MPEP § 2216 — MPEP § 2216
Current through: 2022-07-01

2216-Substantial New Question of Patentability 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2216 
 

 
 
 
 
 
 2216 Substantial New Question of Patentability [R-07.2015]

 Under 35
 U.S.C. 304 , the Office must determine whether “a substantial new
 question of patentability” affecting any claim of the patent has been raised.
 37 CFR
 1.510(b)(1) requires that a request for ex parte 
 reexamination include “a statement pointing out each substantial new question of
 patentability based on prior patents and printed publications.” If such a new question is
 found, an order for ex parte reexamination of the patent is issued. It
 is therefore important that the request clearly set forth in detail what the requester
 considers the “substantial new question of patentability” to be in view of patents and
 printed publications cited under the provisions of 35 U.S.C. 302 . The request must point
 out how any questions of patentability raised are substantially different from those raised
 in the previous examination of the patent before the Office. 
 

 For requests filed under 35 U.S.C. 302 , it is not sufficient
 that a request for reexamination merely proposes one or more rejections of a patent claim
 or claims as a basis for reexamination. It must first be demonstrated that a patent or
 printed publication that is relied upon in a proposed rejection presents a new,
 non-cumulative technological teaching that was not previously considered and discussed on
 the record during the prosecution of the application that resulted in the patent for which
 reexamination is requested, and during the prosecution of any other prior proceeding
 involving the patent for which reexamination is requested. See also MPEP § 2242 . 
 

 The legal standard for ordering ex parte 
 reexamination, as set forth in 35 U.S.C. 303(a) , requires a
 substantial new question of patentability. The substantial new question of patentability
 may be based on art previously considered by the Office if the reference is presented in a
 new light or a different way that escaped review during earlier examination. The
 clarification of the legal standard for determining obviousness under 35 U.S.C. 103 in
 KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d
 1385 (2007) does not alter the legal standard for determining whether a substantial new
 question of patentability exists. The requirement for a substantial new question of
 patentability remains in place even if it is clear from the record of a patent for which
 reexamination is requested that the patent was granted because the Office did not show
 “motivation” to combine, or otherwise satisfy the teaching, suggestion, or motivation (TSM)
 test. Thus, a reexamination request relying on previously applied prior art that asks the
 Office to look at the art again based solely on the Supreme Court’s clarification of the
 legal standard for determining obviousness under 35 U.S.C. 103 in
 KSR, without presenting the art in new light or different way, will
 not raise a substantial new question of patentability as to the patent claims, and
 reexamination will not be ordered. 
 

 After the enactment of the Patent and Trademark Office Authorization Act
 of 2002 (“the 2002 Act”), a substantial new question of patentability can be raised by
 patents and printed publications “previously cited by or to the Office or considered by the
 Office” (“old art”). The 2002 Act did not negate the statutory requirement for a
 substantial new question of patentability that requires raising new questions about
 pre-existing technology. In the implementation of the 2002 Act, MPEP § 2242 , subsection
 II.A. was revised. The revision permits raising a substantial new question of patentability
 based solely on old art, but only if the old art is “presented/viewed in a new light, or in
 a different way, as compared with its use in the earlier examination(s), in view of a
 material new argument or interpretation presented in the request.” Thus, a request may
 properly raise a substantial new question of patentability by raising a material new
 analysis of previously considered reference(s) under the rationales authorized by
 KSR. 

 Questions relating to grounds of rejection other than those based on prior
 art patents or printed publications should not be included in a request filed
 under 35 U.S.C.
 302 and will not be considered by the examiner if included. Examples
 of such questions that will not be considered are public use, on sale, and conduct by
 parties.
 

 Affidavits or declarations or other written evidence which explain the
 contents or pertinent dates of prior art patents or printed publications in more detail may
 be considered in reexamination. See MPEP § 2258 .
 

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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