MPEP § 2285 — MPEP § 2285
Current through: 2022-07-01

2285-Copending Ex Parte Reexamination and Reissue Proceedings 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2285 
 

 
 
 
 
 
 2285 Copending Ex Parte Reexamination and Reissue
 Proceedings [R-07.2015]
 

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

 *****

 
 (d) If a reissue application and an ex parte reexamination proceeding on which an order pursuant to
 §
 1.525 has been mailed are pending concurrently on a patent,
 a decision will usually be made to merge the two proceedings or to suspend one of
 the two proceedings. Where merger of a reissue application and an ex parte reexamination proceeding is ordered, the merged examination will be
 conducted in accordance with §§ 1.171 through
 1.179 , and the patent owner will be required to place and
 maintain the same claims in the reissue application and the ex parte reexamination proceeding during the pendency of the merged proceeding.
 The examiner’s actions and responses by the patent owner in a merged proceeding
 will apply to both the reissue application and the ex parte reexamination proceeding and will be physically entered into both
 files. Any ex parte reexamination proceeding merged with a reissue application shall be
 concluded by the grant of the reissued patent. For merger of a reissue application
 and an inter partes reexamination, see § 1.991 .
 

 
 *****

 

 The general policy of the Office is that a reissue application examination
 and an ex parte reexamination proceeding will not be conducted
 separately at the same time as to a particular patent. The reason for this policy is to
 permit timely resolution of both proceedings to the extent possible and to prevent
 inconsistent, and possibly conflicting, amendments from being introduced into the two
 proceedings on behalf of the patent owner. Accordingly, if both a reissue application and
 an ex parte reexamination proceeding are pending concurrently on a
 patent, a decision will normally be made (A) to merge the two proceedings or (B) to stay
 one of the two proceedings. See In re Onda, 229 USPQ 235 (Comm’r Pat.
 1985). The decision as to whether the proceedings are to be merged, or which proceeding (if
 any) is to be stayed is made in the Office of Patent Legal Administration (OPLA). 
 

 Where a reissue application and a reexamination proceeding are pending
 concurrently on a patent, the patent owner, i.e., the reissue applicant, has a
 responsibility to notify the Office of such. 37 CFR 1.178(b) , 1.565(a) , and
 1.985 . The patent owner should file in the reissue application, as
 early as possible, a Notification of Concurrent Proceedings pursuant to 37 CFR 1.178(b) in
 order to notify the Office in the reissue application of the existence of the reexamination
 proceeding on the same patent. See MPEP § 1418 . In addition, the patent owner
 should file in the reexamination proceeding, as early as possible, a Notification of
 Concurrent Proceedings pursuant to 37 CFR 1.565(a) or 1.985 (depending on
 whether the reexamination proceeding is an ex parte reexamination
 proceeding or an inter partes reexamination proceeding) to notify the
 Office in the reexamination proceeding of the existence of the two concurrent
 proceedings.
 

 I. TIME FOR MAKING DECISION ON MERGING OR STAYING THE PROCEEDINGS A decision whether or not to merge the reissue application examination
 and the ex parte reexamination proceeding, or to stay one of the two
 proceedings, will not be made prior to the mailing of an order to reexamine the patent
 pursuant to 37 CFR
 1.525 , and the expiration of the statement-reply period following
 the order to reexamine. Until such time, the examination of the reissue application will
 proceed. A determination on the request must not be delayed because of the existence of
 a copending reissue application, since 35 U.S.C. 304 and 37 CFR 1.515 require a determination within 3 months following the filing date of
 the request. See MPEP §
 2241 . If the decision on the request denies reexamination
 ( MPEP §
 2247 ), the examination of the reissue application should be
 continued. If reexamination is ordered ( MPEP § 2246 ), the Central Reexamination
 Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) or Technology Center
 Quality Assurance Specialist (QAS) will await the filing of any statement under
 37 CFR
 1.530 and any reply under 37 CFR 1.535 , or the expiration of
 the time for same (see MPEP § 2249 to § 2251 ). Thereafter, CRU SPRS or TC QAS
 should promptly notify OPLA that the proceedings are ready for consideration of merger.
 If any of the reexamination file, the reissue application, and the patent file are paper
 files, they should be hand delivered to OPLA at the time of the notification to
 OPLA.
 

 If a reissue application is filed during the pendency of a
 reexamination proceeding, OPLA should be notified as promptly as possible after the
 reissue application reaches the TC, that the proceedings are ready for consideration of
 merger. If any of the reexamination file, the reissue application, and the patent file
 are paper files, they should be hand delivered to the OPLA at the time of the
 notification to OPLA.
 

 The decision on whether or not the proceedings are to be merged, or
 which proceeding (if any) is to be stayed, will generally be made as promptly as
 possible after receipt of the notification to OPLA and, if applicable, delivery of all
 the paper files to OPLA. Until a decision is mailed merging the proceedings or staying
 one of the proceedings, the two proceedings will continue and be conducted
 simultaneously, but separately.
 

 The Office may in certain situations issue a certificate at the
 termination of a reexamination prosecution, even if a copending reissue application or
 another reexamination request has already been filed.
 

 II. CONSIDERATIONS IN DECIDING WHETHER TO MERGE THE PROCEEDINGS OR WHETHER TO STAY A
 PROCEEDING The decision on whether to merge the proceedings or stay a proceeding
 will be made on a case-by-case basis based upon the status of the various proceedings.
 The decision to merge, or not to merge, is within the sole discretion of the Office to
 facilitate/carry out the orderly operation of the Office in addressing the proceedings.
 The status of the reissue application and the reexamination proceeding will be taken
 into account in the decision as to whether merger will be ordered, or one of the two
 proceedings stayed.
 

 A. Reissue About To Issue, Reexamination Requested If the reissue patent will issue before the determination on the
 reexamination request must be made (e.g., within three months from the request’s
 filing date), the determination on the request should normally be delayed until after
 the granting of the reissue patent; and then the determination should be made on the
 basis of the claims in the reissue patent. The reexamination, if
 ordered, would then be on the reissue patent claims rather than the original patent
 claims. Since the reissue application would no longer be pending, the reexamination
 would be processed in a normal manner.
 

 Where a reissue patent has been issued, the determination on the
 request for reexamination should specifically point out that the determination has
 been made on the claims of the reissue patent and not on the claims of the original
 patent. Any amendment made in the reexamination proceeding should treat the changes
 made by the reissue as the text of the patent, and all bracketing and underlining
 made with respect to the patent as changed by the reissue . Note that the
 reissue claims used as the starting point in the reexamination proceeding must be
 presented in the reexamination proceeding as a “clean copy.” Thus, words bracketed in
 the reissue patent claim(s) would not appear at all in the reexamination clean copy
 of the claim(s). Also, words that were added via the reissue patent will appear in
 italics in the reissue patent, but must appear in plain format in the reexamination
 clean copy of the claim(s).
 

 If a reissue patent issues on the patent under reexamination after
 reexamination is ordered, the next action from the examiner in the reexamination
 should point out that further proceedings in the reexamination will be based on the
 claims of the reissue patent and not on the patent surrendered. Form paragraph
 22.05 may be used in the Office action.
 

 ¶ 22.05 Reexamination (Ex Parte or Inter Partes) Based on Reissue Claims

 In view of the surrender of original Patent No. [1] and the granting of Reissue Patent No. [2] which issued on [3] , all subsequent proceedings in this reexamination will be based on the reissue patent claims.
 

 

 Where the reissue patent has issued prior to the filing of a request
 for reexamination of the parent patent, see MPEP § 2258 .
 

 B. Reissue Pending, Reexamination Request Filed Where a reissue patent will not be granted prior to the expiration
 of the 3-month period for making the determination on the reexamination request, a
 decision will be made as to whether the reissue application and the reexamination
 proceeding are to be merged, or which of the two (if any) is to be stayed, after an
 order to reexamine has been issued. 
 

 The general policy of the Office is to merge the more narrow
 reexamination proceeding with the broader reissue application examination whenever it
 is desirable to do so in the interests of expediting the conduct of both proceedings.
 In making a decision on whether or not to merge the reissue application and the
 reexamination proceeding, consideration will be given to the status of the reissue
 application examination at the time the order for reexamination of the patent
 pursuant to 37 CFR
 1.525 is mailed. For example, if examination of the reissue
 application has not begun, or if a rejection by the primary examiner has not been
 appealed to the Board pursuant to 37 CFR 41.31 , it is likely that
 the OPLA will order a merger of the reissue application examination and the
 reexamination proceeding. If, however, the reissue application is on appeal to the
 Board or the courts, that fact would be considered in making a decision whether to
 merge the reissue application and the reexamination proceeding or stay one of them.
 See In re Stoddard, 213 USPQ 386 (Comm’r Pat. 1982); and
 In re Scragg, 215 USPQ 715 (Comm’r Pat. 1982).
 

 If such a merger of the reissue application and the reexamination
 proceeding is ordered, the order merging them will also require that the patent owner
 place the same claims in the reissue application and in the reexamination proceeding
 for purposes of the merged proceedings. An amendment may be required to be filed to
 do this within a specified time set in the order merging the proceedings.
 

 If the reissue application examination has progressed to a point
 where a merger of the two proceedings is not desirable at that time, then the
 reexamination proceeding will generally be stayed until the reissue application
 examination is complete on the issues then pending. After completion of the
 examination on the issues then pending in the reissue application examination, the
 stay of the reexamination proceeding will be removed and the proceedings will be
 merged if the reissue application is pending, or the reexamination proceeding will be
 conducted separately if the reissue application has become abandoned. The reissue
 application examination will be reopened, if necessary, for merger of the
 reexamination proceeding therewith.
 

 If the reissue application examination and the reexamination
 proceeding are merged, the issuance of the reissue patent will also serve as the
 certificate under 37 CFR 1.570 and the reissue patent will so indicate.
 

 C. Reexamination Proceedings Underway, Reissue Application Filed When a reissue application is filed after an ex
 parte reexamination request has been filed, OPLA should be notified as
 promptly as possible after the reissue application reaches the TC. A determination
 will be made as to whether reexamination should be ordered. If reexamination is
 ordered, no first Office action will accompany the decision ordering reexamination.
 The order and any of the files that are paper files should then be hand delivered to
 OPLA.
 

 Where reexamination has already been ordered prior to the filing of
 a reissue application, OPLA should be notified as promptly as possible after the
 reissue application reaches the TC, that the proceedings are ready for consideration
 of merger. If any of the reexamination file, the reissue application, and the patent
 file are paper files, they should be hand delivered to the OPLA at the time of the
 notification to OPLA.
 

 In making a decision on whether or not to merge the reissue
 application examination and the reexamination proceeding, consideration will be given
 as to whether issues are raised in the reissue application that would not be proper
 for consideration in reexamination. In addition, consideration will also be given to
 the status of the reexamination proceeding. For example, if the reexamination
 proceeding is on appeal to the Board or to the U.S. Court of Appeals for the Federal
 Circuit, or a Notice of Intent to Issue a Reexamination Certificate was issued for
 the reexamination, that fact would be considered in making a decision whether to
 merge the reissue application examination and the reexamination proceeding or stay
 one of them.
 

 III. EXAMINER ASSIGNMENT With respect to the appropriate examiner assignment of the merged
 reexamination/reissue proceeding, see MPEP § 2236 .
 

 IV. CONDUCT OF MERGED REISSUE APPLICATION AND REEXAMINATION PROCEEDING Where merger is ordered, the patent owner is required to maintain
 identical amendments in the reissue application and the reexamination file for purposes
 of the merged proceeding. The maintenance of identical amendments in both files is
 required as long as the reissue and reexamination proceedings remain merged. See
 37 CFR
 1.565(d) . Where identical amendments are not present in both files
 at the time merger is ordered, the patent owner will be required to submit an
 appropriate “housekeeping” amendment placing the same amendments in both proceedings.
 This may be accomplished by amending either of the two proceedings (the reissue
 application or the reexamination) or both of them, as appropriate. The patent owner must
 not address any issue of patentability in the housekeeping amendment. Amendments in a
 merged reexamination/reissue proceeding are submitted under 37 CFR 1.173 , in
 accordance with reissue practice.
 

 Where the merger decision indicates that an Office action will follow,
 the merged proceeding is returned to the examiner immediately after the decision to
 issue an Office action. Where the merger decision indicates that the patent owner is
 given one month to provide an amendment to make the claims the same in each file
 (identical amendments to be placed in all files), the CRU SPRS or TC QAS will retain
 jurisdiction over the merged reexamination proceeding to await submission of the
 amendment or the expiration of the time to submit the amendment. After the amendment is
 received and processed by the technical support staff or the time for submitting the
 amendment expires, the merged proceeding will be returned to the examiner to issue an
 Office action.
 

 Once the proceeding is returned to the examiner for issuance of an
 Office action, the examiner should prepare an Office action at the most advanced point
 possible for the first proceeding. Thus, if the first proceeding is ready for a final
 rejection and the second proceeding does not provide any new information which would
 call for a new ground of rejection, the examiner should issue a final rejection for the
 merged proceeding.
 

 In the event that a “housekeeping” amendment to make the claims the
 same in each file is required by the merger decision (identical amendments to be placed
 in all files) but is not timely submitted, any claim that does not contain identical
 text in all of the merged proceedings should be rejected under 35 U.S.C. 112 ,
 second paragraph, as being indefinite as to the content of the claim, and thus failing
 to particularly point out the invention. 
 

 If a reissue application examination and a reexamination proceeding are
 merged, the merged examination will be conducted on the basis of the rules relating to
 the broader reissue application examination. Amendments should be submitted in
 accordance with the reissue practice under 37 CFR 1.121(i) and
 37 CFR
 1.173 ; see MPEP § 1453 . The examiner, in examining
 the merged proceeding, will apply the reissue statute, rules, procedures, and case law
 to the merged proceeding. This is appropriate in view of the fact that the statutory
 provisions for reissue applications and reissue application examination include
 provisions equivalent to 35 U.S.C. 305 relating to the
 conduct of reexamination proceedings.
 

 In any merged reissue application and reexamination proceeding, each
 Office action issued by the examiner will take the form of a single action which jointly
 applies to both the reissue application and the reexamination proceeding. Each action
 will contain identifying data for both the reissue application and the reexamination
 proceeding, and each action will be physically entered into both files, which will be
 maintained as separate files.
 

 Any response by the applicant/patent owner in such a merged proceeding
 must consist of a single response, filed in duplicate for entry in both files (or
 provide multiple copies if there are multiple reexamination proceedings being merged
 with a reissue application), and service of a copy must be made on any third party
 reexamination requester. A copy of all Office actions will be mailed to the third party
 reexamination requester but not to any other third party.
 

 If the applicant/patent owner in such a merged proceeding fails to file
 a timely and appropriate response to any Office action, then the merger will be
 automatically dissolved (severed). The reissue application will be held abandoned. A
 NIRC will be issued (see MPEP § 2287 ), and the Director will proceed to issue a
 reexamination certificate under 37 CFR 1.570 in accordance with the
 last action of the Office, unless further action is clearly needed in view of the
 difference in rules relating to reexamination and reissue proceedings.
 

 If the applicant/patent owner in a merged proceeding files an express
 abandonment of the reissue application pursuant to 37 CFR 1.138 , the next Office action
 of the examiner will accept the express abandonment, dissolve the merged proceeding, and
 continue the reexamination proceeding. If the applicant/patent owner files a continued
 prosecution reissue application (a CPA) of a reissue design application under
 37 CFR
 1.53(d) , whereby the existing reissue design application is
 considered to be expressly abandoned, this will most likely result in the dissolution of
 the merged proceeding, a stay of the CPA reissue application, and separate, continued
 prosecution of the reexamination proceeding.
 

 Where the merged proceeding is dissolved based on abandonment of the
 reissue application and the reexamination proceeding continues, any grounds of rejection
 which are not applicable under reexamination should be withdrawn (e.g., based on public
 use or on sale) and any new grounds of rejection which are applicable under
 reexamination (e.g., improper broadened claims) should be made by the examiner. The
 existence of any questions remaining which cannot be considered under reexamination
 following dissolution of the merged proceeding would be noted by the examiner as not
 being proper under reexamination pursuant to 37 CFR 1.552(c) .
 

 Where the merged proceeding is dissolved based on abandonment of the
 reissue application and the reexamination proceeding continues, there is no guarantee
 that any continuation reissue application will be merged with the reexamination
 proceeding (the continuation reissue application might be stayed pending conclusion of
 the reexamination). This policy is necessary to prevent the patent owner from filing
 reissue continuation applications to delay a decision by the Board on rejected
 claims.
 

 If applicant/patent owner files a request for continued examination
 (RCE) of the reissue application under 37 CFR 1.114 (which may be filed on
 or after May 29, 2000 for an application filed on or after June 8, 1995), then the
 merger will be automatically dissolved (severed), and the reissue application will then
 be suspended. Patent owners are put on notice that, in such event, a request for
 continued examination (RCE) is not available in the reexamination proceeding, and any
 response to an Office action (e.g., response to a final rejection) in the reexamination
 proceeding must be made taking into account the non-availability of RCE practice. Any
 failure to timely respond would result in the termination of the prosecution pursuant to
 37 CFR
 1.550(d) . 
 

 V. PETITION TO MERGE REISSUE APPLICATION AND REEXAMINATION PROCEEDING OR TO STAY
 EITHER OF THE TWO BECAUSE OF THE EXISTENCE OF THE OTHER No petition to merge the reissue application and the reexamination
 proceeding, or stay one of them, should be filed before an order granting reexamination
 is issued because the Office will generally, sua sponte, make a
 decision to merge the reissue application and the reexamination proceeding or stay one
 of them. If any petition to merge the reissue application and the reexamination
 proceeding, or to stay one of them because of the other, is filed prior to the
 determination ( 37 CFR
 1.515 ) and order to reexamine ( 37 CFR 1.525 ), it will not be
 considered, but will be returned to the party submitting the same by the CRU or TC
 Director, regardless of whether the petition is filed in the reexamination proceeding,
 the reissue application, or both. This is necessary to prevent premature papers relating
 to the reexamination proceeding from being filed. The decision expunging such a
 premature petition will be made of record in both the reexamination file and the reissue
 application file. See MPEP § 2267 .
 

 The patent owner may file a petition under 37 CFR 1.182 to
 merge the reissue application and the reexamination proceeding, or stay one of them
 because of the other, at the time the patent owner’s statement under 37 CFR 1.530 is
 filed or subsequent thereto in the event the Office has not acted prior to that date to
 merge or stay. The third party requester does not have a right to file a petition under
 37 CFR
 1.182 to merge a reexamination proceeding and a reissue
 application examination, since a reexamination third party requester does not have any
 standing to request relief with respect to a reissue application, to which requester
 cannot be a party. No such standing is provided for anywhere in the statute. Instead of
 filing a petition under 37 CFR 1.182 to merge a
 reexamination proceeding with a reissue application, a third party requester may file a
 notification of concurrent proceedings pursuant to MPEP § 2282 . After
 being notified of the existence of a reissue application and after consideration of the
 merger and suspension options becomes ripe, the Office of Patent Legal Administration
 (OPLA) would sua sponte consider the action to be taken. A petition
 to merge the reissue application and the reexamination proceeding, which is filed by a
 party other than the patent owner will not be considered, but will be returned to that
 party (or expunged if already entered) by the CRU or TC Director as being improper under
 37 CFR
 1.550(g) . The requester does have the right to file a petition
 under 37 CFR
 1.182 to stay the reexamination proceeding that it requested.
 

 All petitions to merge or stay which are filed by the patent owner or
 the third party requester subsequent to the date of the order for reexamination will be
 referred to OPLA for decision.
 

 VI. FEES IN MERGED PROCEEDINGS Where the proceedings have been merged and a paper is filed which
 requires payment of a fee (e.g., excess claim fee, extension of time fee, petition fee,
 appeal fee, brief fee, oral hearing fee), only a single fee need be paid. For example,
 only one fee need be paid for an appeal brief even though the brief relates to merged
 multiple proceedings and copies must be filed for each file in the merged proceeding. As
 to excess claim fees, reissue practice will control.
 

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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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