MPEP § 2256 — MPEP § 2256
Current through: 2022-07-01

2256-Prior Art Patents and Printed Publications Reviewed by Examiner in Reexamination 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2256 
 

 
 
 
 
 
 2256 Prior Art Patents and Printed Publications Reviewed by Examiner in
 Reexamination [R-07.2022]
 

 Typically, the primary source of prior art will be the patents and printed
 publications cited in the request for ex parte reexamination.
 

 Subject to the discussion provided below in this section, the examiner
 must also consider patents and printed publications:
 

 
 (A) cited by another reexamination requester under 37 CFR 1.510 or
 37 CFR
 1.915 ;
 

 (B) cited in a patent owner’s statement under 37 CFR 1.530 or
 a requester’s reply under 37 CFR 1.535 if they comply with
 37 CFR
 1.98 ;
 

 (C) cited by the patent owner under a duty of disclosure
 ( 37 CFR
 1.555 ) in compliance with 37 CFR 1.98 ;
 

 (D) discovered by the examiner in searching;

 (E) of record in the patent file from earlier examination; and

 (F) of record in the patent file from any 37 CFR 1.501 
 submission prior to date of an order if it complies with 37 CFR 1.98 .
 
 

 
 Where patents, publications, and other such documents are submitted by a
 party (patent owner or requester) in compliance with the requirements of the rules, the
 requisite degree of consideration to be given to such information will be normally limited
 by the degree to which the party filing the information citation has explained the content
 and relevance of the document. The initials of the examiner placed adjacent to the
 citations on the form PTO/SB/08 or its equivalent, without an indication to the contrary in
 the record, do not signify that the document has been considered by the examiner any
 further than to the extent noted above.
 

 As to (E) above, it is pointed out that the degree of consideration of
 information from the patent file and its parent files is dependent on the availability of
 the information. Thus, for example, as to a reference other than a U.S. patent and U.S.
 patent publication that is not scanned into the Image File Wrapper (IFW) what was said
 about that reference in the patent’s record is the full extent of consideration, unless
 otherwise indicated, or unless parties appropriately supplied a copy.
 

 As to (B), (C) and (F) above, 37 CFR 1.98(a)(2) requires a legible
 copy of:
 

 
 (1) each foreign patent;

 (2) each publication or that portion which caused it to be listed, other
 than U.S. patents and U.S. patent application publications unless required by the
 Office;
 

 (3) for each cited pending unpublished U.S. application, the application
 specification including the claims, and any drawing of the application, or that
 portion of the application which caused it to be listed including any claims directed
 to that portion; 
 

 (4) all other information or that portion which caused it to be
 listed.
 

 
 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 the application/proceeding number and
 its status. A submission that is not permitted entry will be returned, expunged, or
 discarded at the sole discretion of the Office. 
 

 The exception to the requirement for reference copies in 37 CFR 1.98(d)(1) 
 does not apply to reexamination proceedings since a reexamination proceeding does not
 receive 35 U.S.C.
 120 benefit from the patent.
 

 AFTER THE NOTICE OF INTENT TO ISSUE EX PARTE REEXAMINATION
 CERTIFICATE (NIRC): Once the NIRC has been mailed, the reexamination
 proceeding is forwarded for publication of the reexamination certificate. Thus, when the
 patent owner provides a submission of patents and printed publications or other
 information described in 37 CFR 1.98(a) after the NIRC has
 been mailed, the proceeding has entered the publication process for printing the
 reexamination certificate. To automatically delay prosecution by pulling the proceeding
 from that process when such a submission has been filed, without more, would be contrary
 to the Office’s statutory mandate for “special dispatch”, as set forth in
 35 U.S.C.
 305 .
 

 For this reason, the submission must be accompanied by
 (A) a factual accounting providing a sufficient explanation of why the information
 submitted could not have been submitted earlier, (B) an unequivocal statement that one
 or more claims are unpatentable, and (C) an amendment to such claim or claims, and an
 explanation as to how the amendment causes such claim or claims to be patentable. This
 must be provided via a petition under 37 CFR 1.182 (with the petition fee)
 for entry and consideration of the information submitted after NIRC. These requirements
 are necessary to provide a basis for interrupting the proceeding after NIRC, in order
 for the Office to comply with its statutory mandate for “special dispatch”. 
 

 These requirements are similar to the requirements to
 withdraw an application from issue as set forth in 37 CFR 1.313(c)(1) . The printing
 cycle for an application occurs after the payment of the issue fee (there is no issue
 fee in reexamination), and thus, in order to withdraw an application from issue after
 payment of the issue fee, the requirements of 37 CFR 1.313(c) must be met. Based
 on the statutory requirement for “special dispatch,” the requirements for withdrawal of
 a reexamination proceeding from issue, i.e., its printing cycle, after NIRC are at least
 as burdensome as those set forth in 37 CFR 1.313(b) and
 (c) . Accordingly, where a submission of patents and printed
 publications or other information described in 37 CFR 1.98(a) is made after NIRC,
 the patent owner must provide an unequivocal statement as to why the art submitted makes
 at least one claim unpatentable, an amendment to such claim or claims, and an
 explanation as to how the amendment causes such claim or claims to be patentable. This
 is in addition to the above-discussed factual accounting providing a sufficient
 explanation of why the information submitted could not have been submitted earlier (see
 item (A) above). 
 

 No consideration will be given to a third party requester
 submission of patents and printed publications, or other information, that is filed in
 the reexamination proceeding unless it is part of the request for reexamination or the
 requester’s reply under 37 CFR 1.535 . See 37 CFR 1.540 .
 

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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 20:50:44