MPEP § 2262 — MPEP § 2262
Current through: 2022-07-01

2262-Form and Content of Office Action 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2262 
 

 
 
 
 
 
 2262 Form and Content of Office Action [R-08.2017]

 The examiner’s first Office action will be a statement of the examiner’s
 position and should be so complete that the second Office action can properly be made a
 final action. See MPEP §
 2271 .
 

 The first Office action must be sufficiently detailed that the pertinency
 and manner of applying the cited prior art to the claims in each rejection is clearly set
 forth therein. Where the request for reexamination includes material such as a claim chart
 to explain a proposed rejection in order to establish the existence of a substantial new
 question of patentability, the examiner may bodily incorporate the claim chart (or other
 material) within the Office action. The examiner must, however, carefully review the claim
 chart (or other material) to ensure that any items incorporated in a statement of the
 rejection clearly and completely address the patentability of the claims. For actions
 subsequent to the first Office action, the examiner must be careful to additionally address
 all patent owner responses to previous actions. If the examiner concludes in any Office
 action that one or more of the claims are patentable over the cited patents or printed
 publications, the examiner should indicate why the claim(s) is/are clearly patentable in a
 manner similar to that used to indicate reasons for allowance ( MPEP § 1302.14 ). If the
 record is clear why the claim(s) is/are clearly patentable, the examiner may refer to the
 particular portions of the record which clearly establish the patentability of the
 claim(s). The first action should also respond to the substance of each argument raised by
 the patent owner and requester pursuant to 37 CFR 1.510 , 1.530 , and
 1.535 . If arguments are presented which are inappropriate in
 reexamination, they should be treated in accordance with 37 CFR 1.552(c) . 
 

 If any statement of the patent owner submitted pursuant to
 37 CFR
 1.501(a)(2) is relied upon in the detailed explanation, requester
 must have explained how that statement is being used to determine the proper meaning of a
 patent claim in connection with prior art applied to that claim. That explanation will be
 considered by the Office, when drafting the Office action, in determining the scope of the
 claims of the patent which are subject to reexamination.
 

 It is especially important that the examiner’s action in
 reexamination be thorough and complete in view of the finality of a reexamination
 proceeding and the patent owner’s inability to file a continuation proceeding.
 

 Normally, the title will not need to be changed during reexamination. If a
 change of the title is necessary, patent owner should be notified of the need to provide an
 amendment changing the title as early as possible in the prosecution as a part of an Office
 Action. If all of the claims are found to be patentable and a Notice of Intent to Issue
 Ex Parte Reexamination Certificate has been or is to be mailed, a
 change to the title of the invention by the examiner may only be done by a formal
 Examiner’s Amendment. Changing the title and merely initialing the change is NOT permitted
 in reexamination.
 

 Current procedure permits the examiner, in the exercise of professional
 judgment, to indicate that a discussion with the patent owner’s representative may result
 in agreement whereby the reexamination proceeding may be placed in condition for issuing a
 Notice of Intent to Issue a Reexamination Certificate (NIRC) and that the examiner will
 contact the patent owner’s representative within about two weeks. Under this practice the
 patent owner’s representative can be adequately prepared to conduct such a discussion. Any
 resulting amendment may be made either by the patent owner’s attorney or agent, or by the
 examiner in an examiner’s amendment. It should be recognized that when extensive amendments
 are necessary, it would be preferable if the amendments were filed by the patent owner’s
 attorney or agent of record since this will provide the file wrapper with a better record
 because the amendments would include the patent owner’s arguments for patentability as
 required by 37 CFR
 1.111 .
 

 I. PROCESS OF PREPARING THE ACTION Upon receipt of a patent owner response to the action by
 the CRU, or upon the expiration of the time to submit the response, the examiner will be
 notified. The examiner will prepare for and set up a panel review conference as per
 MPEP §
 2271.01 , to discuss the issuance of the Office action. The
 examiner may prepare the Office action after the conference, or may prepare the Office
 action prior to the conference and revise it as needed after the conference. See
 MPEP §
 2271.01 for more information on policies concerning
 conferences.
 

 If the conference confirms the examiner’s preliminary
 decision to reject and/or allow the claims, the Office action shall be issued and signed
 by the examiner, with the two or more other conferees initialing the action (as
 “conferee”) to indicate their presence in the conference. 
 

 II. SAMPLE OFFICE ACTION A sample of a first Office action in a reexamination proceeding is set
 forth below.
 

 Form PTOL-465. Ex Parte Reexamination Communication
 Transmittal Form 

 

 

 

 
 
 
 
 
 

 

 
 

 
 
 

 
 

 
 
 

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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 20:49:34