MPEP § 2281 — MPEP § 2281
Current through: 2022-07-01

2281-Interviews in Ex Parte Reexamination Proceedings 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2281 
 

 
 
 
 
 
 2281 Interviews in Ex Parte Reexamination
 Proceedings [R-07.2015]
 

 
 37 CFR 1.560 Interviews in ex parte reexamination proceedings. 

 
 (a) Interviews in ex parte reexamination
 proceedings pending before the Office between examiners and the owners of such
 patents or their attorneys or agents of record must be conducted in the Office at
 such times, within Office hours, as the respective examiners may designate.
 Interviews will not be permitted at any other time or place without the authority
 of the Director. Interviews for the discussion of the patentability of claims in
 patents involved in ex parte reexamination proceedings will not
 be conducted prior to the first official action. Interviews should be arranged in
 advance. Requests that reexamination requesters participate in interviews with
 examiners will not be granted.
 

 (b) In every instance of an interview with an examiner in an
 ex parte reexamination proceeding, a complete written
 statement of the reasons presented at the interview as warranting favorable action
 must be filed by the patent owner. An interview does not remove the necessity for
 response to Office actions as specified in § 1.111 . Patent owner’s
 response to an outstanding Office action after the interview does not remove the
 necessity for filing the written statement. The written statement must be filed as
 a separate part of a response to an Office action outstanding at the time of the
 interview, or as a separate paper within one month from the date of the interview,
 whichever is later.
 

 
 

 Interviews are permitted in an ex parte reexamination
 proceeding. In the ex parte proceeding, only ex parte 
 interviews between the examiner and patent owner and/or the patent owner’s representative
 are permitted. Requests by third party requesters to participate in interviews or to attend
 interviews will not be granted. However, it is permitted for a Paralegal or Legal
 Instruments Examiner (or support staff in general) to telephone a requester to discuss a
 request that fails to comply with the filing date requirements for filing a reexamination
 request, because there is no reexamination proceeding yet.
 

 In person interviews between examiner and the owners of patents undergoing
 ex parte reexamination or their attorneys or agents must be had in
 the Office at its Alexandria location or one of the Office’s satellite locations at such
 times, within Office hours when building security permits public admission, as the
 respective examiners may designate. Telephonic and videoconferencing interviews are
 permitted in ex parte reexamination proceedings according to the
 guidelines set forth in MPEP
 § 713.01 for ex parte prosecution of
 applications. See MPEP §
 713.01 for more information on the general policies on how an
 interview may be conducted. 
 

 Where a panel review has been conducted for an action in a reexamination
 proceeding, every effort will be made to have the panel members present at an interview
 requested by the patent owner to discuss that action. An interview initiated by the
 examiner to obtain an amendment to render the reexamined claims patentable might not have
 the panel members participating in the interview.
 

 Interviews for the discussion of the patentability of claims in patents
 involved in reexamination proceedings will ordinarily not be had prior to the first Office
 action following the order for reexamination and any submissions pursuant to
 37 CFR
 1.530 and 1.535 . Such interviews will be
 permitted prior to the first Office action only where the examiner
 initiates the interview for the purpose of providing an amendment which will make the
 claims patentable and the patent owner’s role is passive. The patent owner’s role (or
 patent owner’s attorney or agent) is limited to agreeing to the change or not. The patent
 owner should not otherwise discuss the case on the merits during this interview.
 

 The patent owner’s questions on purely procedural matters may be answered
 by the examiner at any time during the proceeding.
 

 Where any party who is not the patent owner requests information as to the
 merits of a reexamination proceeding, the examiner will not conduct
 an interview with that party to provide the information. Only questions on strictly
 procedural matters, i.e., not directed to any specific reexamination proceeding, may be
 discussed with that party. The party who is not the patent owner should be referred by the
 examiner to the Central Reexamination Unit (CRU) Supervisory Patent Reexamination
 Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS) to address
 any such questions on strictly procedural matters. See MPEP § 2212.01 . The
 following guidelines are to be followed in determining whether a question is strictly
 directed to a procedural matter: (A) any information which a person could obtain by reading
 the file (which is open to the public) is procedural, and it may be discussed only to the
 extent of the information provided in the public file; (B) a matter not available from a
 reading of the file is considered as relating to the merits of the proceeding, and may not
 be discussed. Thus, for example, a question relating to when the next Office action will be
 rendered is improper as it relates to the merits of the proceeding (because this
 information cannot be obtained from a reading of the file). Such a question by a party who
 is not the patent owner should not be responded to by the examiner or any other official.
 As another example, a question regarding how the examiner is interpreting a claim
 limitation relates to the merits of the proceeding, and may not be discussed. If the
 examiner has set forth an interpretation of a claim limitation in an Office action, the
 examiner may only quote the Office action. The interpretation may not be further discussed,
 because any further information cannot be obtained from a reading of the file.
 

 The examiner must complete an Ex Parte Interview
 Summary form PTOL-474 for each interview held where a matter of substance has been
 discussed (see MPEP §
 713.04 ). If practicable, a copy of the form should be given to
 the patent owner at the conclusion of the interview. The original should be made of record
 in the reexamination file, and a copy should be mailed to any third party requester and the
 patent owner, if not already provided with a copy.
 

 The general procedure for conducting interviews and recording same is
 described at MPEP §
 713.01 - § 713.04 . 
 

 Pursuant to 35 U.S.C. 305 , however, “[a]ll
 reexamination proceedings … will be conducted with special dispatch within the Office.”
 Accordingly, there are additional procedural requirements to facilitate the statutory
 mandate for “special dispatch.”
 

 In the case where the patent owner desires to initiate an interview, the
 patent owner should initially contact the examiner in charge of the proceeding to indicate
 what issues are sought to be discussed, and to determine if an interview will be granted.
 If the examiner agrees to grant the interview, the patent owner must file, at least three
 (3) working days prior to the interview, an informal written statement of the issues to be
 discussed at the interview, and an informal copy of any proposed claims to be discussed,
 unless examiner waives this requirement. The copy of these materials is to be submitted by
 facsimile transmission (FAX) directly to the examiner or hand-carried to the examiner so as
 to avoid the possibility of delay in matching the materials with the file. The informal
 copies that are considered by the examiner will be made of record in the reexamination
 proceeding as an attachment to the Interview Summary form PTOL-474 completed by the
 examiner after the interview. These preliminary steps are for the purpose of providing
 structure to the interview so as to facilitate the statutory mandate for special
 dispatch.
 

 The duration of the interview will not exceed one hour, unless the patent
 owner files a petition under 37 CFR 1.182 showing sufficient cause
 where more time is needed. In a reexamination proceeding, the invention should be well
 defined after the patent has issued, and it is simply a matter of defining the claims over
 art applied, to the extent such is deemed necessary. An hour of time in a structured
 planned interview should be sufficient to accomplish this, and in those rare instances
 where it is not, a patent owner may show cause to extend the time. During the interview,
 the examiner is always free to extend the duration of the interview to discuss issues that
 the examiner deems appropriate for (further) discussion. Such an extension of the duration
 of the interview is permitted at the examiner’s sole discretion.
 

 Only one interview may be requested after an Office action and prior to
 filing the response to that action, absent a showing of good cause to conduct a second
 interview during this period. The showing of good cause will explain why the information to
 be presented could not have been presented sooner, given the statutory requirement for
 "special dispatch" in reexamination. It is to be noted that a party requesting a second
 interview after final rejection must provide an advance showing that would "convince" a
 reasonable examiner that "it will expedite the issues for appeal or disposal of the
 application." See MPEP §
 713.09 .
 

 PATENT OWNER’S STATEMENT OF THE INTERVIEW In every instance of an interview with the examiner, a patent owner’s
 statement of the interview, including a complete written statement of the reasons
 presented at the interview as warranting favorable action, must be filed by
 the patent owner. 37
 CFR 1.560(b) . The written statement must be filed either as a
 separate paper within one month after the date of the interview, or as a separate part
 of a response to an outstanding Office action, whichever is later. 
 

 The requirement for a patent owner’s statement of the interview cannot
 be waived by the examiner. It should be noted that, pursuant to 37 CFR 1.550(d) ,
 the failure to file a written statement of an interview as required under
 37 CFR
 1.560(b) will result in the termination of the reexamination
 prosecution (in the same way that failure to timely respond to an Office action results
 in the termination of the reexamination prosecution).
 

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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 20:49:35