MPEP § 2206 — MPEP § 2206
Current through: 2022-07-01

2206-Submission and Handling of Prior Art or Section 301 Written Statements 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2206 
 

 
 
 
 
 
 2206 Submission and Handling of Prior Art or Section 301 Written
 Statements [R-01.2024]
 

 A submission of prior art patents or printed publications
 and/or written statements under 37 CFR 1.501 may be submitted to the
 Office via mail, hand-delivery, or via the USPTO patent electronic filing system if the
 submission is properly filed as a prior art submission under 37 CFR 1.501 and not
 as a follow-on document or other paper. Both registered and unregistered users of the USPTO
 patent electronic filing system may make a submission electronically for a patent under
 37 CFR
 1.501 . A submission under 37 CFR 1.501 cannot be filed via the
 USPTO patent electronic filing system for design or plant patents. All submissions under
 37 CFR
 1.501 are reviewed for compliance prior to entry into the patent
 file. A submission submitted via the USPTO patent electronic filing system may not be
 submitted as a follow-on paper into the patent (similar to Third-Party Preissuance
 submissions) because the submission would be directly entered into the patent file without
 review. The limitations on the method of submission allow staff to review the papers to
 determine if they are compliant before they are entered into the patent file. Submitting
 papers or documents via the USPTO patent electronic filing system directly into the patent
 by someone other than patent owner’s representative is a violation of the Office's
 electronic filing agreement (e.g., the Patent Electronic System Subscriber Agreement) and
 may lead to revocation of the account used for the submission. 
 

 Submissions under 37 CFR 1.501 received in the Office
 will be forwarded to the Technology Center (TC) that currently examines the technology
 where the patent to which the submission is directed is classified.
 

 It is the responsibility of the TC to promptly determine whether the
 submission meets the requirements of the statute and the rules and to enter it into the
 patent file at the appropriate time if proper.
 

 If a proper submission is filed after the date of an order for
 reexamination, the submission will be stored until the reexamination is concluded. Note
 37 CFR
 1.502 and 1.902 . After the reexamination
 proceeding is concluded, the submission is entered in the patent file. Submissions filed
 after the date of an order for reexamination will not be considered by the examiner during
 the reexamination.
 

 I. SUBMISSION QUALIFIES FOR ENTRY UNDER 37 CFR 1.501 
 

 A. Submission by Third Party 
 

 1. Prior to Order in Any Pending Reexamination Proceeding If the 37 CFR 1.501 submission is
 proper (i.e., is limited to patents, printed publications, and/or patent owner
 written claim scope statements and additional information and includes the
 requisite citation description and information and proof of service on the patent
 owner), it should be entered into the patent file. 
 

 2. After the Order in Any Pending Reexamination Proceeding If the 37 CFR 1.501 submission is filed
 after an order for reexamination in a pending reexamination proceeding, the submission
 must include proof of service of a copy of the submission on the patent owner. If the
 submission satisfies the conditions set forth in subsection I.A.1. above, and includes
 proof of service on the patent owner, the submission will be deemed to be proper. A
 proper submission is not entered after an order for reexamination in a pending
 reexamination because of the ongoing reexamination. It will be stored until the
 conclusion of the reexamination proceeding, after which the submission will be entered
 into the patent file. The patent owner and third-party submitter (if known) should be
 alerted of this by a letter providing notification. If there is a third-party requester,
 the third-party requester should also be sent a copy of the notification letter pursuant
 to 37 CFR
 1.550(f) . Such notification is important to enable the patent
 owner to consider submitting the prior art under 37 CFR 1.555 or 1.933 during the
 reexamination. Such notification will also enable the third-party submitter to consider
 the desirability of filing a separate request for reexamination. 
 

 B. Submission Filed by Patent Owner If a proper 37 CFR 1.501 submission is filed
 by the patent owner, it should be entered in the file. This is true whether the
 submission is filed prior to or after an order for reexamination has been mailed. No
 notification to the patent owner is necessary.
 

 

 II. SUBMISSION DOES NOT QUALIFY FOR ENTRY UNDER 37 CFR 1.501 
 

 A. Submission by Third Party If the 37 CFR 1.501 submission is not
 proper because it is not limited to patents, printed publications, and/or patent
 owner written claim scope statements and additional information or it fails to
 include the requisite description and information or proof of service, it will not be
 entered into the patent file. The third-party submitter (if known) and the patent
 owner may, as described below, be notified that the citation submission is improper
 and that it is not being entered in the patent file. If the 37 CFR 1.501 
 submission is submitted via the USPTO patent electronic filing system, the
 third-party submitter or the patent owner may request to be notified that the
 citation submission is improper by requesting notification and entry of an email
 address in the appropriate field provided.
 

 The handling of the submission will vary depending on
 the particular following situations:
 

 1. Service of Copy Included Where the submission includes an indication of service of copy on
 the patent owner and the identity of the third-party sender is known, the original
 submission should be returned to the third-party sender, discarded, or closed if
 inadvertently entered into the file, and the third-party submitter will be
 notified. Patent owner should be notified of non-entry.
 

 2. Service of Copy Not Included; Identity of Third-Party Sender Known Where the submission does not include an indication of service on
 the patent owner and the identity of the third-party submitter is known, the
 submission should be returned to the third-party submitter, discarded, or closed
 if inadvertently entered into the file, and the third-party submitter will be
 notified. Patent owner will not be notified. 
 

 3. Service of Copy Not Included; Identity of Third-Party Sender Not
 Known Where the submission does not include an indication of service on
 the patent owner and the identity of the third-party submitter is not known, the
 original submission papers will be discarded. Patent owner will not be notified.
 
 

 B. Citation Filed by the Patent Owner If an improper submission under 37 CFR 1.501 is filed by the
 patent owner prior to an order for reexamination, it should not be entered in the
 file. 
 

 The patent owner should be notified of the non-entry, and the
 submission should be returned to the patent owner, discarded, or closed if
 inadvertently entered in the file. Proper submissions filed by the patent owner in a
 reexamination proceeding after an order for reexamination should be entered in the
 file under 37 CFR
 1.555 (for ex parte reexamination) or under
 37 CFR
 1.933 (for inter partes reexamination).
 

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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