MPEP § 2222 — MPEP § 2222
Current through: 2022-07-01

2222-Address of Patent Owner 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2222 
 

 
 
 
 
 
 2222 Address of Patent Owner [R-01.2024]

 
 37 CFR 1.33 Correspondence respecting patent applications, reexamination proceedings, and
 other proceedings. 

 *****

 
 (c) All notices, official letters, and other communications for the
 patent owner or owners in a reexamination or supplemental examination proceeding
 will be directed to the correspondence address in the patent file. Amendments
 filed in a reexamination proceeding, and other papers filed in a reexamination or
 supplemental examination proceeding, on behalf of the patent owner must be signed
 by the patent owner, or if there is more than one owner by all the owners, or by
 an attorney or agent of record in the patent file, or by a registered attorney or
 agent not of record who acts in a representative capacity under the provisions of
 §
 1.34 . Double correspondence with the patent owner or owners
 and the patent owner’s attorney or agent, or with more than one attorney or agent,
 will not be undertaken.
 

 
 *****

 

 Address of Patent Owner: The correspondence address for the patent to be
 reexamined, or being reexamined is the correct address for all notices, official letters,
 and other communications for patent owners in reexamination proceedings. See
 37 CFR
 1.33(c) . 
 

 Representative of Patent Owner: As a general rule, the attorney-client
 relationship terminates when the purpose for which the attorney was employed is
 accomplished; e.g., the issuance of a patent to the client. However, under
 37 CFR
 11.104 , as under former 37 CFR 10.23(c)(8), a practitioner should not
 fail to timely and adequately inform a client or former client of
 correspondence received from the Office when the correspondence: (i) could have a
 significant effect on a matter pending before the Office, (ii) is received by the
 practitioner on behalf of a client or former client, and (iii) is
 correspondence of which a reasonable practitioner would believe under the circumstances the
 client or former client should be notified. This responsibility of a
 practitioner to a former client is not eliminated by withdrawing as an attorney or agent of
 record. See also 37 CFR
 1.116(d) . The practitioner, if desired, can minimize the need for
 forwarding correspondence concerning issued patents by having the correspondence address
 changed after the patent issues if the correspondence address is the practitioner’s
 address, which frequently is the case where the practitioner is the attorney or agent of
 record.
 

 If the patent owner desires that a different attorney or agent receive
 correspondence, then a new power of attorney must be filed. See MPEP §§ 324 or
 325 for establishing an assignee’s right to take action when
 submitting a power of attorney.
 

 Submissions to the Office to change the correspondence address or power of
 attorney in the record of the patent should be addressed as follows:
 

 Where a request for ex parte reexamination has been
 filed:
 

 Mail Stop Ex Parte 
 Reexam
Attn: Central Reexamination Unit
Commissioner for Patents
P.O. Box 1450 
Alexandria, VA 22313-1450

 Where a request for inter partes reexamination has been
 filed:
 

 Mail Stop Inter Partes 
 Reexam
Attn: Central Reexamination Unit
Commissioner for Patents
P.O. Box 1450 
Alexandria, VA 22313-1450

 Where no request for reexamination has been filed:

 Mail Stop Post Issue
Director of the U.S. Patent and Trademark
 Office
P.O. Box 1450 
Alexandria, VA 22313-1450

 It is strongly recommended that the Mail Stop information be placed in a
 prominent position on the first page of each paper being filed utilizing a sufficiently
 large font size that will direct attention to it.
 

 Sample forms for changing the correspondence address or power of attorney
 for the patent owner and for the third-party requester are set forth below. 
 

 Form PTO/AIA/81B Reexamination or Supplemental Examination – Patent Owner
 Power of Attorney or Revocation of Power of Attorney with a New Power of Attorney and
 Change of Correspondence Address for Reexamination or Supplemental Examination and
 Patent
 

 

 Form PTO/SB/81C Reexamination – Third Party Requester Power
 of Attorney or Revocation of Power of Attorney with a New Power of Attorney and Change of
 Correspondence Address 
 

 

 

 

 

 

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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 20:50:43