MPEP § 2280 — MPEP § 2280
Current through: 2022-07-01

2280-Information Material to Patentability in Reexamination Proceeding Filed under 35 U.S.C. 302 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2280 
 

 
 
 
 
 
 2280 Information Material to Patentability in Reexamination Proceeding
 Filed under 35 U.S.C. 302 [R-08.2017]
 

 
 37 CFR 1.555 Information material to patentability in ex parte reexamination and inter partes
 reexamination proceedings. 

 
 (a) A patent by its very nature is affected with a public interest.
 The public interest is best served, and the most effective reexamination occurs
 when, at the time a reexamination proceeding is being conducted, the Office is
 aware of and evaluates the teachings of all information material to patentability
 in a reexamination proceeding. Each individual associated with the patent owner in
 a reexamination proceeding has a duty of candor and good faith in dealing with the
 Office, which includes a duty to disclose to the Office all information known to
 that individual to be material to patentability in a reexamination proceeding. The
 individuals who have a duty to disclose to the Office all information known to
 them to be material to patentability in a reexamination proceeding are the patent
 owner, each attorney or agent who represents the patent owner, and every other
 individual who is substantively involved on behalf of the patent owner in a
 reexamination proceeding. The duty to disclose the information exists with respect
 to each claim pending in the reexamination proceeding until the claim is
 cancelled. Information material to the patentability of a cancelled claim need not
 be submitted if the information is not material to patentability of any claim
 remaining under consideration in the reexamination proceeding. The duty to
 disclose all information known to be material to patentability in a reexamination
 proceeding is deemed to be satisfied if all information known to be material to
 patentability of any claim in the patent after issuance of the reexamination
 certificate was cited by the Office or submitted to the Office in an information
 disclosure statement. However, the duties of candor, good faith, and disclosure
 have not been complied with if any fraud on the Office was practiced or attempted
 or the duty of disclosure was violated through bad faith or intentional misconduct
 by, or on behalf of, the patent owner in the reexamination proceeding. Any
 information disclosure statement must be filed with the items listed in
 §
 1.98(a) as applied to individuals associated with the patent
 owner in a reexamination proceeding, and should be filed within two months of the
 date of the order for reexamination, or as soon thereafter as possible.
 

 (b) Under this section, information is material to patentability in a
 reexamination proceeding when it is not cumulative to information of record or
 being made of record in the reexamination proceeding, and
 
 (1) It is a patent or printed publication that establishes, by
 itself or in combination with other patents or printed publications, a
 prima facie case of unpatentability of a claim; or
 

 (2) It refutes, or is inconsistent with, a position the patent
 owner takes in:
 
 (i) Opposing an argument of unpatentability relied on by
 the Office, or
 

 (ii) Asserting an argument of patentability.

 
 

 
 

 
 A prima facie case of unpatentability of a claim
 pending in a reexamination proceeding is established when the information compels a
 conclusion that a claim is unpatentable under the preponderance of evidence,
 burden-of-proof standard, giving each term in the claim its broadest reasonable
 construction consistent with the specification, and before any consideration is given to
 evidence which may be submitted in an attempt to establish a contrary conclusion of
 patentability.
 

 
 (c) The responsibility for compliance with this section rests upon
 the individuals designated in paragraph (a) of this section and no evaluation will
 be made by the Office in the reexamination proceeding as to compliance with this
 section. If questions of compliance with this section are raised by the patent
 owner or the third party requester during a reexamination proceeding, they will be
 noted as unresolved questions in accordance with §
 1.552(c) .
 

 
 

 The duty of disclosure in reexamination proceedings filed under
 35 U.S.C.
 302 applies to the patent owner; to each attorney or agent who
 represents the patent owner, and to every other individual who is substantively involved on
 behalf of the patent owner. That duty is a continuing obligation on all such individuals
 throughout the proceeding. The continuing obligation during the reexamination proceeding is
 that any such individual to whom the duty applies who is aware of, or becomes aware of,
 patents or printed publications which (A) are material to patentability in a reexamination
 proceeding, and (B) which have not previously been made of record in the patent file, must
 bring such patents or printed publications to the attention of the Office.
 

 Such individuals are strongly encouraged to file information disclosure
 statements in accordance with 37 CFR 1.98 , within two months of the
 date of the order to reexamine, or as soon thereafter as possible, in order to bring the
 patents or printed publications to the attention of the Office. An information disclosure
 statement filed under 37
 CFR 1.555 by the patent owner after the order for reexamination and
 before the first action on the merits may be submitted as part of the statement under
 37 CFR
 1.530 , or it may be filed as a separate paper. If the information
 disclosure statement is filed as part of a statement under 37 CFR 1.530 , the
 submission may include a discussion of the patentability issues in the reexamination. If,
 however, the submission is filed as a separate paper, not part of a statement under
 37 CFR
 1.530 , the submission must be limited to a listing of the information
 disclosed and an explanation of its relevance. See 37 CFR 1.98 . Any discussion of the
 information disclosed relating to patentability issues in the reexamination would be
 improper.
 

 To comply with 37 CFR 1.98(a) as to documents cited in
 the patent or its parent applications that a party wishes to submit, the party must supply
 copies of the information. 37 CFR 1.98(a)(2) requires a legible
 copy of:
 

 
 (1) each foreign patent;

 (2) each publication or that portion which caused it to be listed, other
 than U.S. patents and U.S. patent application publications unless required by the
 Office;
 

 (3) for each cited pending unpublished U.S. application, the application
 specification including the claims, and any drawing of the application, or that
 portion of the application which caused it to be listed including any claims directed
 to that portion; 
 

 (4) all other information or that portion which caused it to be
 listed.
 

 
 The exception to the requirement for copies noted in 37 CFR 1.98(d) does
 not apply to ex parte and inter partes reexamination
 proceedings, since a reexamination proceeding does not rely on the patent for an earlier
 effective filing date.
 

 Any individual substantively involved in the reexamination proceeding
 filed under 35 U.S.C.
 302 may satisfy the duty by disclosing the information to the
 attorney or agent having responsibility for the reexamination proceeding or to a patent
 owner acting in their own behalf. A patent owner may satisfy the duty by disclosing the
 information to the attorney or agent having responsibility for the reexamination
 proceeding. An attorney, agent, or patent owner who receives information has no duty to
 submit such information if it is not material to patentability in
 the reexamination proceeding. See 37 CFR 1.555(b) for the definition of
 “material to patentability.”
 

 The responsibility of compliance with 37 CFR 1.555 rests on all such
 individuals. Any fraud practiced or attempted on the Office or any violation of the duty of
 disclosure through bad faith or intentional misconduct by any such individual results in
 noncompliance with 37 CFR
 1.555(a) . This duty of disclosure is consistent with the duty placed
 on patent applicants by 37 CFR 1.56 . Any such issues raised by the patent owner or the third
 party requester during a reexamination proceeding will merely be noted as unresolved
 questions under 37 CFR
 1.552(c) .
 

 All such individuals who fail to comply with 37 CFR 1.555(a) do so
 at the risk of diminishing the quality and reliability of the reexamination certificate
 issuing from the proceeding.
 

 However, the material to patentability standard set forth in
 37 CFR
 1.56(b) , which is applicable to patent applications, and not the
 standard set forth in 37
 CFR 1.555(b) , applies in ex parte reexamination
 proceedings ordered under 35 U.S.C. 257 (as a result of a
 supplemental reexamination proceeding). Like patent application examination, ex
 parte reexamination proceedings ordered under 35 U.S.C.
 257 are not limited to patents and printed publications. In contrast,
 the material to patentability standard under 37 CFR 1.555(b) , which is applicable to
 ex parte reexaminations filed under 35 U.S.C. 302 , is
 limited to patents and printed publications. Any reference to
 
 "applicant"
 
 
 in 37 CFR 1.56(b) 
 will be read as 
 "patent owner"
 
 
 in the context of
 ex parte reexamination proceedings ordered under 35 U.S.C.
 257 , because these proceedings are only available to a patent owner.
 See MPEP §
 2818.01 ; see also MPEP Chapter 2000 . 
 

 See MPEP §
 2282 ( ex parte reexamination) and
 MPEP §
 2686 ( inter partes reexamination) for the
 patent owner’s duty to disclose prior or concurrent proceedings in which the patent is or
 was involved.
 

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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 20:50:44