MPEP § 2282 — MPEP § 2282
Current through: 2022-07-01

2282-Notification of Existence of Prior or Concurrent Proceedings and Decisions Thereon 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

 Skip over navigation 
 
 
 
 
 
 
 
 search for patents | search for trademarks 

 
 
 
 
 
 
 
 
 
 
 
 Search 
 
 
 

 
 

 
 
 
 
 
 PATENTS 
 
 Patent Search 

 
 Patent Process 

 
 Patent Classification 

 
 Patent Forms 

 
 Statistics 

 
 Electronic Business Center 

 
 Patent Laws, Regulations, Policies & Procedures 

 
 Resources and Guidance 

 
 Office of Data Management 

 
 Announcements 

 
 Initiatives & Events 

 
 International Protection 

 
 Employee Locator 

 
 Contact Patents 

 

 

 
 TRADEMARKS 
 
 Trademark Search 

 
 Trademarks Process 

 
 News & Notices 

 
 Manuals, Guides, Official Gazette 

 
 Laws & Regulations 

 
 Online Filing 

 
 Contact Trademarks 

 

 

 
 IP LAW & POLICY 
 
 Rulemaking 

 
 IP Policy and Enforcement 

 
 Protecting IP Overseas 

 
 Training and Education 

 
 Training Programs & Conferences 

 
 Office of Governmental Affairs 

 
 Office of Chief Economist 

 
 Boards and Counsel 

 

 

 
 PRODUCTS & SERVICES 
 
 Electronic Data Products 

 
 XML Resources 

 
 XML Resources - Retrospective 

 
 USPTO Contact Center Order Form 

 
 Services 

 
 Locate Libraries 

 
 Training/Events 

 
 Online Services Hub 

 

 

 
 INVENTORS 
 
 Patents for Inventors 

 
 Trademarks for Inventors 

 
 Inventors Assistance 

 
 Education and Information 

 
 Scam Prevention 

 
 Pro Se and Pro Bono 

 
 Current Events 

 
 State Resources 

 
 InventorsEye Newsletter 

 

 

 
 NEWS & NOTICES 
 
 Subscription Center 

 
 Press Releases 

 
 Testimony and Speeches 

 
 Director's Forum 

 
 Systems Status 

 
 Emergency Notices 

 
 USPTO Videos 

 
 Official Gazette 

 
 Federal Register Notices 

 
 Event Calendar 

 

 

 
 FAQs 
 
 Patents FAQs 

 
 Trademarks FAQs 

 
 Assignments 

 
 Security 

 
 Musicians and Artists 

 
 Browser Plugins 

 
 Other Web Resources 

 

 

 
 ABOUT US 
 
 USPTO Leadership 

 
 USPTO Organization 

 
 USPTO Offices 

 
 Careers 

 
 Budget, Performance, and Planning 

 
 Statistics 

 
 Vendor Information 

 
 Public Advisory Committees 

 
 National Medal of Technology and Innovation 

 
 IP in Motion 

 
 Contact Us 

 

 

 
 
 

 

 
 

 
 
 
 
 Home Page 

 
 Patents 

 
 Patent Laws, Regulations, Policies & Procedures 

 
 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2282 
 

 
 
 
 
 
 2282 Notification of Existence of Prior or Concurrent Proceedings and
 Decisions Thereon [R-07.2015]
 

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

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

 
 *****

 

 It is important for the Office to be aware of any prior or concurrent
 proceedings in which a patent undergoing ex parte reexamination is or
 was involved, and any results of such proceedings. In accordance with 37 CFR 1.565(a) , the
 patent owner is required to provide the Office with information regarding the existence of
 any such proceedings, and the results thereof, if known. This requirement includes
 supplemental examination proceedings and reviews before the Patent Trial and Appeal Board
 in addition to the examples provided in 37 CFR 1.565(a) reproduced above.
 Ordinarily, no submissions of any kind by third parties filed after the date of the order
 are entered into the reexamination or patent file while the reexamination proceeding is
 pending. However, in order to ensure a complete file, with updated status information
 regarding prior or concurrent proceedings regarding the patent under reexamination, the
 Office will, at any time, accept from any parties, for entry into the reexamination file,
 copies of notices of suits and other proceedings involving the patent and copies of
 decisions or papers filed in the court from litigations or other proceedings involving the
 patent. Such decisions include final court decisions (even if the decision is still
 appealable), decisions to vacate, decisions to remand, and decisions as to the merits of
 the patent claims. Non-merit decisions on motions such as for a new venue, a new
 trial/discovery date, or sanctions will not be entered into the patent file, and will be
 expunged from the patent file by closing the appropriate paper if they were entered before
 discovery of their nature. Further, papers filed in the court from litigations or other
 proceedings involving the patent will not be entered into the record (and will be expunged
 if already entered) if they provide a party’s arguments, such as a memorandum in support of
 summary judgment. If the argument has an entry right in the reexamination proceeding, it
 must be submitted via the vehicle (provision(s) of the rules) that provides for that entry
 right. It is not required nor is it permitted that parties submit copies of copending
 reexamination proceedings and applications (which copies can be mistaken for a new
 request/filing); rather, submitters may provide a notice identifying the
 application/proceeding number and its status. Any submission that is not permitted entry
 will be returned, expunged, or discarded, at the sole discretion of the Office. It is to be
 noted that if the Office, in its sole discretion, deems the volume of the papers filed from
 litigations or other proceedings to be too extensive/lengthy, the Office may return,
 expunge or discard, at its sole discretion, all or part of the submission. In such an
 instance, a party may limit the submission in accordance with what is deemed relevant, and
 resubmit the papers. Persons making such submissions must limit the submissions to the
 notification, and must not include further arguments or information. Where a submission is
 not limited to bare notice of the prior or concurrent proceedings (in which a patent
 undergoing reexamination is or was involved), the submission will be returned, expunged or
 discarded by the Office. It is to be understood that highlighting of certain text by
 underlining, fluorescent marker, etc., goes beyond bare notice of the prior or concurrent
 proceedings.
 

 Any proper submission pursuant to 37 CFR 1.565(a) will be promptly
 entered into the record of the reexamination file, and will be considered by the examiner
 as to its content, when the proceeding comes up for action on the merits. Thus, for
 example, if the patent owner properly files in a reexamination proceeding, pursuant to
 37 CFR
 1.565(a) , an enterable paper from the discovery stage of litigation
 of the patent being reexamined, the paper would be entered into the reexamination file and
 considered by the examiner, the next time the proceeding comes up for action on the merits.
 See MPEP §
 2286 for Office investigation for prior or concurrent
 litigation.
 

 Form paragraph 22.07 or 22.08 , if appropriate, may
 be used to remind the patent owner of the continuing duty under 37 CFR 1.565(a) to
 apprise the Office of any litigation activity.
 

 ¶ 22.07 Litigation Reminder (Patent Owner Request or Director Ordered
 Reexamination)
 

 The patent owner is reminded of the
 continuing responsibility under 37 CFR 1.565(a) , to apprise the Office of
 any litigation activity, or other prior or concurrent proceeding, involving Patent No.
 [1] throughout the course of this reexamination proceeding. See
 MPEP §§
 2207 , 2282 and 2286 .
 

 Examiner Note:

 This form paragraph is to be used
 when granting an ex parte reexamination request filed by a patent owner
 and in the first action in a Director Ordered reexamination or reexamination ordered under
 35 U.S.C. 257 .
 

 

 ¶ 22.08 Litigation Reminder (Third Party Requester)

 The patent owner is reminded of the
 continuing responsibility under 37 CFR 1.565(a) , to apprise the Office of
 any litigation activity, or other prior or concurrent proceeding, involving Patent No.
 [1] throughout the course of this reexamination proceeding. The third party
 requester is also reminded of the ability to similarly apprise the Office of any such activity
 or proceeding throughout the course of this reexamination proceeding. See
 MPEP §§
 2207 , 2282 and 2286 . 
 

 Examiner Note:

 This form paragraph is to be used when granting an ex parte reexamination request filed by a third party requester.
 

 

 [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 

 

 

 
 

 
 
 

 
 

 

 
 
 Accessibility 

 Privacy Policy 

 Terms of Use 

 Security 

 Emergencies/Security Alerts 

 Information Quality Guidelines 

 
 

 
 
 Federal Activities Inventory Reform (FAIR) Act 

 Notification and Federal Employee Antidiscrimination and Retaliation (NoFEAR) Act 

 Budget & Performance 

 Freedom of Information Act (FOIA) 

 
 

 
 
 Department of Commerce NoFEAR Act Report 

 Regulations.gov 

 STOP!Fakes.gov 

 Department of Commerce 

 USA.gov 

 
 

 
 
 Strategy Targeting Organized Piracy (STOP!) 

 Careers 

 Site Index 

 Contact Us 

 Submit Feedback 

 
 

 
 This page is owned by Patents.

 Last Modified: 
 
 03/09/2026 20:49:35