response or an appeal brief. 
 

 For example, if the Office action sets a two-month
 time period for response, any request for an extension of time for two months must
 be filed no later than four months from the mail date of the Office action, and
 any request for an extension of time for more than two months must also be filed
 no later than four months from the mail date of the Office action. However, if the
 Office action only sets a one-month time period for response (for example, in
 situations where a lack of response does not result in a loss of rights), any
 request for an extension of time for two months must be filed no later than three
 months from the mail date of the Office action, and any request for an extension
 of time for more than two months must also be filed no later than three months
 from the mail date of the Office action.
 

 3. Specific Examples 
 Example 1

 The patent owner, in a patent owner requested
 reexamination, wishes to file a written request specifying a two-month
 extension, i.e., a “no cause” extension. The Office action sets a two-month
 period for response.
 

 The patent owner must file the written request
 accompanied by the required fee, and the required response, within four months
 of the mail date of the Office action.
 

 

 
 Example 2

 The patent owner, in a patent owner requested
 reexamination, wishes to file a written request specifying only a one-month
 extension, i.e., a “no cause” extension. The Office action sets a two-month
 period for response.
 

 The patent owner must file the written request
 accompanied by the required fee, and the required response, within three months
 of the mail date of the Office action.
 

 

 
 Example 3

 The patent owner, in a patent owner requested
 reexamination, wishes to file a written request specifying only a one-month
 extension, i.e., a “no cause” extension. The Office action sets a two-month
 period for response. The patent owner timely files, within three months from
 the mail date of the Office action, the request for the one-month extension and
 the required fee, but fails to file the response.
 

 The patent owner may, in order to timely file
 the response, file another request for a one-month “no-cause” extension,
 another required fee, and the response within four months from the mail date of
 the Office action.
 

 

 
 Example 4

 The patent owner, in a patent owner requested
 reexamination, wishes to file a written request specifying only a one-month
 extension, i.e., a “no cause” extension. The Office action sets a two-month
 period for response. The patent owner files a request for only a one-month
 extension and the required fee (with or without the response) after three
 months from the mail date of the Office action.
 

 The request will be dismissed as untimely even
 if it is filed within four months from the mail date of the Office action. In
 such a case, a subsequent written request for an extension of two months from
 the original time period set in the Office action, accompanied by the required
 fee, may be granted if it is filed within four months from the mail date of the
 Office action.
 

 

 
 Example 5

 The patent owner, in a patent owner requested
 reexamination, wishes to file a request for an extension for three months,
 i.e., more than two months from the time period set in the Office action. (Such
 a request will only be granted in extraordinary circumstances. See subsection
 VI below.) The Office action sets a two-month time period for response.
 

 The patent owner may file, up to the last day of
 the fourth month from the mail date of the Office action: 1) a
 first request for a two-month “no cause” extension and the required fee; and 2)
 a second request specifying an additional one-month extension, which is more
 than two months from the time period set in the Office action, a showing of
 sufficient cause, and a second required fee. If the second request is granted
 (which would only occur in extraordinary circumstances – see subsection VI.
 below), the required reply must be filed on or before the last day of the
 fifth month. If the second request is not granted,
 a reply filed after the last day of the fourth month would be
 untimely and would not be entered.
 

 Alternatively, the patent owner may file, up to
 the last day of the third month from the mail date of the Office
 action: 1) a request for a one-month “no cause” extension and the required fee;
 and 2) a second request specifying an additional two-month extension, which is
 more than two months from the time period set in the Office action, a showing
 of sufficient cause, and a second required fee. If the second request is
 granted (which would only occur in extraordinary circumstances – see subsection
 VI below), the required reply must be filed on or before the last day of the
 fifth month. If the second request is not granted,
 a reply filed after the last day of the third month would be
 untimely and would not be entered.
 

 
 D. Extension of Time for Filing a Notice of Appeal, an Appeal Brief, or a
 Reply Brief Extensions of time for filing a notice of appeal to
 the Board, an appeal brief, or a reply brief, are governed by 37 CFR
 1.550(c) . The request must be filed as a separate paper.
 

 A notice of appeal is governed by 37 CFR 1.550(c) 
 in the same manner as a response.
 

 For the purposes of requesting an extension of time
 for filing an appeal brief or a reply brief, the “time set in the Office action” set
 forth in 37 CFR
 1.550(c) is the time permitted to file the brief. The “day on
 which action by the patent owner is due” set forth in 37 CFR 1.550(c) 
 is the last day of the time period permitted to file the brief. For example,
 37 CFR
 41.37(a) requires that an appeal brief must be filed within two
 months from the date of the appeal. See MPEP § 1205 . 37 CFR 41.41(a) 
 governs the time for filing a reply brief. See MPEP § 1208 . See
 also MPEP §
 2274 , subsection III.
 

 In patent owner requested or Director ordered
 reexamination proceedings, the patent owner may request an extension of time for
 filing an appeal brief or a reply brief for up to two months from the time permitted
 to file the brief, without providing a showing of sufficient cause, i.e., a “no
 cause” extension. See subsection V.A above. For example, since the time permitted to
 file an appeal brief is two months from the date of the appeal, any request for an
 extension of time for two months must be filed no later than four months from the
 date of the appeal. See subsection V.C. above.
 

 The patent owner must, in its written request, specify
 the requested period for extension (e.g., one month or two months), and must file the
 request and the required fee within the specified period for extension. For example,
 if the patent owner only specifies a one-month extension in its request, the patent
 owner must file, in addition to an appeal brief, the written request for the
 extension and the required fee within three months from the date of the appeal. The
 request for the extension and the fee may be filed with or without the brief. For
 further examples, see subsection V.C. above.
 

 However, the timely filing of a written request for an
 extension for more than two months from the time permitted to file the brief and the
 required fee, alone, will not result in an extension of time; i.e., will not effect
 the extension. The request for such an extension must include a showing of sufficient
 cause. In addition, the extension must be for a reasonable time. Such requests will
 only be granted in extraordinary circumstances. See subsection VI below.
 

 See MPEP § 1216 et seq . for specific guidance on the time for filing the notice
 and reasons of appeal to the U.S. Court of Appeals for the Federal Circuit or for
 commencing a civil action. See also MPEP § 2279 .
 

 VI. REQUIREMENTS FOR A SHOWING OF SUFFICIENT CAUSE AND AN EXTENSION FOR A REASONABLE
 TIME Requests for any extension of time in third party
 requested reexaminations, and requests for an extension of more than two months from the
 time period set in the Office action in patent owner requested or Director ordered
 reexaminations, must include a showing of sufficient cause, and the extension must be
 for a reasonable time. 
 

 Any evaluation of whether sufficient cause has been shown
 for an extension must balance the need to provide the patent owner with a fair
 opportunity to present an argument against any attack on the patent, and the requirement
 of the statute ( 35
 U.S.C. 305 ) that the proceeding be conducted with special
 dispatch.
 

 Any request for an extension of time, except for the “no cause” extension
 in patent owner requested or Director ordered reexamination provided in 37 CFR 1.550(c) , must
 fully state the reasons therefor. The reasons must include a statement of what action the
 patent owner has taken to provide a response as of the date the request for extension is
 submitted, and why, in spite of the action taken thus far, the requested additional time is
 needed. The statement must include a factual accounting of reasonably diligent behavior by
 all those responsible for preparing a response to the outstanding Office action within the
 statutory time period.
 

 In patent owner requested and Director ordered reexaminations, the patent
 owner already has the opportunity to obtain an extension of time for up to two months from
 the time period set in the Office action, without a showing of sufficient cause, i.e., a
 “no cause” extension. For this reason, requests for an extension of more than two months in
 patent owner requested or Director ordered reexaminations are expected to be rare and will
 only be granted in extraordinary situations.
 

 However, in third party requested ex
 parte reexaminations, a first request for an extension of time will generally
 be granted if a sufficient cause is shown, and for a reasonable time specified — usually
 one month. The reasons stated in the request will be evaluated by the CRU SPRS or TC
 Director, and the requests will be favorably considered where there is a factual accounting
 of reasonably diligent behavior by all those responsible for preparing a response within
 the statutory time period. Second or subsequent requests for an extension of time and
 requests for an extension of more than one month in third party requested reexaminations
 will only be granted in extraordinary situations.
 

 A request for an extension of the time period to file a
 petition from the denial of a request for reexamination can only be entertained by filing a
 petition under 37 CFR
 1.183 with the appropriate fee to waive the time provisions of
 37 CFR
 1.515(c) . Since the examination process (for reexaminations ordered
 under 35 U.S.C.
 304 or under 35 U.S.C. 257 ) is intended to be
 essentially ex parte , the third party requesting reexamination can
 anticipate that requests for an extension of time to file a petition under
 37 CFR
 1.515(c) will be granted only in extraordinary situations.
 

 ¶ 22.04.01 Extension of Time in Reexamination

 Extensions of time under 
 37 CFR 1.136(a) 
 will not be
 permitted in these proceedings because the provisions of 37 CFR 1.136 apply only to
 “an applicant” and not to parties in a reexamination proceeding. Additionally, 
 35 U.S.C. 305 
 requires that reexamination proceedings “will be conducted with special dispatch”
 (
 37 CFR 1.550(a) ). Extensions of time in ex parte reexamination proceedings are provided for in 37 CFR 1.550(c) . 
 

 
 VII. FINAL ACTION — TIME FOR RESPONSE In any ex parte reexamination proceeding, including
 third party requested reexaminations and patent owner requested or Director ordered
 reexaminations, the filing of a timely first response to a final rejection having a
 shortened statutory period for response is construed as including a request to extend
 the shortened statutory period for an additional two months, but in no case may the
 period for response exceed six months from the date of the final action. Even if
 previous extensions have been granted, the primary examiner is authorized to grant the
 request for extension of time which is implicit in the filing of a timely first response
 to a final rejection. The filing of any timely first response to a final rejection will
 be construed as including a request to extend the shortened statutory period for an
 additional two months, even if the response is informal and/or not signed. An object of
 this practice is to obviate the necessity for appeal merely to gain time to consider the
 examiner’s position in reply to a response timely filed after final rejection.
 Accordingly, the shortened statutory period for response to a final rejection to which a
 proposed first response has been received will be extended two months. Note that the
 Office policy of construing a response after final as inherently including a request for
 a two-month extension of time applies only to the first response
 to the final rejection. This automatic two-month extension of time does
 not apply once the notice of appeal has been filed. In that
 instance, the patent owner will be notified that an appeal brief is due two months from
 the date of the notice of appeal to avoid dismissal of the appeal, and extensions of
 time are governed by 37 CFR 1.550(c) .
 

 The patent owner is entitled to know the examiner’s ruling on a timely
 response filed after final rejection before being required to file a notice of appeal.
 Notification of the examiner’s ruling should reach the patent owner with sufficient time
 for the patent owner to consider the ruling and act on it.
 

 The present after final practice of providing an
 automatic two-month extension for filing a response to a final Office action is in
 conformance with the minimum reply period provisions of the Patent Law Treaty (PLT). For
 this reason, additional “no cause” extensions of time for filing a response to a final
 Office action in patent owner requested or Director ordered reexaminations are not
 available. Any extensions of time for more than two months from the time for response
 set in the final rejection must provide a showing of sufficient cause in accordance with
 37 CFR
 1.550(c)(3) . See subsection VI above.
 

 In those situations where the advisory action cannot be mailed in
 sufficient time for the patent owner to consider the examiner’s position with respect to
 the amendment after final rejection (or other patent owner paper) and act on it before
 termination of the prosecution of the proceeding, the granting of additional time to
 complete the response to the final rejection or to take other appropriate action would
 be appropriate. See Theodore Groz & Sohne & Ernst Bechert Nadelfabrik
 KG v. Quigg, 10 USPQ2d 1787 (D.D.C. 1988). The additional time should be
 granted by the examiner, and the time granted should be set forth in the advisory Office
 action. The advisory action form, Ex Parte Reexamination Advisory
 Action Before the Filing of an Appeal Brief (PTOL-467), states that “THE PERIOD FOR
 RESPONSE IS EXTENDED TO RUN ___ MONTHS FROM THE MAILING DATE OF THE FINAL REJECTION.”
 The blank before “MONTHS” should be filled in with an integer (2, 3, 4, 5, or 6);
 fractional months should not be indicated. In no case can the period for response to the
 final rejection be extended to exceed six months from the mailing date of the final
 rejection. An appropriate response (e.g., a second or subsequent amendment or a notice
 of appeal) must be filed within the extended period for response. If the patent owner
 elects to file a second or subsequent amendment, it must place the reexamination in
 condition for allowance. If the amendment does not place the reexamination in condition
 for allowance, the prosecution of the reexamination proceeding will stand terminated
 under 37 CFR
 1.550(d) unless an appropriate notice of appeal was filed before
 the expiration of the response period.
 

 VIII. EXTENSIONS OF TIME TO SUBMIT AFFIDAVITS OR DECLARATIONS AFTER FINAL
 REJECTION Frequently, patent owners request an extension of time, stating as a
 reason therefor that more time is needed in which to submit an affidavit or declaration.
 When such a request is filed after final rejection, the granting of the request for
 extension of time is without prejudice to the right of the examiner to question why the
 affidavit or declaration is now necessary and why it was not earlier presented. See
 37 CFR
 1.116(e) . If the patent owner’s showing is insufficient, the
 examiner may deny entry of the affidavit, notwithstanding the previous grant of an
 extension of time to submit it. The grant of an extension of time in these circumstances
 serves merely to keep the prosecution of the proceeding from becoming terminated while
 allowing the patent owner the opportunity to present the affidavit or to take other
 appropriate action. Moreover, prosecution of the reexamination to save it from
 termination must include such timely, complete and proper action as required by
 37 CFR
 1.113 . The admission of the affidavit or declaration for purposes
 other than allowance of the claims, or the refusal to admit the affidavit or
 declaration, and any proceedings relative thereto, shall not operate to save the
 prosecution of the proceeding from termination.
 

 Implicit in the above practice is the fact that affidavits or
 declarations submitted after final rejection are subject to the same treatment as
 amendments submitted after final rejection. See In re Affidavit Filed After
 Final Rejection, 152 USPQ 292, 1966 C.D. 53 (Comm’r Pat. 1966).
 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 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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 03/09/2026 20:50:44