MPEP § 2202 — MPEP § 2202
Current through: 2022-07-01

2202-Citation of Prior Art and Written Statements 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

 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 2202 
 

 
 
 
 
 
 2202 Citation of Prior Art and Written Statements [R-08.2017]

 
 35 U.S.C. 301 
 Citation of prior art. 

 
 (a) IN GENERAL.—Any person at any time may cite to the Office in
 writing— 
 
 (1) prior art consisting of patents or printed
 publications which that person believes to have a bearing on the
 patentability of any claim of a particular patent; or
 

 
 
 (2) statements of the patent owner filed in a
 proceeding before a Federal court or the Office in which the patent owner
 took a position on the scope of any claim of a particular patent. 
 

 
 

 (b) OFFICIAL FILE.—If the person citing prior art or
 written statements pursuant to subsection (a) explains in writing the pertinence
 and manner of applying the prior art or written statements to at least 1 claim of
 the patent, the citation of the prior art or written statements and the
 explanation thereof shall become a part of the official file of the patent.
 

 (c) ADDITIONAL INFORMATION.—A party that submits a
 written statement pursuant to subsection (a)(2) shall include any other documents,
 pleadings, or evidence from the proceeding in which the statement was filed that
 addresses the written statement.
 

 (d) LIMITATIONS.—A written statement submitted pursuant
 to subsection (a)(2), and additional information submitted pursuant to subsection
 (c), shall not be considered by the Office for any purpose other than to determine
 the proper meaning of a patent claim in a proceeding that is ordered or instituted
 pursuant to section 304 , 314 , or 324 . If any such written statement or additional
 information is subject to an applicable protective order, such statement or
 information shall be redacted to exclude information that is subject to that
 order. 
 

 (e) CONFIDENTIALITY.—Upon the written request of the
 person citing prior art or written statements pursuant to subsection (a), that
 person’s identity shall be excluded from the patent file and kept confidential.
 
 

 
 

 
 37 CFR 1.501 Citation of prior art and written statements in patent files. 

 
 (a) Information content of submission: At any time during the
 period of enforceability of a patent, any person may file a written submission
 with the Office under this section, which is directed to the following
 information:
 
 (1) Prior art consisting of patents or printed
 publications which the person making the submission believes to have a
 bearing on the patentability of any claim of the patent; or 
 

 (2) Statements of the patent owner filed by the
 patent owner in a proceeding before a Federal court or the Office in which
 the patent owner took a position on the scope of any claim of the patent.
 Any statement submitted under this paragraph must be accompanied by any
 other documents, pleadings, or evidence from the proceeding in which the
 statement was filed that address the written statement, and such statement
 and accompanying information under this paragraph must be submitted in
 redacted form to exclude information subject to an applicable protective
 order. 
 

 (3) Submissions under paragraph (a)(2) of this
 section must identify: 
 
 (i) The forum and proceeding in which
 patent owner filed each statement; 
 

 (ii) The specific papers and portions of the
 papers submitted that contain the statements; and 
 

 (iii) How each statement submitted is a
 statement in which patent owner took a position on the scope of any
 claim in the patent.
 

 
 

 
 

 (b) Explanation: A submission pursuant to paragraph (a) of this
 section: 
 
 (1) Must include an explanation in writing of the
 pertinence and manner of applying any prior art submitted under paragraph
 (a)(1) of this section and any written statement and accompanying
 information submitted under paragraph (a)(2) of this section to at least one
 claim of the patent, in order for the submission to become a part of the
 official file of the patent; and 
 

 (2) May, if the submission is made by the patent
 owner, include an explanation of how the claims differ from any prior art
 submitted under paragraph (a)(1) of this section or any written statements
 and accompanying information submitted under paragraph (a)(2) of this
 section. 
 

 
 

 (c) Reexamination pending: If a reexamination proceeding has been
 requested and is pending for the patent in which the submission is filed, entry of
 the submission into the official file of the patent is subject to the provisions
 of §§
 1.502 and 1.902 .
 

 (d) Identity: If the person making the submission wishes his or her
 identity to be excluded from the patent file and kept confidential, the submission
 papers must be submitted anonymously without any identification of the person
 making the submission. 
 

 (e) Certificate of Service: A submission under this section by a
 person other than the patent owner must include a certification that a copy of the
 submission was served in its entirety upon patent owner at the address as provided
 for in §
 1.33(c) . A submission by a person other than the patent
 owner that fails to include proper proof of service as required by
 §
 1.248(b) will not be entered into the patent file. 
 

 
 

 
 37 CFR 1.502 Processing of prior art citations during an ex parte reexamination
 proceeding. 

 Citations by the patent owner under § 1.555 and by an ex
 parte reexamination requester under either § 1.510 or
 §
 1.535 will be entered in the reexamination file during a
 reexamination proceeding. The entry in the patent file of citations submitted after the
 date of an order to reexamine pursuant to § 1.525 by persons other than the
 patent owner, or an ex parte reexamination requester under either
 §
 1.510 or § 1.535 , will be delayed until the
 reexamination proceeding has been concluded by the issuance and publication of a
 reexamination certificate. See § 1.902 for processing of prior art
 citations in patent and reexamination files during an inter partes 
 reexamination proceeding filed under § 1.913 .
 

 

 
 37 CFR 1.902 Processing of prior art citations during an inter partes reexamination
 proceeding. 

 Citations by the patent owner in accordance with § 1.933 and by an
 inter partes reexamination third party requester under
 §
 1.915 or § 1.948 will be entered in the
 inter partes reexamination file. The entry in the patent file of
 other citations submitted after the date of an order for reexamination pursuant to
 §
 1.931 by persons other than the patent owner, or the third party
 requester under either § 1.913 or § 1.948 , will be delayed until the
 inter partes reexamination proceeding has been concluded by the
 issuance and publication of a reexamination certificate. See § 1.502 for
 processing of prior art citations in patent and reexamination files during an
 ex parte reexamination proceeding filed under § 1.510 .
 

 

 Prior art in the form of patents or printed publications may be cited to
 the Office for placement into the patent files. Written statements made by the patent owner
 concerning the scope of the claims can also be cited to the Office for placement into the
 patent files. Submission may be made without payment of a fee. These citations may be made
 separate from and without a request for reexamination.
 

 The basic purpose for citing prior art in patent files is to inform the
 patent owner and the public in general that such patents or printed publications are in
 existence and should be considered when evaluating the validity of the patent claims. The
 basic purpose for citing written claim scope statements is to ensure that the patent owner
 takes consistent positions regarding the scope of the claims of a particular patent in the
 courts and the before the Office. Placement in the patent file also ensures consideration
 thereof during any subsequent reissue application, reexamination proceeding, or other
 post-patent proceeding.
 

 The citation of prior art and written statement provisions of
 35 U.S.C.
 301 and 37 CFR 1.501 do not apply to citations
 or protests filed in pending applications.
 

 [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 20:50:42