MPEP § 2250 — MPEP § 2250
Current through: 2022-07-01

2250-Amendment by Patent Owner 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Patent Laws, Regulations, Policies & Procedures 

 
 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2250 
 

 
 
 
 
 
 2250 Amendment by Patent Owner [R-01.2024]

 
 37 CFR 1.121 Manner of making amendments in application. 

 *****

 
 (j) Amendments in reexamination proceedings . Any
 proposed amendment to the description and claims in patents involved in
 reexamination proceedings must be made in accordance with § 1.530 .
 

 
 *****

 

 
 37 CFR 1.530 Statement by patent owner in ex parte reexamination; amendment by patent owner
 in ex parte or inter partes reexamination; inventorship change in ex parte or inter
 partes reexamination. 

 *****

 
 (d) Making amendments in a reexamination proceeding. A proposed
 amendment in an ex parte or an inter partes 
 reexamination proceeding is made by filing a paper directing that proposed
 specified changes be made to the patent specification, including the claims, or to
 the drawings. An amendment paper directing that proposed specified changes be made
 in a reexamination proceeding may be submitted as an accompaniment to a request
 filed by the patent owner in accordance with § 1.510(e) , as part of a
 patent owner statement in accordance with paragraph (b) of this section, or, where
 permitted, during the prosecution of the reexamination proceeding pursuant to
 § 1.550(a) or § 1.937 .
 
 (1) Specification other than the claims, “Large Tables” (§
 1.58(c) ), a “Computer Program Listing Appendix” (§
 1.96(c) ), a “Sequence Listing” (§
 1.821(c) ), or a “Sequence Listing XML (§
 1.831(a) ). 
 (i) Changes to the specification, other
 than to the claims, “Large Tables” (§ 1.58(c) ), a “Computer Program Listing Appendix”
 (§ 1.96(c) ), a “Sequence Listing” (§
 1.821(c) ), or a “Sequence Listing XML” (§
 1.831(a) ), must be
 made by submission of the entire text of an added or rewritten
 paragraph, including markings pursuant to paragraph (f) of this
 section, except that an entire paragraph may be deleted by a statement
 deleting the paragraph, without presentation of the text of the
 paragraph. The precise point in the specification where any added or
 rewritten paragraph is located must be identified.
 

 (ii) Changes to “Large Tables,” a “Computer
 Program Listing Appendix,” a “Sequence Listing,” or a “Sequence
 Listing XML” must be made in accordance with § 1.58(g) for “Large Tables,” § 
 1.96(c)(5) for a “Computer Program Listing
 Appendix,” § 1.825 for a “Sequence
 Listing,” or § 1.835 for a
 “Sequence Listing XML.”
 

 
 

 (2) Claims. An amendment paper must include the entire text
 of each patent claim which is being proposed to be changed by such amendment
 paper and of each new claim being proposed to be added by such amendment
 paper. For any claim changed by the amendment paper, a parenthetical
 expression “amended,” “twice amended,” etc. , should
 follow the claim number. Each patent claim proposed to be changed and each
 proposed added claim must include markings pursuant to paragraph (f) of this
 section, except that a patent claim or proposed added claim should be
 canceled by a statement canceling the claim, without presentation of the
 text of the claim.
 

 (3) Drawings. Any change to the patent drawings must be
 submitted as a sketch on a separate paper showing the proposed changes in
 red for approval by the examiner. Upon approval of the changes by the
 examiner, only new sheets of drawings including the changes and in
 compliance with § 1.84 must be filed.
 Amended figures must be identified as “Amended,” and any added figure must
 be identified as “New.” In the event a figure is canceled, the figure must
 be surrounded by brackets and identified as “Canceled.”
 

 (4) The formal requirements for papers making up the
 reexamination proceeding other than those set forth in this section are set
 out in §
 1.52 .
 

 
 

 (e) Status of claims and support for claim changes. Whenever there
 is an amendment to the claims pursuant to paragraph (d) of this section, there
 must also be supplied, on pages separate from the pages containing the changes,
 the status ( i.e., pending or canceled), as of the date of the
 amendment, of all patent claims and of all added claims, and an explanation of the
 support in the disclosure of the patent for the changes to the claims made by the
 amendment paper.
 

 (f) Changes shown by markings. Any changes relative to the patent
 being reexamined which are made to the specification, including the claims, must
 include the following markings:
 
 (1) The matter to be omitted by the reexamination proceeding
 must be enclosed in brackets; and
 

 (2) The matter to be added by the reexamination proceeding must
 be underlined.
 

 
 

 (g) Numbering of patent claims preserved. Patent claims may not be
 renumbered. The numbering of any claims added in the reexamination proceeding must
 follow the number of the highest numbered patent claim.
 

 (h) Amendment of disclosure may be required. The disclosure must be
 amended, when required by the Office, to correct inaccuracies of description and
 definition, and to secure substantial correspondence between the claims, the
 remainder of the specification, and the drawings.
 

 (i) Amendments made relative to patent. All amendments must be made
 relative to the patent specification, including the claims, and drawings, which
 are in effect as of the date of filing the request for reexamination.
 

 (j) No enlargement of claim scope. No amendment may enlarge the
 scope of the claims of the patent or introduce new matter. No amendment may be
 proposed for entry in an expired patent. Moreover, no amendment, other than the
 cancellation of claims, will be incorporated into the patent by a certificate
 issued after the expiration of the patent.
 

 (k) Amendments not effective until certificate. Although the Office
 actions will treat proposed amendments as though they have been entered, the
 proposed amendments will not be effective until the reexamination certificate is
 issued and published.
 

 
 *****

 

 
 37 CFR 1.52 Language, paper, writing, margins, read-only optical disc
 specifications. 

 
 (a) Papers that are to become a part of the permanent United States Patent
 and Trademark Office records in the file of a patent application, or a
 reexamination or supplemental examination proceeding. 
 (1) All papers, other than drawings, that are submitted on
 paper or by facsimile transmission, and are to become a part of the
 permanent United States Patent and Trademark Office records in the file of a
 patent application or reexamination or supplemental examination proceeding,
 must be on sheets of paper that are the same size, not permanently bound
 together, and: 
 
 (i) Flexible, strong, smooth, non-shiny, durable, and
 white;
 

 (ii) Either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by
 27.9 cm (8 1/2 by 11 inches), with each sheet including a top margin
 of at least 2.0 cm (3/4 inch), a left side margin of at least 2.5 cm
 (1 inch), a right side margin of at least 2.0 cm (3/4 inch), and a
 bottom margin of at least 2.0 cm (3/4 inch);
 

 (iii) Written on only one side in portrait orientation;

 (iv) Plainly and legibly written either by a typewriter or
 machine printer in permanent dark ink or its equivalent; and
 

 (v) Presented in a form having sufficient clarity and
 contrast between the paper and the writing thereon to permit the
 direct reproduction of readily legible copies in any number by use of
 photographic, electrostatic, photo-offset, and microfilming processes
 and electronic capture by use of digital imaging and optical character
 recognition.
 

 
 

 (2) All papers that are submitted on paper or by facsimile
 transmission and are to become a part of the permanent records of the United
 States Patent and Trademark Office should have no holes in the sheets as
 submitted. 
 

 (3) The provisions of this paragraph and paragraph (b) of this
 section do not apply to the pre-printed information on paper forms provided
 by the Office, or to the copy of the patent submitted on paper in double
 column format as the specification in a reissue application or request for
 reexamination.
 

 (4) See §
 1.58 for chemical and mathematical formulae and
 tables, and § 1.84 for drawings.
 
 

 (5) Papers that are submitted electronically to the Office must
 be formatted and transmitted in compliance with the USPTO patent electronic
 filing system requirements. 
 

 
 

 
 
 (b) The application (specification, including the claims, drawings, and the
 inventor's oath or declaration) or reexamination or supplemental examination
 proceeding, any amendments to the application or reexamination proceeding, or
 any corrections to the application, or reexamination or supplemental
 examination proceeding. 
 (1) The application or proceeding and any amendments or
 corrections to the application (including any translation submitted pursuant
 to paragraph (d) of this section) or proceeding, except as provided for in
 §
 1.69 and paragraph (d) of this section, must:
 
 (i) Comply with the requirements of paragraph (a) of this
 section; and
 

 (ii) Be in the English language or be accompanied by a
 translation of the application and a translation of any corrections or
 amendments into the English language together with a statement that
 the translation is accurate.
 

 
 

 (2) The specification (including the abstract and claims) for
 other than reissue applications and reexamination or supplemental
 examination proceedings, and any amendments for applications (including
 reissue applications) and reexamination proceedings to the specification,
 except as provided for in §§ 1.821 through
 1.825 , must have:
 
 (i) Lines that are 1 1/2 or double spaced;

 (ii) Text written in a nonscript type font
 ( e.g., Arial, Times Roman, or Courier,
 preferably a font size of 12) lettering style having capital letters
 which should be at least 0.3175 cm. (0.125 inch) high, but may be no
 smaller than 0.21 cm. (0.08 inch) high ( e.g., a
 font size of 6); and 
 

 (iii) Only a single column of text.

 
 

 (3) The claim or claims must commence on a separate physical
 sheet or electronic page ( § 1.75(h) ).
 

 (4) The abstract must commence on a separate physical sheet or
 electronic page or be submitted as the first page of the patent in a reissue
 application or reexamination or supplemental examination proceeding
 ( §
 1.72(b) ). 
 

 
 

 
 *****

 

 Amendments to the patent (one which has not expired) may be filed by the
 patent owner with the request under 35 U.S.C. 302 . See
 MPEP §
 2221 . Such amendments, however, may not enlarge the scope of a
 claim of the patent or introduce new matter. Amended or new claims which broaden or enlarge
 the scope of a claim of the patent should be rejected under 35 U.S.C. 305 . The
 test for when an amended or “new claim enlarges the scope of an original claim under
 35 U.S.C.
 305 is the same as that under the 2-year limitation for reissue
 applications adding enlarging claims under 35 U.S.C. 251 , last paragraph.”
 In re Freeman, 30 F.3d 1459, 1464, 31 USPQ2d 1444, 1447 (Fed. Cir.
 1994). See MPEP
 § 2258 for a discussion of enlargement of claim scope. For
 handling of new matter, see MPEP § 2270 . Amendments proposed in a reexamination will
 normally be entered and be considered to be entered for purposes of prosecution before the
 Office (if they are timely and comply with the rules); however, the amendments do not
 become effective in the patent until the reexamination certificate under 35 U.S.C. 307 is
 issued and published.
 

 No amendment will be permitted where the certificate issues after
 expiration of the patent. See 37 CFR 1.530(d)(3) . The patent
 expiration date for a utility patent, for example, is determined by taking into account the
 term of the patent, whether maintenance fees have been paid for the patent, whether any
 disclaimer was filed as to the patent to shorten its term, any patent term extensions or
 adjustments for delays within the USPTO under 35 U.S.C. 154 (see
 MPEP
 § 2710 et seq. ), and any patent term extensions under 35 U.S.C. 156 for
 premarket regulatory review (see MPEP § 2750 et seq. ). Any other relevant information should also be taken into
 account.
 

 Amendment Entry — Amendments which comply with 37 CFR 1.530(d)-(j) 
 (and are formally presented pursuant to 37 CFR 1.52(a) and (b) , and contain all
 fees required by 37 CFR
 1.20(c) ) will be entered in the reexamination file pursuant to the
 guidelines set forth in MPEP
 § 2234 .
 

 I. MANNER OF MAKING AMENDMENTS IN REEXAMINATION PROCEEDINGS Amendments made in a reexamination proceeding must comply with the
 formal requirements of 37 CFR 1.52(a) and (b) , as do all papers that are to become a
 part of the permanent USPTO file records in a patent application or proceeding. If an
 amendment is submitted to add claims to the patent being reexamined (i.e., to provide
 new claims), then excess claim fees pursuant to 37 CFR 1.20(c)(3) and (4) may be
 applicable to the presentation of the added claims. See MPEP § 2250.03 . In
 addition, the provisions of 37 CFR 1.530(d)-(k) uniquely apply
 to amendments in both ex parte and inter partes 
 reexamination proceedings, as follows.
 

 A. The Specification 37 CFR
 1.530(d)(1)(i) relates to the manner of making amendments to
 the reexamination “specification” (other than the claims, “Large Tables” submitted in
 ASCII plain text ( 37 CFR 1.58(c) ), a “Computer Program Listing Appendix”
 ( 37 CFR
 1.96(c) ), a “Sequence Listing” ( 37 CFR
 1.821(c) ), or a “Sequence Listing XML” ( 37 CFR
 1.831(a) )). It is not to be used for making amendments to the
 claims, the drawings, “Large Tables” submitted in ASCII plain text, a “Computer
 Program Listing Appendix”, a “Sequence Listing” or a “Sequence Listing XML.”
 37
 CFR 1.530(d)(1)(ii) states that changes to “Large Tables,” a
 “Computer Program Listing Appendix,” a “Sequence Listing,” or a “Sequence Listing
 XML” must be made in accordance with 37 CFR 1.58(g) for “Large Tables”
 submitted in ASCII plain text, 37 CFR 1.96(c)(5) for a “Computer
 Program Listing Appendix,” 37 CFR 1.825 for a “Sequence
 Listing,” and 37 CFR 1.835 for a “Sequence
 Listing XML.” 
 

 All amendments submitted under 37 CFR
 1.530(d)(1)(i) , which include any deletions or additions, must
 be made by submission of the entire text of each added or rewritten paragraph with
 markings (single brackets and underlining) showing the changes. It should be noted
 that examiner’s amendments made at the time when the Notice of Intent to Issue
 Reexamination Certificate (NIRC) is prepared also require the full text of any
 paragraph to be changed, with markings. The exception for examiner’s amendment set
 forth in 37 CFR
 1.121(g) does not apply to examiner’s amendments
 in reexamination proceedings. The only exception to this requirement is that an
 entire paragraph of specification text may be deleted from the specification by a
 statement deleting the paragraph without the presentation of the text of the
 paragraph. However, presentation of the text of the paragraph to be deleted will
 assist the Office in proper entry of the amendment.
 

 In accordance with 37 CFR 1.530(d)(1)(i) , all
 paragraphs which are added to the specification must be submitted as completely
 underlined.
 

 37 CFR
 1.530(d)(1)(i) requires that the precise point where any added
 or rewritten paragraph is located must be indicated. This is important because
 uncertainty about the precise point for an amendment may cause delay in the
 publication of the reexamination certificate. Care should be taken to clearly
 identify the precise point for each change to the specification. 
 

 37 CFR
 1.530(d)(1)(i) defines the “markings” by reference to
 37 CFR
 1.530(f) as being single brackets for deletion and underlining
 for addition. All bracketing and underlining is made in comparison to the original
 patent; not in comparison with the prior amendment.
 

 Where a change is made in one sentence, paragraph or page of the
 patent, and the change increases or decreases the size of the sentence, paragraph or
 page, this will have no effect on the body of the reexamination “specification” (the
 copy of the patent). This is because all insertions are made as blocked additions of
 paragraphs. Therefore, a reexamination patent owner need not be concerned with page
 formatting considerations when presenting amendments to the Office.
 

 B. The Claims 37 CFR
 1.530(d)(2) relates to the manner of making amendments to the
 claims in a reexamination proceeding. It is not to be used for making amendments to
 the remainder of the specification or to the drawings.
 

 37 CFR
 1.530(d)(2) requires that:
 

 
 (A) for each claim that is proposed to be amended by the amendment
 paper being submitted (the current amendment paper), the entire text of the
 claim must be presented with appropriate markings showing the changes to the
 claim;
 

 (B) for each proposed new claim which is added in the
 reexamination by the amendment paper being submitted (the current amendment
 paper), the entire text of the proposed new claim must be presented and it must
 be underlined throughout;
 

 (C) a patent claim is canceled by a direction to cancel that
 claim, there is no need to present the text of the patent claim surrounded by
 brackets; and
 

 (D) a proposed new claim (previously added in the reexamination)
 is canceled by a direction to cancel that claim.
 

 
 Examiner’s amendments made at the time when the Notice of Intent to
 Issue Reexamination Certificate (NIRC) is prepared also require the full text of any
 claim to be changed, with markings. The exception for examiner’s amendment set forth
 in 37 CFR
 1.121(g) does not apply to examiner’s amendments
 in reexamination proceedings.
 

 In accordance with 37 CFR 1.530(e) , each amendment
 submitted must set forth the status of all patent claims and all added claims as of
 the date of the submission. The status to be set forth is whether the claim is
 pending, or canceled. The failure to submit the claim status will generally result in
 a notification to the patent owner of an informal response (see MPEP § 2266.02 )
 prior to final rejection. Such an amendment submitted after final rejection will not
 be entered.
 

 Also in accordance with 37 CFR 1.530(e) , each claim
 amendment must be accompanied by an explanation of the support in the disclosure of
 the patent for the amendment (i.e., support for the changes made in the claim(s),
 support for any insertions and deletions). The failure to submit an explanation will
 generally result in a notification to the patent owner that the amendment prior to
 final rejection is not completely responsive since the failure to set forth the
 support in the disclosure goes to the merits of the case (see MPEP § 2266.01 ).
 Such an amendment submitted after final rejection will not be entered.
 

 37 CFR
 1.530(f) identifies the type of markings required in the claim
 to be amended as underlining for added material and single brackets for material
 deleted.
 

 37 CFR
 1.530(g) states that original patent claims may not be
 renumbered. A patent claim retains its number even if it is canceled in the
 reexamination proceeding, and the numbering of any added claims must begin after the
 last original patent claim.
 

 C. The Drawings With respect to amendment of the drawings in a reexamination
 proceeding, see MPEP §
 2250.01 .
 

 Form paragraph 22.12 may be used to advise patent
 owner of the proper manner of making amendments in an ex parte 
 reexamination proceeding.
 

 D. Form Paragraphs - Ex Parte Reexamination ¶ 22.12 Amendments Proposed in a Reexamination - 37 CFR
 1.530(d)-(j)
 

 Patent owner is notified that any proposed amendment to the specification
 and/or claims in this reexamination proceeding must comply with 37 CFR 1.530(d)-(j) ,
 must be formally presented pursuant to 37 CFR 1.52(a) and (b) , and must contain
 any fees required by 37 CFR
 1.20(c) .
 

 Examiner Note:

 This paragraph may be used in the
 order granting reexamination and/or in the first Office action to advise patent owner of
 the proper manner of making amendments in a reexamination proceeding.
 

 

 ¶ 22.13 Improper Amendment in an Ex Parte Reexamination - 37 CFR
 1.530(d)-(j)
 

 The amendment filed [1] proposes amendments to [2]
 that do not comply with 37 CFR 1.530(d)-(j) , which sets forth the
 manner of making amendments in reexamination proceedings. A supplemental paper correctly
 proposing amendments in the present ex parte reexamination proceeding is
 required. 
 

 A shortened statutory period for
 response to this letter is set to expire [3] from the mailing date of this
 letter. If patent owner fails to timely correct this informality, the amendment will be held
 not to be an appropriate response, prosecution of the present ex parte 
 reexamination proceeding will be terminated, and a reexamination certificate will issue.
 37 CFR
 1.550(d) .
 

 Examiner Note:
 
 1. This paragraph may be used for any 37 CFR
 1.530(d)-(j) informality as to a proposed amendment submitted in a
 reexamination proceeding prior to final rejection. After final rejection, the amendment
 should not be entered and patent owner informed of such in an advisory Office action
 using Form PTOL 467. 
 

 2. In bracket 3, if the reexamination was requested by a third
 party requester, the examiner should insert “ONE MONTH or thirty days, whichever is
 longer”. If the reexamination was requested by the patent owner, if the reexamination
 was ordered under 35 U.S.C. 257 , or if it is a
 Director ordered reexamination, the examiner should insert “TWO MONTHS.”
 
 
 

 The cover sheet to be used for mailing the notification to the
 patent owner will be PTOL-473.
 

 As an alternative to using form paragraph
 22.13 , it would also be appropriate to use form
 PTOL-475.
 

 Note that if the informal amendment is submitted after
 final rejection , form paragraph 22.13 and form
 PTOL-475 should not be used. Rather an advisory Office action (using form PTOL-467)
 should be issued indicating that the amendment was not entered. In the “Other”
 section, it should be explained that the amendment was not entered because it does
 not comply with 37
 CFR 1.530(d)-(j) , which sets forth the manner of making
 amendments in reexamination proceedings.
 

 E. Form Paragraphs - Inter Partes 
 Reexamination See MPEP § 2666.01 for the form paragraphs to use in
 inter partes reexamination proceedings, in advising the patent
 owner as to the manner of making amendments.
 

 II. ALL CHANGES ARE MADE VIS-A-VIS THE PATENT BEING REEXAMINED When a reexamination certificate is printed, all underlined matter is
 printed in italics and all brackets are printed as they were inserted in the proceeding
 in order to thereby show exactly which additions and deletions have been made in the
 patent via the reexamination proceeding. In accordance with 37 CFR 1.530(i) ,
 all amendments to the patent being reexamined must be made relative to the patent
 specification in effect as of the date of the filing of the request for reexamination.
 The patent specification includes the claims and drawings. If there was a prior change
 to the patent (made via a concluded post-patent proceeding, e.g., prior reexamination
 certificate, reissue of the patent, certificate of correction, PTAB trial certificate,
 etc.), the first amendment must be made relative to the patent specification as changed
 by the prior proceeding or other mechanism for changing the patent. All amendments
 subsequent to the first amendment must also be made relative to the patent specification
 in effect as of the date of the filing of the request for reexamination, and
 not relative to the prior amendment. In those rare instances
 where a concluded post-patent proceeding changes the patent while the reexamination
 proceeding is pending, amendments will be made relative to the patent, as revised by the
 concluded proceeding, and 37 CFR 1.530(i) is waived to that
 extent.
 

 III. AMENDMENT AFTER THE PATENT HAS EXPIRED Pursuant to 37 CFR 1.530(j) , “[n]o amendment may
 be proposed for entry in an expired patent.” Thus, if a patent expires during the
 pendency of a reexamination proceeding for a patent, all amendments to the patent claims
 and all claims added during the proceeding are withdrawn. The patent owner should be
 notified of this in the next Office action. The Office action will hold the amendments
 to be improper, and state that all subsequent reexamination will be on the basis of the
 unamended patent claims. This procedure is necessary since no amendments will be
 incorporated into the patent by a certificate after the expiration of the patent.
 

 37 CFR
 1.530(j) further states that “[m]oreover, no amendment, other than
 the cancellation of claims, will be incorporated into the patent by a certificate issued
 after the expiration of the patent.”
 

 Thus, at the time the NIRC is to be issued, the examiner should ensure
 that all rejected and objected to claims are canceled. The examiner should issue an
 examiner’s amendment canceling any such claims not already canceled. 
 

 The cancellation of the original patent claims is the only
 “amendatory” change permitted in an expired patent.
 

 IV. EXAMPLES A substantial number of problems arise in the Office because of
 improper submission of proposed amendments in reexamination proceedings. The following
 examples are provided to assist in the preparation of proper proposed amendments in
 reexamination proceedings. In regard to status identifiers, examiners may accept an
 amendment even if the status identifier used is not a status identifier recommended by
 37 CFR
 1.530(d)(2) or 1.121(c) .
 

 
 (A) Original Patent Description or Patent Claim Amended.
 
 (1) Specification - submit a copy of the entire paragraph (of
 the specification of the patent) being amended with underlining and
 bracketing. Thus, the amendment would be presented as follows:
 
 Replace the paragraph beginning at column 4, line 23
 with the following:
 

 
 
 Scanning [is] are controlled by
 clocks which are, in turn, controlled from the display tube line
 synchronization. The signals resulting from scanning the scope of the
 character are delivered in parallel, then converted into serial mode
 through a shift register, wherein the shift signal frequency is
 controlled by a clock that is controlled from the display tube line
 synchronization.
 

 
 

 (2) Claims - for changes to the patent claims, one must submit
 a copy of the entire patent claim with the amendments shown by underlining
 and single bracketing. Thus, the amendment would be presented as
 follows:
 
 Amend claim 6 as follows:

 
 
 Claim 6. (amended), The apparatus of claim [5]
 1 wherein the [first]
 second piezoelectric element is parallel to the
 [second] third piezoelectric element.
 

 
 
 

 

 If the dependency of any original patent claim is to be
 changed by amendment, it is proper to make that original patent claim
 dependent upon a later filed higher numbered claim.
 

 

 
 

 (B) Cancellation of Entire Claim(s).
 
 (1) Original patent claim canceled - in writing, direct
 cancellation of the entire patent claim.
 
 Cancel claim 6.

 
 

 (2) Proposed new claim (previously added in the reexamination)
 canceled - in writing, direct cancellation of the entire claim.
 
 Cancel claim 15.

 
 

 
 

 (C) Re-presentation of Original Patent Claims (no underlining or
 bracketing). 
 
 Amend claim 4 to read as original patent claim 4:

 
 
 Claim 4. The apparatus of claim 1 wherein the first piezoelectric element is
 perpendicular to the second piezoelectric element. 
 

 
 

 (D) Presentation of New Claims.
 
 

 

 Each proposed new claim (i.e., a claim not found in
 the patent, that is newly presented in the reexamination proceeding) should be
 presented with underlining throughout the claim, including the claim number. The
 status identifier “(new)” may or may not be underlined. Examiners may accept an
 amendment even if the claim number is not underlined or the status identifier(s)
 used is not a status identifier recommended by 37 CFR 1.530(d)(2) or
 1.121(c) .
 

 The following is an example of a presentation of a
 new claim:
 

 
 Insert new claim 7 as follows:

 
 
 Claim 7 (New). The apparatus of claim 5 further comprising
 electrodes attaching to said opposite faces of the second and third
 piezoelectric elements. 

 
 
 

 

 Even though an original claim may have been canceled, the
 numbering of the original claims does not change. Accordingly, any added claims
 are numbered beginning with the next higher number than the number of claims in
 the original patent. If new claims have been added to the reexamination proceeding
 which are later canceled prior to the issuance of the reexamination certificate,
 the examiner will renumber, at the time of preparing the NIRC for subsequent
 issuance of the certificate, any remaining new claims in numerical order to follow
 the highest number of the claims in the original patent.
 

 
 

 

 A claim number previously assigned to a new claim that has been
 canceled should not be reassigned to a different new claim during the
 reexamination proceeding. For example, if new claim 5 added in a prior amendment
 is canceled in a later amendment, a different new claim added in a later amendment
 during the reexamination proceeding would be claim 6. Of course, at the time of
 preparing the NIRC, claim 6 would be renumbered for issue of the reexamination
 certificate as claim 5.
 

 

 (E) Amendment of New Claims.
 
 

 

 An amendment of a new claim (i.e., a claim not
 found in the patent, that was previously presented in the reexamination
 proceeding) must present the entire text of the new claim containing the
 amendatory material, and it must be underlined throughout the claim, including the
 claim number. The status identifier(s) may or may not be underlined. Examiners may
 accept an amendment even if the claim number is not underlined or the status
 identifier(s) used is not a status identifier recommended by 37 CFR
 1.530(d)(2) or 1.121(c) . The presentation
 cannot contain any bracketing or other indication of what was in the previous
 version of the claim. This is because all changes in the reexamination are made
 vis-a-vis the original patent, and not in comparison with
 any prior amendment. Although the presentation of the amended claim does not
 contain any indication of what is changed from a previous version of the claim,
 patent owner must point out what is changed, in the “Remarks” portion of the
 amendment. Also, as per 37 CFR 1.530(e) , each change
 made in the claim must be accompanied by an explanation of the support in the
 disclosure of the patent (i.e., the reexamination specification) for the
 change.
 

 
 

 

 The following is one example to illustrate a
 proper amendment of a new claim:
 

 
 

 

 First Amendment (wherein claim 11 was
 first presented):
 

 
 Claim
 11 (New). A knife comprising a handle portion and a notched blade
 portion. 

 
 In the Remarks (supplied on a separate page):

 
 Status: The present application includes
 pending claims 1-11, with claims 1 and 11 being independent. With this
 amendment, applicant has added new independent claim 11. Support for this new
 claim is found in column 4, lines 26-41, column 5, lines 3-18, and column 6,
 lines 5-15.
 

 
 Second Amendment (wherein claim 11 is
 amended):
 

 
 Claim 11 (New, amended). A fishing
 knife comprising a bone handle portion and a notched blade
 portion. 

 
 In the Remarks (supplied on a separate page):

 
 Status: The present application includes
 pending claims 1-11, with claims 1 and 11 being independent. With this
 amendment, applicant has amended new independent claim 11 as described
 below.
 

 Claim 11: Claim 11 is amended to add “fishing”
 before “knife” and “bone” before “handle.” Support for these changes is found
 in column 4, lines 34-41 and column 6, lines 5-8, respectively.
 

 
 

 (F) Amendment of Original Patent Claims More Than Once.
 
 

 

 The following example illustrates proper claim
 amendment of original patent claims in reexamination proceedings, where more than
 one amendment to a claim is made:
 

 
 (1) Patent claim.
 
 Claim 1. A cutting means having a handle portion and a
 blade portion.
 

 
 

 (2) Proper first amendment format.
 
 Claim 1. (amended), A [cutting means]
 knife having a bone 
 handle portion and a notched blade portion.
 

 
 

 (3) Proper second amendment format.
 
 Claim 1. (twice amended), A [cutting means]
 knife having a handle portion and a
 serrated blade portion.
 

 
 

 
 
 

 

 Note that the second amendment must include (1) the changes
 previously presented in the first amendment; i.e., [cutting means]
 knife , as well as (2) the new changes presented in the
 second amendment; i.e., serrated . 
 

 
 

 

 The word bone was presented in the first
 amendment and is now to be deleted in the second amendment. Thus, “bone” is NOT to
 be shown in brackets in the second amendment. Rather, the word “bone” is simply
 omitted from the claim, since “bone” never appeared in the patent.
 

 
 

 

 The word notched which was presented in
 the first amendment is replaced by the word serrated in the
 second amendment. The word notched is being deleted in the
 second amendment and did not appear in the patent; accordingly, “notched” is not
 shown in any form in the claim. The word serrated is being
 added in the second amendment, and accordingly, “serrated” is added to the claim
 and is underlined.
 

 
 

 

 It should be understood that in the second amendment, the
 deletions of “notched” and “bone” are not changes from the original patent claim
 text and therefore, are not shown in the second amendment. In both the first and
 the second amendments, the entire claim is presented only with the changes from
 the original patent text . 
 

 
 

 

 If the patent expires during an ex parte or
 inter partes reexamination proceeding and the patent claims
 have been amended in that reexamination proceeding, the Office will hold the
 amendments as being improper, and all subsequent reexamination will be on the
 basis of the unamended patent claims. This procedure is necessary since no
 amendments will be incorporated into the patent by certificate after the
 expiration of the patent.
 

 

 V. CROSS REFERENCES TO OTHER AREAS 
 (A) For clerical handling of amendments, see MPEP § 2270 for ex parte reexamination proceedings, and see MPEP § 2670 for inter partes reexamination proceedings.
 

 (B) As to amendments in a merged proceeding, see
 MPEP §
 2283 for an ex parte reexamination merged with another ex parte reexamination and MPEP § 2285 for an ex parte reexamination merged with a reissue application. If an inter partes reexamination proceeding is included in the merger, see
 MPEP §
 2686.01 and § 2686.03 .
 

 (C) As to amendments in a pending reexamination proceeding where a
 reexamination certificate has issued for the patent based on a prior concluded
 reexamination, pursuant to MPEP § 2295 , any amendment made
 in the pending reexamination proceeding must be presented as if the changes made
 to the patent text via the reexamination certificate (for the prior concluded
 reexamination) are a part of the original patent. All italicized text of the
 certificate is considered as if the text was present without italics in the
 original patent. Further, any text of the reexamination certificate found in
 brackets is considered as if it were never present in the patent at all. Thus, for
 making an amendment in the pending reexamination, all italicized text of the
 reexamination certificate is presented in the amendment without italics. Further,
 any text found in brackets in the reexamination certificate is omitted in the
 amendment.
 

 (D) As to amendments in a pending reexamination proceeding where a
 reissue patent has been granted, pursuant to MPEP § 2285 ,
 subsection II.A., an amendment in a reexamination of a reissued patent is made the
 same way as in a reexamination of a reexamined patent (i.e., as per
 MPEP §
 2295 ). Thus, all italicized text of the reissue patent
 is presented in the amendment (made in the pending reexamination proceeding)
 without italics. Further, any text found in brackets in the reissue patent is
 omitted in the amendment (made in the pending reexamination proceeding).
 

 (E) As to amendments in a pending reexamination
 proceeding where a PTAB trial certificate has issued for the patent under
 reexamination, an amendment must be presented as if the changes made to the patent
 via the PTAB trial certificate are a part of the original patent. Similar to
 amendments where a reexamination certificate has issued, text added by the PTAB
 trial certificate should be presented without any markings and text deleted by the
 PTAB trial certificate should not be presented at all. See paragraph (C)
 above.
 

 (F) For handling a dependent claim in reexamination proceedings, see
 MPEP §
 2260.01 .
 

 
 
 2250.01 Correction of Patent Drawings [R-07.2015]

 
 37 CFR 1.530 Statement by patent owner in ex parte reexamination; amendment by patent
 owner in ex parte or inter partes reexamination; inventorship change in ex parte or
 inter partes reexamination. 

 *****

 
 (d) Making amendments in a reexamination proceeding. A proposed
 amendment in an ex parte or an inter
 partes reexamination proceeding is made by filing a paper
 directing that proposed specified changes be made to the patent specification,
 including the claims, or to the drawings. An amendment paper directing that
 proposed specified changes be made in a reexamination proceeding may be
 submitted as an accompaniment to a request filed by the patent owner in
 accordance with § 1.510(e) , as part of a
 patent owner statement in accordance with paragraph (b) of this section, or,
 where permitted, during the prosecution of the reexamination proceeding
 pursuant to § 1.550(a) or § 1.937 .
 
 *****

 (3) Drawings. Any change to the patent drawings must be
 submitted as a sketch on a separate paper showing the proposed changes in
 red for approval by the examiner. Upon approval of the changes by the
 examiner, only new sheets of drawings including the changes and in
 compliance with § 1.84 must be filed.
 Amended figures must be identified as “Amended,” and any added figure
 must be identified as “New.” In the event a figure is canceled, the
 figure must be surrounded by brackets and identified as “Canceled.” 
 

 
 

 
 *****

 

 In the reexamination proceeding, the copy of the patent drawings
 submitted pursuant to 37 CFR 1.510(b)(4) will be used for reexamination purposes,
 provided no change whatsoever is made to the drawings. If there is to be ANY change in
 the drawings, a new sheet of drawings for each sheet changed must be submitted. The
 change may NOT be made on the original patent drawings.
 

 37 CFR
 1.530(d)(3) sets forth the manner of making amendments to the
 drawings. Amendments to the original patent drawing sheets are not permitted, and any
 change to the patent drawings must be in the form of a new sheet of drawings for each
 drawing sheet that is changed. Any amended figure(s) must be identified as “Amended” and
 any added figure(s) must be identified as “New.” In the event a figure is canceled, the
 figure must be surrounded by brackets and identified as “Canceled.”
 

 Where the patent owner wishes to change/amend the drawings, the patent
 owner should submit a sketch in permanent ink showing proposed change(s)/amendment(s),
 for approval by the examiner. The submitted sketch should be presented as a separate
 paper, which is clearly labeled as “Annotated Sheet,” and it will be made part of the
 record. Once the proposed changes are approved, sheets of substitute or new drawings
 must be submitted for each drawing sheet that is to be changed/amended. If a new drawing
 sheet contains multiple figures, each figure must be marked as “amended” or “new,” if
 applicable, to comply with the requirements of 37 CFR 1.530(d)(3) . For example, if
 the new drawing sheet contains Figures 1-3 but only Figure 2 is amended, the new drawing
 sheet must identify Figure 2 as “Amended.” It is not sufficient to generally indicate
 that the entire sheet is amended by, e.g., placing the term “Amended” in the header of
 the drawing sheet. 
 

 The new sheets of drawings must be entered into the
 record in the reexamination file prior to the preparation of a Notice of Intent to Issue
 Ex Parte Reexamination Certificate (NIRC). If a proposed drawing
 correction has been approved but the new sheets of drawings have not been filed, and the
 proceeding is otherwise in condition for termination of the prosecution by means of a
 NIRC, an ex parte Quayle Office action should be prepared - setting an appropriate
 shortened statutory time period (SSP) for the filing of the new sheets of drawing. If
 the reexamination was requested by a third party requester, the examiner should set an
 SSP of ONE MONTH or thirty days, whichever is longer. If the reexamination was requested
 by the patent owner, if the reexamination was ordered under 35 U.S.C.
 257 , or if it is a Director ordered reexamination, the examiner
 should set an SSP of TWO MONTHS. If the new sheets of drawings are not timely filed in
 response to the Quayle action, the reexamination certificate will be
 issued with drawings that do not reflect the changes/amendments that were proposed by
 the patent owner. 
 

 

 
 2250.02 Correction of Inventorship [R-07.2015]

 
 37 CFR 1.530 Statement by patent owner in ex parte reexamination; amendment by patent
 owner in ex parte or inter partes reexamination; inventorship change in ex parte or
 inter partes reexamination. 

 *****

 
 (l) Correction of inventorship in an ex parte or inter partes
 reexamination proceeding. 
 (1) When it appears in a patent being reexamined that the
 correct inventor or inventors were not named, the Director may, on
 petition of all the parties set forth in § 1.324(b)(1) and (b)(2) , including the assignees, and satisfactory
 proof of the facts and payment of the fee set forth in §
 1.20(b) , or on order of a court before which such
 matter is called in question, include in the reexamination certificate to
 be issued under § 1.570 or
 § 1.997 an amendment naming only the actual
 inventor or inventors. The petition must be submitted as part of the
 reexamination proceeding and must satisfy the requirements of
 §
 1.324 .
 

 (2) Notwithstanding paragraph (l)(1) of this section, if a
 petition to correct inventorship satisfying the requirements of
 §
 1.324 is filed in a reexamination proceeding, and
 the reexamination proceeding is concluded other than by a reexamination
 certificate under § 1.570 or
 §
 1.997 , a certificate of correction indicating the
 change of inventorship stated in the petition will be issued upon request
 by the patentee.
 

 
 

 
 

 Where the inventorship of a patent being reexamined is to be corrected,
 a petition for correction of inventorship which complies with 37 CFR 1.324 
 must be submitted during the prosecution of the reexamination proceeding. See
 37 CFR
 1.530(l)(1) . If the petition under 37 CFR 1.324 is
 granted, a certificate of correction indicating the change of inventorship will
 not be issued, because the reexamination certificate that will
 ultimately issue will contain the appropriate change of inventorship information. The
 certificate of correction is in effect merged with the reexamination certificate. 
 

 In some instances, the reexamination proceeding concludes but does not
 result in a reexamination certificate under 37 CFR 1.570 or 1.997 , e.g.,
 reexamination is vacated, or the order for reexamination is denied. In those instances,
 patent owner may, after the conclusion of the reexamination proceeding, request that the
 inventorship be corrected by a certificate of correction indicating the change of
 inventorship. See 37
 CFR 1.530(l)(2) . Alternatively, the failure to name the correct
 inventive entity is an error in the patent which is correctable by reissue under
 35 U.S.C.
 251 . See MPEP § 1412.04 for a discussion of when
 correction of inventorship by reissue is appropriate.
 

 

 
 2250.03 Fees for Adding Claims and for Filing a Petition [R-01.2024]
 I. FEES FOR ADDING CLAIMS Excess claims fees are applicable to excess claims proposed to be
 added to a patent by their presentation during a reexamination proceeding. See
 37 CFR
 1.20(c)(3) and (c)(4) . Under “former”
 35 U.S.C.
 41 , excess claims fees were included as part of the
 “application” filing fee under 35 U.S.C. 41(a)(1) , and thus did
 not apply during reexamination proceedings. The Consolidated Appropriations Act does
 not include the excess claims as part of the “application” filing fee under
 35 U.S.C.
 41(a)(1) , but separately provides for excess claims fees in
 35 U.S.C.
 41(a)(2) (as being in addition to the filing fee in
 35 U.S.C.
 41(a)(1) ). 35 U.S.C. 41(a)(2) provides that
 an excess claims fee is due “on filing or on presentation at any other time” (e.g.,
 during a reexamination proceeding) of an independent claim in excess of three or of a
 claim (whether independent or dependent) in excess of twenty.
 

 37 CFR
 1.20 was amended, effective December 8, 2004, to provide for
 excess claims fees in a reexamination proceeding. The excess claims fees specified in
 37 CFR
 1.20(c) apply to all patents, whenever granted. The fees must
 be submitted for any excess claims presented in a reexamination proceeding on or
 after December 8, 2004 (no excess claims fee was due under 35 U.S.C. 41 
 for any claim presented during a reexamination proceeding before December 8, 2004).
 Even though a reexamination proceeding was commenced prior to December 8, 2004, the
 excess claims fees are due for any amendment filed on or after December 8, 2004. 
 

 When a patent owner presents an amendment to the claims (on or after
 December 8, 2004) during an ex parte reexamination proceeding, or
 upon filing of an ex parte reexamination request under
 35 U.S.C.
 302 (on or after December 8, 2004), excess claims fees may be
 applicable. If the amendment is limited to revising the existing claims, i.e., it
 does not provide any new claim, there is no claim fee. The excess claims fees apply
 only to the submission of new, i.e., “excess” claims. 
 

 The excess claims fees specified in 37 CFR 1.20(c) 
 apply to excess claims that result from an amendment as follows:
 

 
 (A) The fee designated in 37 CFR 1.20(c)(3) as the
 independent claims fee must be paid for each independent claim in excess of
 three and also in excess of the number of independent claims in the patent
 being reexamined. The amendment must increase the number of independent claims
 to be more than both of these limits, in order for the “independent excess
 claims fee” to apply;
 

 (B) The fee designated in 37 CFR 1.20(c)(4) as the
 total claims fee must be paid for each claim (whether independent or dependent)
 in excess of twenty and also in excess of the number of claims in the patent
 being reexamined. The amendment must increase the total number of claims to be
 more than both of these limits, in order for the “total excess claims fee” to
 apply.
 

 
 The following examples illustrate the application of the excess
 claims fees in a patent (non-small entity) to be reexamined containing six
 independent claims and thirty total claims:
 

 
 (A) No excess claims fee is due if the patent owner cancels ten
 claims, two of which are independent, and adds ten claims, two of which are
 independent.
 

 (B) The 37 CFR 1.20(c)(3) excess
 independent claims fee for a seventh independent claim is due if the patent
 owner cancels ten claims, two of which are independent, and adds ten claims,
 three of which are independent.
 

 (C) The 37 CFR 1.20(c)(4) excess
 total claims fee for a thirty-first claim is due if the patent owner cancels
 ten claims, two of which are independent, and adds eleven claims, two of which
 are independent.
 

 (D) The 37 CFR 1.20(c)(3) excess
 independent claims fee for a seventh independent claim and the
 37 CFR
 1.20(c)(4) excess total claims fee for a thirty-first
 claim are due if the patent owner cancels ten claims, two of which are
 independent, and adds eleven claims, three of which are independent. 
 

 
 A claim that has been disclaimed under 35 U.S.C. 253 
 and 37 CFR
 1.321(a) as of the date of filing of the request for
 reexamination is not considered to be a claim in the patent under reexamination for
 purposes of excess claims fee calculations. The same applies to a claim canceled via
 a prior reexamination certificate, reissue patent, or certificate of correction.
 

 If, for a response to a non-final Office action, the excess claims
 fees required by 37
 CFR 1.20(c)(3) and (c)(4) are not paid with the presentation of
 the excess claims, a notice of fee deficiency will be issued as a Notice of Defective
 Paper In Ex Parte Reexamination. In third-party requested
 reexaminations, a one-month time period will be set in the form PTOL-475 for
 correction of the defect, i.e., the fee deficiency. In patent owner requested
 reexaminations (including reexaminations ordered under 35 U.S.C.
 257 ) or Director ordered reexaminations, a two-month time
 period will be set in form PTO-2311 for correction of the defect, i.e., the fee
 deficiency. An extension of time to correct the fee deficiency may be requested under
 37 CFR
 1.550(c) . If the unpaid excess claims fees required by
 37 CFR
 1.20(c)(3) and (c)(4) are not paid within the
 time period set for response to the Notice, the prosecution of the reexamination
 proceeding will be terminated under 37 CFR 1.550(e) , to effect the
 “abandonment” set forth in 37 CFR 1.20(c)(5) . If the excess
 claims fees required by 37 CFR 1.20(c)(3) and
 (c)(4) are not paid with the presentation of the excess claims
 in a response to a final Office action, the examiner should notify the owner of the
 fee deficiency in the advisory action.
 

 II. FEES FOR FILING A PETITION IN REEXAMINATION Pursuant to 37 CFR
 1.550(i) , a petition in an ex parte 
 reexamination proceeding must be accompanied by the fee set forth in
 37 CFR
 1.20(c)(6) , except for petitions under 37 CFR 1.530(c) 
 to extend the period for response by a patent owner, petitions under
 37 CFR
 1.550(e) to accept a delayed response by a patent owner,
 petitions under 37 CFR 1.78 to accept an unintentionally delayed benefit
 claim, and petitions under 37 CFR 1.530(l) for correction of
 inventorship in a reexamination proceeding.
 

 Pursuant to 37 CFR
 1.20(c)(6) , the fee for filing a petition in an ex
 parte reexamination proceeding, except for those specifically enumerated
 in 37 CFR
 1.550(i) is:
 

 $ 2,040 for a large entity. 

 $ 816 for a small entity. 

 $ 408 for a micro entity (available for patent owners
 only).
 

 

 [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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