MPEP § 2266 — MPEP § 2266
Current through: 2022-07-01

2266-Responses 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Patent Laws, Regulations, Policies & Procedures 

 
 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2266 
 

 
 
 
 
 
 2266 Responses [R-10.2019]

 
 37 CFR 1.111 Reply by applicant or patent owner to a non-final Office action. 

 
 (a)
 
 (1) If the Office action after the first examination
 ( §
 1.104 ) is adverse in any respect, the applicant or
 patent owner, if he or she persists in his or her application for a patent
 or reexamination proceeding, must reply and request reconsideration or
 further examination, with or without amendment. See §§
 1.135 and 1.136 for time for reply
 to avoid abandonment.
 

 
 
 (2) Supplemental replies . 
 (i) A reply that is supplemental to a reply
 that is in compliance with § 1.111(b) will
 not be entered as a matter of right except as provided in paragraph
 (a)(2)(ii) of this section. The Office may enter a supplemental reply
 if the supplemental reply is clearly limited to:
 
 (A) Cancellation of a claim(s);

 
 
 (B) Adoption of the examiner suggestion(s);

 
 
 (C) Placement of the application in condition for
 allowance;
 

 
 
 (D) Reply to an Office requirement made after the
 first reply was filed;
 

 
 
 (E) Correction of informalities (e.g.,
 typographical errors); or
 

 
 
 (F) Simplification of issues for appeal.

 
 

 
 
 (ii) A supplemental reply will be entered if the
 supplemental reply is filed within the period during which action by
 the Office is suspended under § 1.103(a) or
 (c) .
 

 
 

 
 

 (b) In order to be entitled to reconsideration or further
 examination, the applicant or patent owner must reply to the Office action. The
 reply by the applicant or patent owner must be reduced to a writing which
 distinctly and specifically points out the supposed errors in the examiner’s
 action and must reply to every ground of objection and rejection in the prior
 Office action. The reply must present arguments pointing out the specific
 distinctions believed to render the claims, including any newly presented claims,
 patentable over any applied references. If the reply is with respect to an
 application, a request may be made that objections or requirements as to form not
 necessary to further consideration of the claims be held in abeyance until
 allowable subject matter is indicated. The applicant’s or patent owner’s reply
 must appear throughout to be a bona fide attempt to advance the
 application or the reexamination proceeding to final action. A general allegation
 that the claims define a patentable invention without specifically pointing out
 how the language of the claims patentably distinguishes them from the references
 does not comply with the requirements of this section.
 

 (c) In amending in reply to a rejection of claims in an application
 or patent under reexamination, the applicant or patent owner must clearly point
 out the patentable novelty which he or she thinks the claims present in view of
 the state of the art disclosed by the references cited or the objections made. The
 applicant or patent owner must also show how the amendments avoid such references
 or objections.
 

 
 

 
 37 CFR 1.550 Conduct of ex parte reexamination proceedings. 

 
 (a) All ex parte reexamination proceedings,
 including any appeals to the Board of Patent Appeals and Interferences, will be
 conducted with special dispatch within the Office. After issuance of the
 ex parte reexamination order and expiration of the time for
 submitting any responses, the examination will be conducted in accordance with
 §§
 1.104 through 1.116 and will result in the
 issuance of an ex parte reexamination certificate under
 §
 1.570 .
 

 (b) The patent owner in an ex parte reexamination
 proceeding will be given at least thirty days to respond to any Office action. In
 response to any rejection, such response may include further statements and/or
 proposed amendments or new claims to place the patent in a condition where all
 claims, if amended as proposed, would be patentable.
 

 (c) The time for taking any action by a patent owner in an
 ex parte reexamination proceeding may be extended as
 provided in this paragraph.
 
 (1) Any request for such an extension must
 specify the requested period of extension and be accompanied by the petition
 fee set forth in § 1.17(g) .
 

 (2) Any request for an extension in a third party
 requested ex parte reexamination must be filed on or
 before the day on which action by the patent owner is due, and the mere
 filing of such a request for extension will not effect the extension. A
 request for an extension in a third party requested ex
 parte reexamination will not be granted in the absence of
 sufficient cause or for more than a reasonable time.
 

 (3) Any request for an extension in a patent
 owner requested or Director ordered ex parte 
 reexamination for up to two months from the time period set in the Office
 action must be filed no later than two months from the expiration of the
 time period set in the Office action. A request for an extension in a patent
 owner requested or Director ordered ex parte 
 reexamination for more than two months from the time period set in the
 Office action must be filed on or before the day on which action by the
 patent owner is due, and the mere filing of a request for an extension for
 more than two months from the time period set in the Office action will not
 effect the extension. The time for taking action in a patent owner requested
 or Director ordered ex parte reexamination will not be
 extended for more than two months from the time period set in the Office
 action in the absence of sufficient cause or for more than a reasonable
 time.
 

 (4) The reply or other action must in any event
 be filed prior to the expiration of the period of extension, but in no
 situation may a reply or other action be filed later than the maximum time
 period set by statute.
 

 (5) See §
 90.3(c) of this title for extensions of time for
 filing a notice of appeal to the U.S. Court of Appeals for the Federal
 Circuit or for commencing a civil action.
 

 
 

 (d) If the patent owner fails to file a timely and appropriate
 response to any Office action or any written statement of an interview required
 under §
 1.560(b) , the prosecution in the ex parte 
 reexamination proceeding will be a terminated prosecution, and the Director will
 proceed to issue and publish a certificate concluding the reexamination proceeding
 under § 1.570 in accordance with the last action of the
 Office.
 

 (e) If a response by the patent owner is not timely filed in the
 Office, a petition may be filed pursuant to § 1.137 to revive a
 reexamination prosecution terminated under paragraph (d) of this section if the
 delay in response was unintentional.
 

 (f) The reexamination requester will be sent copies of Office actions
 issued during the ex parte reexamination proceeding. After
 filing of a request for ex parte reexamination by a third party
 requester, any document filed by either the patent owner or the third party
 requester must be served on the other party in the reexamination proceeding in the
 manner provided by § 1.248 . The document must
 reflect service or the document may be refused consideration by the Office.
 

 (g) The active participation of the ex parte 
 reexamination requester ends with the reply pursuant to § 1.535 , and
 no further submissions on behalf of the reexamination requester will be
 acknowledged or considered. Further, no submissions on behalf of any third parties
 will be acknowledged or considered unless such submissions are:
 
 (1) in accordance with § 1.510 or
 §
 1.535 ; or
 

 (2) entered in the patent file prior to the date of the order
 for ex parte reexamination pursuant to § 1.525 .
 

 
 

 (h) Submissions by third parties, filed after the date of the order
 for ex parte reexamination pursuant to § 1.525 ,
 must meet the requirements of and will be treated in accordance with
 §
 1.501(a) .
 

 (i) A petition in an ex parte 
 reexamination proceeding must be accompanied by the fee set forth in
 §
 1.20(c)(6) except for petitions under paragraph (c) of this
 section to extend the period for response by a patent owner, petitions under
 paragraph (e) of this section to accept a delayed response by a patent owner,
 petitions under § 1.78 to accept an
 unintentionally delayed benefit claim, and petitions under § 1.530(l) 
 for correction of inventorship in a reexamination proceeding.
 

 
 

 Pursuant to 37 CFR 1.550(a) :
 

 
 “After issuance of the ex parte reexamination order and expiration
 of the time for submitting any responses, the examination will be conducted in
 accordance with §§ 1.104 through 1.116…”
 

 
 Accordingly, the provisions of 37 CFR 1.111 , other than the provision
 in 37 CFR
 1.111(a)(1) to “see . . . [37 CFR] 1.136 for time for reply to avoid
 abandonment”, apply to the response by a patent owner in a reexamination proceeding.
 

 The certificate of mailing and certificate of transmission procedures
 ( 37 CFR
 1.8 ), and the Priority Mail Express® mailing procedure
 ( 37 CFR
 1.10 ), may be used to file any response in a pending ex
 parte reexamination proceeding.
 

 The patent owner is required to serve a copy of any response made in the
 reexamination proceeding on the third party requester. 37 CFR 1.550(f) . See
 MPEP
 § 2266.03 for service of patent owner responses to an Office
 action.
 

 The patent owner will normally be given a period of 2 months to respond to
 the Office action. An extension of time can be obtained only in accordance with
 37 CFR
 1.550(c) . Note that 37 CFR 1.136 does not apply in
 reexamination proceedings. 
 

 If the patent owner fails to file a timely and appropriate response to any
 Office action, the prosecution of the reexamination proceeding will be terminated, unless
 the response is “not fully responsive” as defined in MPEP § 2266.01 or is an
 “informal submission” as defined in MPEP § 2266.02 . After the prosecution of
 the proceeding is terminated, the Director will proceed to issue and publish a
 reexamination certificate.
 

 Pursuant to 37 CFR 1.111(a)(2) , a response that is
 supplemental to a response that is in compliance with 37 CFR 1.111(b) will not be entered as
 a matter of right. The Office may enter a supplemental response if the supplemental
 response is clearly limited to: (A) cancellation of a claim(s); (B) adoption of the
 examiner suggestion(s); (C) placement of the proceeding in condition for Notice of Intent
 to Issue Reexamination Certificate (NIRC); (D) a response to an Office requirement made
 after the first response was filed; (E) correction of informalities (e.g., typographical
 errors); or (F) simplification of issues for appeal. When a supplemental response is filed
 in sufficient time to be entered into the reexamination proceeding before the examiner
 considers the prior response, the examiner may approve the entry of a supplemental response
 if, after a cursory review, the examiner determines that the supplemental response is
 limited to meeting one or more of the conditions set forth in 37 CFR
 1.111(a)(2)(i) .
 

 A supplemental response, which has not been approved for entry, will not
 be entered when a response to a subsequent Office action is filed, even if there is a
 specific request for its entry in the subsequent response. If a patent owner wishes to have
 the unentered supplemental response considered by the examiner, the patent owner must
 include the contents of the unentered supplemental response in a proper response to a
 subsequent Office action. 
 

 The patent owner in an ex parte reexamination
 proceeding must not file papers on behalf of a third party. 37 CFR 1.550(g) . If a
 third party paper accompanies, or is submitted as part of a timely filed response, the
 response and the third party paper are considered to be an improper submission under
 37 CFR
 1.550(g) , and the entire submission shall be
 returned to the patent owner, since the Office will not determine which portion of the
 submission is the third party paper. The third party paper will not be considered. The
 decision returning the improper response and the third party paper should provide an
 appropriate extension of time under 37 CFR 1.550(c) , if prior to a final
 rejection, to refile the patent owner response without the third party paper. See
 MPEP §
 2254 and § 2267 .
 

 Patent owner cannot submit an application data sheet (ADS) in a
 reexamination proceeding except as provided in MPEP §
 2258.02 .
 

 
 2266.01 Submission Not Fully Responsive to Non-Final Office Action [R-08.2017]

 A response by the patent owner will be considered not fully responsive
 to a non-final Office action where:
 

 
 (A) a bona fide response to an examiner’s
 non-final action is filed;
 

 (B) before the expiration of the permissible response period,
 including any extensions of the response period pursuant to 37 CFR
 1.550(c) ; 
 

 (C) but through an apparent oversight or inadvertence, some point
 necessary to a full response has been omitted (i.e., appropriate consideration of
 a matter that the action raised, or compliance with a requirement made by the
 examiner, has been omitted).
 

 
 Where patent owner’s amendment or response prior to final
 rejection is not fully responsive to an Office action in a reexamination and
 meets all of (A) through (C) above, the prosecution of the reexamination proceeding
 should not be terminated; but, rather, a practice similar to that of 37 CFR 1.135(c) 
 (which is directed to applications) may be followed. The examiner may treat a patent
 owner submission which is not fully responsive to a non-final Office action by:
 

 
 (A) waiving the deficiencies (if not serious) in the response and
 acting on the patent owner submission;
 

 (B) accepting the amendment as a response to the non-final Office
 action but notifying the patent owner (via a new Office action setting a new time
 period for response) that the omission must be supplied; or
 

 (C) notifying the patent owner that the response must be completed
 within the remaining period for response to the non-final Office action (or within
 any extension pursuant to 37 CFR 1.550(c) ) to avoid
 termination of the prosecution of the proceeding under 37 CFR
 1.550(d) . This third alternative should only be used in the
 very unusual situation where there is sufficient time
 remaining in the period for response (including extensions under 37 CFR
 1.550(c) ), as is discussed below.
 

 
 Where a patent owner submission responds to the rejections, objections,
 or requirements in a non-final Office action and is a bona fide 
 attempt to advance the reexamination proceeding to final action, but contains a minor
 deficiency (e.g., fails to treat every rejection, objection, or requirement), the
 examiner may simply act on the amendment and issue a new (non-final or final) Office
 action. The new Office action may simply reiterate the rejection, objection, or
 requirement not addressed by the patent owner submission, or the action may indicate
 that such rejection, objection, or requirement is no longer applicable. In the new
 Office action, the examiner will identify the part of the previous Office action which
 was not responded to and make it clear what is needed. Obviously, this course of action
 would not be appropriate in instances in which a patent owner submission contains a
 serious deficiency (e.g., the patent owner submission does not appear to have been filed
 in response to the non-final Office action).
 

 Where patent owner’s submission contains a serious deficiency (i.e.,
 omission) to be dealt with prior to issuing an action on the merits
 and the period for response has expired, or there is
 insufficient time remaining to take corrective action before the expiration of the
 period for response, the patent owner should be notified of the deficiency and what is
 needed to correct the deficiency, and given a new time period for response. The patent
 owner must supply the omission within the new time period for response (or any
 extensions under 37
 CFR 1.550(c) thereof) to avoid termination of the prosecution of
 the proceeding under 37 CFR 1.550(d) . The patent owner may also file a further
 response as permitted under 37 CFR 1.111 . This is analogous to
 37 CFR
 1.135(c) for an application. 
 

 Form paragraph 22.14 may be used where a bona
 fide response is not entirely responsive to a non-final Office action.
 

 ¶ 22.14 Submission Not Fully Responsive to Non-Final Office Action - Ex
 Parte Reexamination
 

 The communication filed on
 [1] is not fully responsive to the prior Office action. [2] . The
 response appears to be bona fide , but through an apparent oversight or
 inadvertence, consideration of some matter or compliance with some requirement has been
 omitted. Patent owner is required to deal with the omission to thereby provide a full response
 to the prior Office action. 
 

 A shortened statutory period for
 response to this letter is set to expire [3] from the mailing date of this
 letter. If patent owner fails to timely deal with the omission and thereby provide a full
 response to the prior Office action, prosecution of the present reexamination proceeding will
 be terminated. 37 CFR
 1.550(d) .
 

 Examiner Note:
 
 1. In bracket 2, the examiner
 should explain the nature of the omitted point necessary to complete the response, i.e.,
 what part of the Office action was not responded to. The examiner should also make it
 clear what is needed to deal with the omitted point. 
 

 2. In bracket 3, if the reexamination
 was requested by a third party requester, the examiner should insert “ONE MONTH or
 thirty days, whichever is longer”. If the reexamination was requested by the patent
 owner, if the reexamination was ordered under 
 35 U.S.C. 257 , or if it is a
 Director-ordered reexamination, the examiner should insert “TWO MONTHS”.
 

 3. This paragraph may be used for a
 patent owner communication that is not completely responsive to the outstanding (i.e.,
 prior) Office action. See MPEP § 2266.01 .
 

 4. This practice does not apply
 where there has been a deliberate omission of some necessary part of a complete
 response.
 

 5. This paragraph is only used for
 a response made prior to final rejection. After final rejection, an advisory Office
 action and Form PTOL 467 should be used, and the patent owner informed of any non-entry
 of the amendment. 
 
 
 

 In the very unusual situation where there is sufficient time remaining
 in the period for response (including extensions under 37 CFR 1.550(c) ),
 the patent owner may simply be notified that the omission must be supplied within the
 remaining time period for response. This notification should be made, first by
 telephone, or by email if authorized by the patent owner and contact could not be made
 via telephone. An interview summary record (see MPEP § 2281 ) must be completed and
 entered into the file of the reexamination proceeding to provide a record of such
 notification. If the examiner is not successful in contacting the patent owner, the
 procedure set forth above should be followed.
 

 The practice of giving the patent owner a time period to supply an
 omission in a bona fide response (which is analogous to that set
 forth in 37 CFR
 1.135(c) for an application) does not apply where there has been a
 deliberate omission of some necessary part of a complete response; rather, it is
 applicable only when the missing matter or lack of compliance is considered
 by the examiner as being “inadvertently omitted.” Once an inadvertent omission is
 brought to the attention of the patent owner, the question of inadvertence no longer
 exists. Therefore, a second Office action giving another new time period to supply the
 omission would not be appropriate. However, if patent owner’s response to the
 notification of the omission raises a different issue of a different inadvertently
 omitted matter, a second Office action may be given.
 

 This practice authorizes, but does not require, an examiner to give the
 patent owner a new time period to supply an omission. Thus, where the examiner concludes
 that the patent owner is attempting to abuse the practice to obtain additional time for
 filing a response, the practice should not be followed. If time still remains for
 response, the examiner may telephone the patent owner and inform the patent owner that
 the response must be completed within the period for response to the non-final Office
 action or within any extension pursuant to 37 CFR 1.550(c) to avoid termination
 of the prosecution of the reexamination proceeding.
 

 The practice of giving the patent owner a time period to supply an
 omission in a bona fide response does not apply after a
 final Office action. If a bona fide response to an examiner’s action
 is filed after final rejection (before the expiration of the permissible
 response period), but through an apparent oversight or inadvertence, some point
 necessary to fully respond has been omitted, the examiner should not issue
 (to the patent owner) a notice of failure to fully respond. Rather, an advisory Office
 action (form PTOL-467) should be issued with an explanation of the omission. The time
 period set in the final rejection continues to run and is extended by two months if the
 response is the first response after the final rejection in accordance with
 the guidelines set forth in MPEP § 2265 . See also
 MPEP
 § 2272 .
 

 Amendments after final rejection are approved for entry only if they
 place the proceeding in condition for issuance of a reexamination certificate or in
 better form for appeal. Otherwise, they are not approved for entry. See
 MPEP
 § 714.12 and § 714.13 . Thus, an amendment after
 final rejection should be denied entry if some point necessary for a complete response
 under 37 CFR
 1.113 was omitted, even where the omission was through an apparent
 oversight or inadvertence. Where a submission after final Office action (e.g., an
 amendment filed under 37 CFR 1.116 ) does not place the proceeding in condition for
 issuance of a reexamination certificate, the period for response continues to run until
 a response under 37 CFR 1.113 (i.e., a notice of appeal or an amendment that
 places the proceeding in condition for issuance of a reexamination certificate) is
 filed. Where a submission after appeal (e.g., an amendment filed under 37 CFR 41.33 ) does
 not place the proceeding in condition for issuance of a reexamination certificate, the
 period for filing an appeal brief continues to run until an appeal brief or an amendment
 that places the proceeding in condition for issuance of a reexamination certificate is
 filed. The nature of the omission is immaterial. The examiner cannot give the patent
 owner a time period to supply the omission.
 

 The examiner has the authority to enter the response, withdraw the
 final Office action, and issue a new Office action, which may be a final Office action,
 if appropriate, or an action in an otherwise allowable application under Ex
 parte Quayle, 25 USPQ 74, 1935 C.D. 11 (Comm’r Pat. 1935), if appropriate.
 This course of action is within the discretion of the examiner. However, the examiner
 should recognize that substantial patent rights will be at issue with no opportunity for
 the patent owner to refile under 37 CFR 1.53(b) or 1.53(d) in order
 to continue prosecution nor to file a request for continued examination under
 37 CFR
 1.114 . Thus, where the time has expired for response and the
 amendment submitted would place the proceeding in condition for issuance of a
 reexamination certificate except for an omission through apparent oversight or
 inadvertence, the examiner should follow this course of action.
 

 

 
 2266.02 Examiner Issues Notice of Defective Paper in Ex
 Parte Reexamination [R-07.2015]
 

 Even if the substance of a submission is complete, the submission can
 still be defective, i.e., an “informal submission.” Defects in the submission can be,
 for example:
 

 
 (A) The paper filed does not include proof of service;

 (B) The paper filed is unsigned;

 (C) The paper filed is signed by a non-practitioner who is not of
 record;
 

 (D) The amendment filed by the patent owner does not comply with
 37 CFR
 1.530(d) - (j) ;
 

 (E) The amendment filed by the patent owner does not comply with
 37 CFR
 1.20(c)(3) and/or 37 CFR 1.20(c)(4) .
 

 
 Where a submission made prior to final rejection is
 defective (informal), forms PTOL-475 and PTO-2311 are used to provide notification of
 the defects present in the submission. Form PTOL-475 provides notification of the
 defect(s) in a submission filed in a third-party requested ex parte 
 reexamination, while form PTO-2311 provides notification of the defect(s) in a
 submission filed a in patent owner requested ex parte reexamination
 (including a reexamination ordered under 35 U.S.C. 257 ) or Director ordered
 ex parte reexamination. In many cases, it is only necessary to
 check the appropriate box on the form and fill in the blanks. However, if the defect
 denoted by one of the entries on the appropriate form needs further clarification (such
 as the specifics of why the amendment does not comply with 37 CFR
 1.530(d)-(j) ), the additional information should be set forth on a
 separate sheet of paper which is then attached to the form.
 

 The defects identified above as (A) through (E) are specifically
 included in form PTOL-475 and PTO-2311, with the exception of (A), which only appears in
 form PTOL-475 (proof of service is inapplicable in patent owner requested
 reexaminations). If the submission contains a defect other than those specifically
 included on the form, the “other” box on the form is to be checked and the defect
 explained in the space provided for the explanation. For example, a response might be
 presented on easily erasable paper, and thus, a new submission would be needed.
 

 A time period from the mailing date of the notice will be set in the
 appropriate form (PTOL-475 or PTO-2311) for correction of the defect(s). Extension of
 time to correct the defect(s) may be requested under 37 CFR 1.550(c) . If, in response to
 the notice, the defect still is not corrected, the submission will not be entered. If
 the failure to comply with the notice results in a patent owner failure to file a timely
 and appropriate response to any Office action, the prosecution of the reexamination
 proceeding generally will be terminated under 37 CFR 1.550(d) .
 

 If a defective (informal) response to an examiner’s action is filed
 after final rejection (before the expiration of the permissible response
 period), the examiner should not issue a form PTOL-475 or form PTO-2311
 notification to the patent owner. Rather, an advisory Office action (form PTOL-467 or
 PTOL-467A) should be issued with an explanation of the defect (informality). The time
 period set in the final rejection continues to run and is extended by two months if the
 response is the first response after the final rejection in accordance with the
 guidelines set forth in MPEP § 2265 . See also MPEP § 2272 .
 

 

 

 

 
 2266.03 Service of Papers [R-08.2017]

 
 37 CFR 1.510 Request for ex parte reexamination. 

 *****

 
 (b) Any request for reexamination must include the following
 parts:
 
 *****

 (5) A certification that a copy of the request filed by a
 person other than the patent owner has been served in its entirety on the
 patent owner at the address as provided for in §
 1.33(c) . The name and address of the party served
 must be indicated. If service was not possible, a duplicate copy must be
 supplied to the Office.
 

 
 

 
 *****

 

 
 37 CFR 1.550 Conduct of ex parte reexamination proceedings. 

 *****

 
 (f) The reexamination requester will be sent copies of Office
 actions issued during the ex parte reexamination proceeding.
 After filing of a request for ex parte reexamination by a
 third party requester, any document filed by either the patent owner or the
 third party requester must be served on the other party in the reexamination
 proceeding in the manner provided by § 1.248 . The document must
 reflect service or the document may be refused consideration by the Office.
 

 
 *****

 

 Any paper filed with the Office in a third party requested
 reexamination, i.e., any submission made by either the patent owner or the third party
 requester, must be served on every other party in the reexamination proceeding.
 

 As proof of service, the party submitting the paper to the Office must
 attach a certificate of service to the paper. It is required that the name and address
 of the party served, and the method of service be set forth in the certificate of
 service. Further, a copy of the certificate of service must be attached with the copy of
 the paper that is served on the other party.
 

 Any paper for which proof of service is required, which is filed
 without proof of service, may be denied consideration. Where no proof of service is
 included, the Central Reexamination Unit should immediately contact the party making the
 submission to see whether the indication of proof of service was inadvertently omitted
 from the submission but there was actual service.
 

 If service was in fact made, the party making the submission should be
 advised to submit a supplemental paper indicating the manner and date of service. The
 Central Reexamination Unit should enter the submission for consideration, and annotate
 the submission with:
 

 “Service confirmed by [name of person] on [date]”

 If no service was made, or the party making the submission cannot be
 contacted where an effort to do so was made, the submission is placed in the
 reexamination file and normally is not considered. Where the submission is not
 considered because of a service defect, the submission is added to the IFW file history
 as an unentered paper with a “N/E” notation, along with a brief annotation as to why the
 paper is not entered. The submission itself shall be annotated with “no service,” which
 also can be crossed through if the appropriate service is later made.
 

 If the party making the submission cannot be contacted, a Notice of
 Defective Paper (PTOL-475), giving one month or thirty days, whichever is longer, to
 complete the paper, with a supplemental paper indicating the manner and date of service,
 will generally be mailed to the party.
 

 If it is known that service of a submission was not made, notice of the
 requirement for service of copy may be given (to the party that made the submission), if
 appropriate, and a one month or thirty days, whichever is longer, time period is set.
 Form paragraph 22.15 may be used to give notice.
 

 ¶ 22.15 Lack of Service - 37 CFR 1.550(f)

 The submission filed on
 [1] is defective because it appears that the submission was not served on the
 [2] . After the filing of a request for reexamination by a third party
 requester, any document filed by either the patent owner or the third party requester must be
 served on the other party (or parties where two or more third party requester proceedings are
 merged) in the reexamination proceeding in the manner provided in 37 CFR 1.248 . See
 37 CFR
 1.550(f) .
 

 It is required that service of the submission be made, and a certificate of service be provided to the Office within a shortened
 statutory period of ONE MONTH or THIRTY DAYS, whichever is longer, from the mailing date of this letter. If service of the
 submission is not timely made, the submission may be denied consideration.
 

 Examiner Note:
 
 1. This paragraph may be used where a submission to the Office was not served as required in a third party requester reexamination
 proceeding.
 

 2. In bracket 2, insert --patent owner-- or --third party requester--, whichever is appropriate.
 
 

 The cover sheet to be used for mailing the notice will be form
 PTOL-473.
 

 If the submission that lacks proof of service is a
 response to a final rejection, form PTOL-475 or form paragraph
 22.15 should
 not be used. Rather, an advisory Office action (form PTOL-467 or PTOL-467A) should be
 issued with an explanation that the response lacks proof of service. The time period set
 in the final rejection continues to run and is extended by two months if the response is
 the first response after the final rejection in accordance with the guidelines set forth
 in MPEP §
 2265 . See also MPEP § 2272 .
 

 The failure of a party to serve the submission in response to the
 notice will have the following consequences:
 

 
 (A) For a patent owner statement or a third party reply, the
 submission may be refused consideration by the Office. Where consideration is
 refused, the submission will not be addressed in the reexamination proceeding
 other than to inform parties of the lack of consideration thereof;
 

 (B) For a patent owner response to an Office action, the response may
 be refused consideration by the Office. Where consideration of a response is
 refused, the prosecution of the proceeding will be terminated in accordance with
 37 CFR
 1.550(d) , unless the patent owner has otherwise completely
 responded to the Office action.
 

 
 See MPEP
 § 2220 as to the initial third party request.
 

 See MPEP
 § 2249 as to the patent owner statement.
 

 See MPEP
 § 2251 as to third party reply.
 

 See MPEP
 § 2266 as to patent owner responses to an Office action. 
 

 

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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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 03/09/2026 20:50:44