MPEP § 2284 — MPEP § 2284
Current through: 2022-07-01

2284-Copending Ex Parte Reexamination and Interference Proceedings 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2284 
 

 
 
 
 
 
 2284 Copending Ex Parte Reexamination and
 Interference Proceedings [R-10.2019]
 

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

 
 (a) In an ex parte reexamination proceeding before the Office, the patent owner must
 inform the Office of any prior or concurrent proceedings in which the patent is or
 was involved such as interferences, reissues, ex parte reexaminations, inter partes reexaminations, or litigation and the results of such proceedings. See
 §
 1.985 for notification of prior or concurrent proceedings in
 an inter partes reexamination proceeding.
 

 
 *****

 
 (e) If a patent in the process of ex parte 
 reexamination is or becomes involved in an interference, the Director may suspend
 the reexamination or the interference. The Director will not consider a request to
 suspend an interference unless a motion ( § 41.121(a)(3) of this title)
 to suspend the interference has been presented to, and denied by, an
 administrative patent judge, and the request is filed within ten (10) days of a
 decision by an administrative patent judge denying the motion for suspension or
 such other time as the administrative patent judge may set. For concurrent
 inter partes reexamination and interference of a patent, see
 § 1.993 .
 

 
 

 
 37 CFR 41.8 Mandatory notices. 

 
 (a) In an appeal brief ( §§ 41.37 , 41.67 , or
 41.68 ) or at the initiation of a contested case
 ( §
 41.101 ), and within 20 days of any change during the
 proceeding, a party must identify:
 
 (1) Its real party-in-interest, and

 (2) Each judicial or administrative proceeding that could
 affect, or be affected by, the Board proceeding.
 

 
 

 (b) For contested cases, a party seeking judicial review of a Board
 proceeding must file a notice with the Board of the judicial review within 20 days
 of the filing of the complaint or the notice of appeal. The notice to the Board
 must include a copy of the complaint or notice of appeal. See also
 §§
 1.301 to 1.304 of this title.
 

 
 

 
 37 CFR 41.102 Completion of examination. 

 Before a contested case is initiated, except as the Board may
 otherwise authorize, for each involved application and patent:
 

 
 (a) Examination or reexamination must be completed, and

 (b) There must be at least one claim that:
 
 (1) Is patentable but for a judgment in the contested case,
 and
 

 (2) Would be involved in the contested case.

 
 

 
 

 
 37 CFR 41.103 Jurisdiction over involved files. 

 The Board acquires jurisdiction over any involved file when the Board
 initiates a contested case. Other proceedings for the involved file within the Office
 are suspended except as the Board may order.
 

 

 A patent being reexamined in an ex parte reexamination
 proceeding may be involved in an interference proceeding with at least one application,
 where the patent and the application are claiming the same patentable invention, and at
 least one of the application’s claims to that invention are patentable to the applicant.
 See MPEP Chapter
 2300 .
 

 The general policy of the Office is that a reexamination proceeding will
 not be delayed, or stayed, because of an interference or the possibility of an
 interference. The reason for this policy is the requirement of 35 U.S.C. 305 that
 all reexamination proceedings be conducted with “special dispatch” within the Office. In
 general, the Office will follow the practice of making the required and necessary decisions
 in the reexamination proceeding and, at the same time, going forward with the interference
 to the extent desirable. It is noted that 37 CFR 41.103 provides the Board with
 the flexibility to tailor a specific solution to occurrences where reexamination and
 interference proceedings for the same patent are copending, as such occurrences may arise.
 Decisions in the interference will take into consideration the status of the reexamination
 proceeding and what is occurring therein. The decision as to what actions are taken in the
 interference will, in general, be taken in accordance with normal interference
 practice.
 

 Although a patent being reexamined via a reexamination
 proceeding may become involved in an interference proceeding, the reexamination proceeding
 itself can never be involved in an interference proceeding. See 35 U.S.C. 135 
 subsection (a) which states that “[w]henever an application is made for a patent which, in
 the opinion of the Director, would interfere with any pending
 application, or with any unexpired patent, an
 interference may be declared” (emphasis added). The reexamination proceeding is neither an
 application nor a patent.
 

 I. ATTEMPTING TO PROVOKE AN INTERFERENCE WITH A PATENT INVOLVED IN A REEXAMINATION
 PROCEEDING When an amendment is filed in a pending application seeking to provoke
 an interference with a patent involved in a reexamination proceeding, the applicant must
 comply with 37 CFR
 41.202(a) , including identifying the patent under reexamination
 with which interference is sought. The corresponding application claims may be rejected
 on any applicable ground including, if appropriate, the prior art cited in the
 reexamination proceeding. See MPEP Chapter 2300 . Prosecution of the
 application should continue as far as possible. If the application is placed in
 condition for allowance and still contains claims which interfere with claims of the
 patent under reexamination, then an interference should ordinarily be proposed between
 the application and the patent. The examiner must notify the Office of Patent Legal
 Administration (OPLA) before proposing the interference, and such an interference may
 not be proposed unless authorized by OPLA.
 

 If the interference is not authorized (e.g., resolution of an issue in
 the reexamination proceeding is necessary to the interference), further action on the
 application should be suspended until the certificate on the reexamination proceeding
 has been issued and published.
 

 Once the reexamination certificate has issued and published, the
 examiner should review the certificate to see if it makes any changes in the patent
 claims and then evaluate whether the patent still contains claims which interfere with
 claims of the application. If the claims do interfere, then the examiner should propose
 an interference. See MPEP
 Chapter 2300 .
 

 II. MOTION/REQUEST TO SUSPEND INTERFERENCE PENDING THE OUTCOME OF A REEXAMINATION
 PROCEEDING A miscellaneous motion under 37 CFR 41.121(a)(3) to suspend an
 interference pending the outcome of a reexamination proceeding may be made at any time
 during the interference by any party thereto. See 37 CFR 41.123(b) for the procedure.
 The motion must be presented to the administrative patent judge who will decide the
 motion based on the particular fact situation. However, suspension is not favored.
 Normally, no consideration will be given such a motion unless and until a reexamination
 order is issued, nor will suspension of the interference normally be permitted until
 after any motions have been disposed of in the interference proceeding. If the motion
 under 37 CFR
 41.121(a)(3) is denied by the administrative patent judge, a
 request to stay the interference may be made to the Director of the USPTO under
 37 CFR
 1.565(e) .
 

 A request to stay an interference under 37 CFR 1.565(e) 
 will be decided by the Chief Administrative Patent Judge of the Board.
 

 III. REQUEST FOR REEXAMINATION FILED DURING INTERFERENCE In view of the provisions of 37 CFR 1.510(a) , “[a]ny person may,
 at any time during the period of enforceability of a patent” file a request for
 reexamination. Under 37 CFR 41.8(a) , the patent owner must notify the Board that a
 request for reexamination was filed, within 20 days of receiving notice of the request
 having been filed. Where it is the patent owner that files the request for
 reexamination, the 20 days run from the filing date of the request, since that is when
 the patent owner “received the notice” of filing the request. Such requests for
 reexamination will be processed in the normal manner. No delay, or stay, of the
 reexamination will occur because the requester is not a party to the interference. If
 the examiner orders reexamination pursuant to 37 CFR 1.525 and subsequently
 rejects a patent claim corresponding to a count in the interference, the attention of
 the Board shall be called thereto.
 

 IV. INTERFERENCE DECLARED WHILE REEXAMINATION PROCEEDING IS ONGOING Under 37 CFR 1.565 , the patent owner in a reexamination proceeding
 before the Office is required to notify the Office when the patent being
 reexamined becomes involved in an interference. To do so, the patent owner must file in
 the reexamination proceeding a paper giving notice of the interference proceeding. The
 requirements of 37 CFR
 1.565 , and of 37 CFR 41.8(a) (see the preceding
 paragraph), are designed to keep the Office and the appropriate parties informed of
 activity which is relevant to reexamination and interference proceedings and, to the
 extent possible, to eliminate procedural surprise. 
 

 V. PETITION TO STAY REEXAMINATION PROCEEDING BECAUSE OF INTERFERENCE Any petition to stay a reexamination proceeding, because of an
 interference, which is filed prior to the determination ( 37 CFR 1.515 ) and
 order to reexamine ( 37
 CFR 1.525 ) will not be considered, but will be returned to the
 party submitting the same. The decision returning such a premature petition will be made
 of record in the reexamination file, but no copy of the petition will be retained by the
 Office. A petition to stay the reexamination proceeding because of the interference may
 be filed by the patent owner as a part of the patent owner’s statement under
 37 CFR
 1.530 or subsequent thereto. If a party to the interference, other
 than the patent owner, is a requester of the reexamination, that party may petition to
 stay the reexamination proceeding as a part of a reply pursuant to 37 CFR 1.535 . If
 the other party to the interference is not the requester, any petition by that party is
 improper under 37 CFR
 1.550(g) and will not be considered. Any such improper petitions
 will be returned to the party submitting the same. Premature petitions to stay the
 reexamination proceedings, i.e., those filed prior to the determination
 ( 37 CFR
 1.515 ) and order to reexamine ( 37 CFR 1.525 ), will be returned by
 the Central Reexamination Unit (CRU) or Technology Center (TC) Director as premature.
 Petitions to stay filed subsequent to the date of the order for reexamination will be
 referred to OPLA for decision. All decisions on the merits of petitions to stay a
 reexamination proceeding because of an interference will be made in OPLA.
 

 VI. ACTION IN INTERFERENCE FOLLOWING REEXAMINATION If one or more claims of a patent which is involved in an interference
 are canceled or amended by the issuance and publication of a reexamination certificate,
 the Board must be promptly notified.
 

 Upon issuance and publication of the reexamination certificate, the
 patent owner must notify the administrative patent judge thereof.
 

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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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 03/09/2026 20:49:35