MPEP § 2209 — MPEP § 2209
Current through: 2022-07-01

2209-Ex Parte Reexamination 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2209 
 

 
 
 
 
 
 2209 Ex Parte Reexamination [R-07.2022]
 

 Procedures for reexamination of issued patents began on July 1, 1981, the
 date when the reexamination provisions of Public Law 96-517 came into effect.
 

 The reexamination statute, 35 U.S.C. 302 , and rules permit any
 person to file a request for an ex parte reexamination containing
 certain elements and the appropriate fee under 37 CFR 1.20(c)(1) or (c)(2) . The Office
 initially determines if “a substantial new question of patentability” ( 35 U.S.C. 303(a) ) is
 presented. If such a new question has been presented, reexamination will be ordered. The
 reexamination proceedings which follow the order for reexamination are very similar to
 regular examination procedures in patent applications; however, there are notable
 differences. For example, there are certain limitations as to the kind of rejections which
 may be made in a reexamination ordered under 35 U.S.C. 304 , special reexamination
 forms to be used, and time periods set to provide “special dispatch.” When the prosecution
 of a reexamination proceeding is terminated, a reexamination certificate is issued which
 indicates the status of all claims following the reexamination. 
 

 The following sections of this chapter explain the details of
 reexamination.
 

 The intent of the reexamination procedures covered in this chapter include
 the following:
 

 
 (A) To provide procedures for reexamination of patents;

 (B) To implement reexamination in an essentially ex
 parte manner;
 

 (C) To minimize the processing costs and complexities of
 reexamination;
 

 (D) To maximize respect for the reexamined patent;

 (E) To provide procedures for prompt and timely determinations by the
 Office in accordance with the “special dispatch” requirements of 35 U.S.C.
 305 .
 

 
 The basic characteristics of ex parte reexamination 
 are as follows:
 

 
 (A) Anyone can request reexamination at any time during the period of
 enforceability of the patent;
 

 (B) In ex parte reexaminations ordered under
 35 U.S.C.
 304 , prior art considered during reexamination is limited to
 prior art patents or printed publications applied under the appropriate parts of
 35 U.S.C.
 102 and 103 . Patents may also be applied
 in a double patenting rejection as discussed in MPEP § 2258 
 subsection I.D. (However, in ex parte reexaminations ordered under
 35
 U.S.C. 257 , the prior art considered during reexamination is
 not limited. See MPEP § 2801 );
 

 (C) A substantial new question of patentability must be present for
 reexamination to be ordered;
 

 (D) If ordered, the actual reexamination proceeding is ex
 parte in nature;
 

 (E) Decision on a request for reexamination submitted under
 35 U.S.C.
 302 must be made no later than 3 months from its filing, and
 the remainder of the proceeding must proceed with “special dispatch” within the
 Office. (Similarly, a decision on a request for supplemental examination submitted
 under 35
 U.S.C. 257 must be made no later than 3 months from its filing
 (see MPEP
 § 2815 ), and any ex parte reexamination
 proceeding ordered as a result of a supplemental examination proceeding must proceed
 with “special dispatch” within the Office);
 

 (F) If ordered, a reexamination proceeding will normally be conducted to
 its conclusion and the issuance of a reexamination certificate;
 

 (G) The scope of a claim cannot be enlarged by amendment;

 (H) All reexamination and patent files are open to the public, but see
 paragraph (I) below;
 

 (I) The reexamination file is scanned into IFW to provide an electronic
 format copy of the file. All public access to and copying of the reexamination file
 may be made from the electronic format copy available through Patent Center. Any
 remaining paper files are not available to the public. Images
 of non-patent literature (NPL) cited in public files are not available for either
 viewing or downloading through Patent Center. Certified copies of the full contents
 of the files, including NPL, are available from the Patent and Trademark Copy
 Fulfillment Branch of the Public Records Division, and may be ordered online through
 the Certified Copy Center storefront at https://certifiedcopycenter.uspto.gov .
 

 
 For a discussion of public access to papers filed in a supplemental
 examination proceeding, see MPEP § 2803.02 .
 

 Parties are cautioned that the reexamination statute,
 regulations, and published examining procedures do not countenance so-called “litigation
 tactics” in reexamination proceedings. The parties are expected to conduct themselves
 accordingly. For example, it is expected that submissions of papers that are not provided
 for in the reexamination regulations and/or appear to be excluded by the regulation will
 either be filed with an appropriate petition to accept the paper and/or waive the
 regulation(s), or not filed at all. Parties are advised that multiple submissions, such as
 a reply to a paper opposing a petition and a sur-reply directed to such a reply are not
 provided for in the reexamination regulations or examining procedures. It is expected that
 the parties will adhere to the provisions of 37 CFR 11.18(b) throughout the course
 of a reexamination proceeding.
 

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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