MPEP § 2273 — MPEP § 2273
Current through: 2022-07-01

2273-Appeal in Ex Parte Reexamination 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2273 
 

 
 
 
 
 
 2273 Appeal in Ex Parte Reexamination [R-07.2015]
 

 
 35 U.S.C. 306 
 Appeal. 

 The patent owner involved in a reexamination proceeding under this
 chapter may appeal under the provisions of section 134 , and may seek court
 review under the provisions of sections 141 to 144 , with respect
 to any decision adverse to the patentability of any original or proposed amended or new
 claim of the patent.
 

 

 A patent owner who is dissatisfied with the primary examiner’s decision to
 reject claims in an ex parte reexamination proceeding may appeal to the
 Board for review of the examiner’s rejection by filing a notice of appeal within the
 required time. A third party requester may not appeal, and may not participate in the
 patent owner’s appeal.
 

 The patent owner may appeal to the Board only after
 the final rejection of the claims. This is based on the version of 35 U.S.C. 134 
 as amended by Public Law 106-113. This version of 35 U.S.C. 134 applies to appeals in
 reexamination, where the reexamination was filed in the Office on or after November 29,
 1999. See Section 13202(d) of Public Law 107-273.
 

 The notice of appeal need not be signed. See 37 CFR 41.31(b) . The
 fee required by 37 CFR
 41.20(b)(1) must accompany the notice of appeal. See 37 CFR 41.31(a)(2) 
 and (a)(3) .
 

 The period for filing the notice of appeal is the period set for response
 in the last Office action which is normally 2 months. The timely filing of a first response
 to a final rejection having a shortened statutory period for response is construed as
 including a request to extend the period for response an additional two months, even if an
 extension has been previously granted, as long as the period for response does not exceed 6
 months from the date of the final rejection. The normal ex parte appeal
 procedures set forth at 37 CFR 41.31 through 37 CFR 41.54 apply in ex
 parte reexamination, except as pointed out in this Chapter. A third party
 requester may not appeal or otherwise participate in the appeal.
 

 The reexamination statute does not provide for review of a patentability
 decision favoring the patentee. Greenwood v. Seiko Instruments, 8 USPQ2d
 1455 (D.D.C. 1988).
 

 See MPEP §
 1204 for a discussion of the requirements for a proper appeal.
 However, note that in the unusual circumstances where an appeal is defective (e.g., no
 proof of service is included, it was filed for the wrong proceeding), patent owner should
 not be advised by the examiner to obtain an extension of time under
 37 CFR
 1.136(a) , because an extension of time under 37 CFR 1.136 cannot
 be obtained in a reexamination proceeding.
 

 Where a notice of appeal is defective, the patent owner will be so
 notified. In third party requested reexaminations, Form PTOL-475 will be used to provide
 the notification. A time period of one month or thirty days, whichever is longer, will be
 provided for the patent owner to cure the defect(s) in the appeal. In patent owner
 requested reexaminations (including reexaminations ordered under 35 U.S.C.
 257 ) or Director ordered reexaminations, Form PTO-2311 will be used
 to provide the notification, and a two-month time period will be provided for the patent
 owner to cure the defect(s) in the appeal. An explanation of the defect(s) in the notice of
 appeal must accompany the appropriate form for providing the notification of the defects
 (PTOL-475 or PTO-2311).
 

 If the patent owner does not timely file a notice of appeal and/or does
 not timely file the appropriate appeal fee, the patent owner will be notified that the
 appeal is dismissed. Form PTOL-468 may be used to provide the notification. The
 reexamination prosecution is then terminated, and a Notice of Intent to Issue Ex
 Parte Reexamination Certificate (NIRC) will subsequently be issued indicating
 the status of the claims at the time of final rejection (or after the second rejection of
 the claims, where an appeal was taken from that action without waiting for a final
 rejection). See MPEP §
 2287 .
 

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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