MPEP § 2268 — MPEP § 2268
Current through: 2022-07-01

2268-Petition for Entry of Late Papers for Revival of Reexamination Proceeding 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2268 
 

 
 
 
 
 
 2268 Petition for Entry of Late Papers for Revival of Reexamination
 Proceeding [R-01.2024]
 

 
 35 U.S.C. 27 
 Revival of applications; reinstatement of reexamination proceedings. 

 The Director may establish procedures, including the
 requirement for payment of the fee specified in section 41(a)(7) , to revive an
 unintentionally abandoned application for patent, accept an unintentionally delayed
 payment of the fee for issuing each patent, or accept an unintentionally delayed
 response by the patent owner in a reexamination proceeding, upon petition by the
 applicant for patent or patent owner.
 

 

 
 35 U.S.C. 41 
 Patent fees; patent and trademark search systems. 

 
 (a) GENERAL FEES. — The Director shall charge the following fees:
 
 *****

 (7) REVIVAL FEES. — On filing each petition for the revival of
 an abandoned application for a patent, for the delayed payment of the fee
 for issuing each patent, for the delayed response by the patent owner in any
 reexamination proceeding, for the delayed payment of the fee for maintaining
 a patent in force, for the delayed submission of a priority or benefit
 claim, or for the extension of the 12-month period for filing a subsequent
 application, $1,700. The Director may refund any part of the fee specified
 in this paragraph, in exceptional circumstances as determined by the
 Director.
 

 
 

 
 *****

 

 
 35 U.S.C. 133 
 Time for prosecuting application. 

 Upon failure of the applicant to prosecute the application within six
 months after any action therein, of which notice has been given or mailed to the
 applicant, or within such shorter time, not less than thirty days, as fixed by the
 Director in such action, the application shall be regarded as abandoned by the parties
 thereto.
 

 

 
 37 CFR 1.137 Revival of abandoned application, or terminated or limited reexamination
 prosecution. 

 
 (a) Revival on the basis of unintentional
 delay. If the delay in reply by applicant or patent owner was
 unintentional, a petition may be filed pursuant to this section to revive an
 abandoned application or a reexamination prosecution terminated under
 §
 1.550(d) or § 1.957(b) or limited under
 §
 1.957(c) . 
 

 (b) Petition requirements. A
 grantable petition pursuant to this section must be accompanied by:
 
 (1) The reply required to the outstanding Office
 action or notice, unless previously filed;
 

 (2) The petition fee as set forth in
 § 1.17(m) ;
 

 (3) Any terminal disclaimer (and fee as set forth
 in §
 1.20(d) ) required pursuant to paragraph (d) of this
 section; and
 

 
 
 (4) A statement that the entire delay in filing
 the required reply from the due date for the reply until the filing of a
 grantable petition pursuant to this section was unintentional. The Director
 may require additional information where there is a question whether the
 delay was unintentional.
 

 
 

 
 *****

 
 (e) Request for reconsideration. Any request for reconsideration or review of a decision refusing to
 revive an abandoned application, or a terminated or limited reexamination
 prosecution, upon petition filed pursuant to this section, to be considered
 timely, must be filed within two months of the decision refusing to revive or
 within such time as set in the decision. Unless a decision indicates otherwise,
 this time period may be extended under:
 
 (1) The provisions of § 1.136 for an abandoned
 application;
 

 (2) The provisions of § 1.550(c) for a
 terminated ex parte reexamination prosecution, where the ex parte reexamination was filed under § 1.510 ; or
 

 (3) The provisions of § 1.956 for a terminated inter partes reexamination prosecution or an inter partes reexamination limited as to further prosecution, where the inter partes reexamination was filed under § 1.913 .
 

 
 

 
 *****

 

 Pursuant to 37 CFR 1.550(d) , the prosecution of an
 ex parte reexamination proceeding is terminated if the patent owner
 fails to file a timely and appropriate response to any Office action or any written
 statement of an interview required under 37 CFR 1.560(b) . An ex
 parte reexamination prosecution terminated under 37 CFR 1.550(d) can
 be revived if the delay in response by the patent owner (or the failure to timely file the
 interview statement) was unintentional in accordance with 37 CFR 1.137 .
 

 The failure to timely file a statement pursuant to 37 CFR 1.530 or a
 reply pursuant to 37 CFR
 1.535 , however, would not (under ordinary circumstances) constitute
 adequate basis to justify a showing of unintentional delay regardless of the reasons for
 the failure, since failure to file a statement or reply does not result in a “termination”
 of the reexamination prosecution, to which 37 CFR 1.137 is directed.
 

 All petitions in reexamination proceedings to accept late papers and to
 revive the proceedings will be decided in the Office of Patent Legal Administration. 
 

 I. PETITION BASED ON UNAVOIDABLE DELAY IS NO LONGER AVAILABLE 

 37 CFR
 1.137 was revised to implement the changes in the Patent Law
 Treaties Implementation Act of 2012 (PLTIA) to eliminate revival of an abandoned
 application and reexamination prosecution terminated under § 1.550(d) under
 the ‘‘unavoidable’’ standard, and to provide for the revival of abandoned applications
 and the acceptance of delayed responses in reexamination by patent owners on the basis
 of unintentional delay. Specifically, section 201(b) of the PLTIA added new
 35 U.S.C.
 27 , which provides that the Director may establish procedures to
 revive an unintentionally abandoned application for patent, accept an unintentionally
 delayed payment of the fee for issuing a patent, or accept an unintentionally delayed
 response by the patent owner in a reexamination proceeding, upon petition by the
 applicant for patent or patent owner. Accordingly, 37 CFR 1.137(a) was amended to
 eliminate the provisions pertaining to petitions on the basis of unavoidable delay.
 These changes were effective on December 18, 2013, and apply to all any patent
 application filed before, on, or after December 18, 2013, to any patent resulting from
 an application filed before, on, or after December 18, 2013, to any reexamination
 proceeding filed before, on, or after December 18, 2013, and to any reexamination
 proceeding resulting from a supplemental examination proceeding filed before, on, or
 after December 18, 2013.
 

 II. PETITION BASED ON UNINTENTIONAL DELAY As discussed in paragraph I above, section 201(b) of the
 PLTIA added new 35 U.S.C. 27 , which provides that
 the Director may establish procedures to accept an unintentionally delayed response by
 the patent owner in a reexamination proceeding, upon petition by the patent owner. The
 patent laws formerly provided for revival of an unintentionally abandoned application
 only in the patent fee provisions of 35 U.S.C. 41(a)(7) . See Public Law
 97–247, section 3(a), 96 Stat. 317–18 (1982). The unintentional delay fee provisions of
 35 U.S.C.
 41(a)(7) were imported into, and were applicable to, all
 ex parte reexamination proceedings by section 4605 of the American
 Inventors Protection Act of 1999. The unintentional delay provisions of
 35 U.S.C.
 41(a)(7) became effective in reexamination proceedings on November
 29, 2000. However, this statutory structure raised questions concerning the Office’s
 authority to revive an unintentionally abandoned application (without a showing of
 unavoidable delay) in certain situations. See e.g., Aristocrat Techs. Australia
 Pty Ltd. v. Int’l Game Tech., 543 F.3d 657, 88 USPQ2d 1458 (Fed. Cir.
 2008).
 

 37 CFR
 1.137(a) , as amended in the final rule to implement the PLTIA,
 provides that if the delay in reply by patent owner was unintentional, a petition may be
 filed pursuant to 37
 CFR 1.137 to revive a reexamination prosecution terminated under
 37 CFR
 1.550(d) . 37 CFR 1.137(b) states the petition
 requirements. Specifically, for ex parte reexamination proceedings,
 37 CFR
 1.137(b) provides that a grantable petition pursuant to
 37 CFR
 1.137 must be accompanied by: (1) The reply required to the
 outstanding Office action or notice, unless previously filed; (2) the petition fee as
 set forth in 37 CFR 1.17(m) ; and (3) a statement that the entire delay in
 filing the required reply from the due date for the reply until the filing of a
 grantable petition pursuant to this section was unintentional. 37 CFR 1.137 
 continues to provide that the Director may require additional information where there is
 a question whether the delay was unintentional. See MPEP § 711.03(c) ,
 subsection II for more information about petitions under 37 CFR 1.137 . 
 

 III. RENEWED PETITION Reconsideration may be requested of a decision dismissing or denying a
 petition under 37 CFR
 1.137 to revive a terminated reexamination prosecution. The
 request for reconsideration must be submitted within two months from the mail date of
 the decision for which reconsideration is requested. An extension of time may be
 requested only under 37 CFR 1.550(c) ; extensions of time under 37 CFR 1.136 are
 not available in reexamination proceedings. The extension of time provisions of
 37 CFR
 1.550(c) also apply to any request for an extension filed in a
 reexamination proceeding ordered under 35 U.S.C. 257 as a result of a
 supplemental examination proceeding. Any reconsideration request which is submitted
 should include a cover letter entitled “Renewed Petition under 37 CFR 1.137 ”.
 

 IV. FURTHER DISCUSSION OF THE PETITION REQUIREMENTS See also MPEP § 711.03(c) for a detailed discussion of the
 requirements of petitions filed under 37 CFR 1.137 .
 

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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