MPEP § 2272 — MPEP § 2272
Current through: 2022-07-01

2272-After Final Practice 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2272 
 

 
 
 
 
 
 2272 After Final Practice [R-07.2015]

 It is intended that prosecution before the examiner in a reexamination
 proceeding will be concluded with the final action. Once a final rejection that is not
 premature has been entered in a reexamination proceeding, the patent owner no longer has
 any right to unrestricted further prosecution. Consideration of amendments submitted after
 final rejection and prior to, or with, the appeal will be governed by the strict standards
 of 37 CFR
 1.116 . Further, consideration of amendments submitted after appeal
 will be governed by the strict standards of 37 CFR 41.33 . Both the examiner and the
 patent owner 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) , and with
 no opportunity to file a request for continued examination under 37 CFR 1.114 .
 Accordingly, both the examiner and the patent owner should identify and develop all issues
 prior to the final Office action, including the presentation of evidence under
 37 CFR
 1.131(a) and 1.132 .
 

 In the event that the patent owner is of the opinion that (A) a final
 rejection is improper or premature, or (B) that an amendment submitted after final
 rejection complies with 37 CFR 1.116 but the examiner improperly refused entry of such an
 amendment, the patent owner may file a petition under 37 CFR 1.181 requesting that the final
 rejection be withdrawn and that prosecution be reopened, or file a petition under
 37 CFR
 1.181 requesting entry of the amendment, where appropriate. The
 petition under 37 CFR
 1.181 must be filed within the time period for filing a notice of
 appeal. Note that the filing of a petition under 37 CFR 1.181 does not toll
 the time period for filing a notice of appeal.
 

 I. FINAL REJECTION — TIME FOR RESPONSE The statutory period for response to a final rejection in a
 reexamination proceeding will normally be two (2) months. If a response to the final
 rejection is filed, the time period set in the final rejection continues to run. In any
 ex parte reexamination proceeding, including third party requested
 reexaminations, patent owner requested reexaminations (including reexaminations ordered
 under 35
 U.S.C. 257 ) or Director ordered reexaminations, the time period is
 automatically extended by two months (in accordance with the guidelines set forth in
 MPEP §
 2265 ) if the response is the first response after the final
 rejection and a notice of appeal has not yet been filed. Any advisory Office action
 using form PTOL-467, Ex Parte Reexamination Advisory Action Before the Filing of an Appeal Brief, which is
 issued in reply to patent owner’s response after final rejection (and prior to the
 filing of the notice of appeal) will inform the patent owner of the automatic two month
 extension of time. It should be noted that the filing of any timely first response to a
 final rejection (even an informal response or even a response that is not signed) will
 automatically result in the extension of the shortened statutory period for an
 additional two months. Note further that the patent owner is entitled to know the
 examiner’s ruling on a timely response filed after final rejection before being required
 to file a notice of appeal. Notification of the examiner’s ruling should reach the
 patent owner with sufficient time for the patent owner to consider the ruling and act on
 it. Accordingly, the period for response to the final rejection should be appropriately
 extended in the examiner’s advisory action. See Theodore Groz & Sohne &
 Ernst Bechert Nadelfabrik KG v. Quigg, 10 USPQ2d 1787 (D.D.C. 1988). The
 period for response may not, however, be extended to run past 6 months from the date of
 the final rejection.
 

 The present after final practice of providing an automatic
 two-month extension for filing a response to a final Office action is in conformance
 with the minimum reply period provisions of the Patent Law Treaty (PLT). For this
 reason, additional “no cause” extensions of time for filing a response to a final Office
 action in patent owner requested or Director ordered reexaminations are not available.
 Any extensions of time for more than two months from the time for response set in the
 final rejection must provide a showing of sufficient cause in accordance with
 37 CFR
 1.550(c)(3) . See MPEP § 2265 , subsections VI-VII.
 

 II. ACTION BY EXAMINER It should be kept in mind that a patent owner cannot, as a matter of
 right, amend any finally rejected claims, add new claims after a final rejection, or
 reinstate previously canceled claims. For an amendment filed after final rejection and
 prior to the appeal brief, a showing under 37 CFR 1.116(b) is required and will
 be evaluated by the examiner for all proposed amendments after final rejection except
 where an amendment merely cancels claims, adopts examiner’s suggestions, removes issues
 for appeal, or in some other way requires only a cursory review by the examiner. An
 amendment filed at any time after final rejection but before an appeal brief is filed,
 may be entered upon or after filing of an appeal provided:
 

 
 (A) the total effect of the amendment is to cancel claims or comply
 with any requirement of form expressly set forth in a previous Office action, or
 present rejected claims in better form for consideration on appeal;
 

 
 
 (B) for an amendment touching the merits of the patent under
 reexamination, the patent owner provides a showing of good and sufficient reasons
 why the amendment is necessary and was not earlier presented.
 

 
 The first proposed amendment after final action in a reexamination
 proceeding will be given sufficient consideration to determine whether it places all the
 claims in condition where they are patentable and/or whether the issues on appeal are
 reduced or simplified. Unless the proposed amendment is entered in its entirety, the
 examiner will briefly explain the reasons for not entering a proposed amendment. For
 example, if the claims as amended present a new issue requiring further consideration or
 search, the new issue should be identified and a brief explanation provided as to why a
 new search or consideration is necessary. The patent owner should be notified if certain
 portions of the amendment would be entered if a separate paper was filed containing only
 such amendment.
 

 Any second or subsequent amendment after final will be considered only
 to the extent that it removes issues for appeal or puts a claim in obvious patentable
 condition.
 

 Since patents undergoing reexamination cannot become abandoned and
 cannot be refiled, and since the holding of claims unpatentable and canceled in a
 certificate is absolutely final, it is appropriate that the examiner consider the
 feasibility of entering amendments touching the merits after final rejection or after
 appeal has been taken, where there is a showing why the amendments are necessary and a
 suitable reason is given why they were not earlier presented.
 

 The practice of giving the patent owner a time period to supply an
 omission in a bona fide response (as set forth in
 MPEP §
 2266.01 ) 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
 (e.g., form PTOL-467) should be issued with an explanation of the omission. 
 

 Likewise, the practice of notifying the patent owner of the defects
 present in a submission via form PTOL-475 or form PTO-2311 and setting a time period for
 correction of the defect(s) (as set forth in MPEP § 2266.02 ) does not 
 apply after a final Office action. 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
 (e.g., form PTOL-467) should be issued with an explanation of the defect (informality)
 being provided in the advisory 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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 Last Modified: 
 
 03/09/2026 20:49:35