MPEP § 2201 — MPEP § 2201
Current through: 2022-07-01

2201-Introduction 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2201 
 

 
 
 
 
 
 2201 Introduction [R-07.2015]

 Statutory basis for citation of prior art patents or printed publications
 in patent files and ex parte reexamination of patents became available
 on July 1, 1981, as a result of new sections 301-307 of title 35, United States Code, which
 were added by Public Law 96-517, enacted on December 12, 1980. The rules of practice in
 patent cases relating to reexamination were initially promulgated on April 30, 1981, at 46
 FR 24179-24180 and on May 29, 1981, at 46 FR 29176-29187.
 

 The reexamination statute was amended on November 2, 2002, by Public Law
 107-273, 116 Stat. 1758, 1899-1906 (2002) to expand the scope of what qualifies for a
 substantial new question of patentability upon which an ex parte 
 reexamination may be based (see MPEP § 2242 , subsection II.A), and made
 technical corrections to the statute. See the 21st Century Department of Justice
 Appropriations Authorization Act, TITLE III- INTELLECTUAL PROPERTY, Subtitle A - Patent and
 Trademark Office, Section 13105, of the “Patent and Trademark Office Authorization Act of
 2002” - Enacted as part of Public Law 107-273 on November 2, 2002.
 

 On September 16, 2012, the Leahy-Smith America Invents Act
 (the AIA), Public Law 112-29, 125 Stat. 284, was enacted. The AIA expanded the scope of
 information that any party may cite in a patent file to include written statements of a
 patent owner filed in a proceeding before a federal court or the United States Patent and
 Trademark Office (Office) regarding the scope of any claim of the patent, and provides for
 how such information may be considered in ex parte 
 reexamination, inter partes review, and post grant review. The AIA
 also provided for an estoppel that may attach with respect to the filing of an ex
 parte reexamination request subsequent to a final written decision in
 an inter partes review or post grant review proceeding. 
 

 The AIA also provided for a first-inventor-to-file prior art
 regime to replace the first-to-invent prior art regime, with respect to prior art available
 to be applied to claims. The prior art regime under which the application for the patent
 was examined (the first-inventor-to-file prior art regime, or the first-to-invent prior art
 regime) will generally be applied in the reexamination of the patent. However, there are
 rare exceptions. For example, a situation may arise in which a benefit claim to an
 application filed before March 16, 2013, is added in a reexamination proceeding based on an
 AIA patent. If all of the claims that have ever been presented in the reexamination
 proceeding and the underlying patent are fully supported by the prior application filed
 before March 16, 2013, and the application which resulted in the patent subject to the
 reexamination proceeding did not claim, directly or indirectly, the benefit of an
 application filed in the United States that presented at any time a claim that had an
 effective filing date on or after March 16, 2013, then the reexamination proceeding would
 be examined under the pre-AIA, first to invent, provisions.
 

 This chapter is intended to primarily be a guide for U.S. Patent and
 Trademark Office (Office) personnel on the processing of prior art citations and
 ex parte reexamination requests under 35 U.S.C. 302 , as
 well as handling ex parte reexamination proceedings. Second, it serves
 as a guide to the formal requirements for filing such documents in the Office. It is noted
 that all citations in this chapter to 35 U.S.C. discussing the first-to-invent prior art
 regime (as opposed to the first-inventor-to-file prior art regime) are to the relevant
 statute in effect prior to March 16, 2013.
 

 Ex Parte Reexamination Proceedings Resulting from Supplemental
 Examination Proceedings: Section 12 of the AIA added new 35 U.S.C.
 257 , which provides for a proceeding titled “supplemental
 examination” that may be requested by the patent owner to consider, reconsider, or correct
 information believed to be relevant to the patent in accordance with requirements which
 have been established by the Office. The information that may be presented in a request for
 supplemental examination is not limited to patents and printed publications, and may
 include, for example, issues of patentability under 35 U.S.C. 101 and 35 U.S.C. 112 . If
 the supplemental examination certificate, which is issued under 35 U.S.C.
 257(a) , states that a substantial new question of patentability is
 raised by one or more items of information in the request, ex parte 
 reexamination of the patent will be ordered under 35 U.S.C.
 257 . See MPEP Chapter 2800 for guidance on the
 procedures for supplemental examination proceedings, and for procedures regarding the order
 and first Office action mailed in any ex parte reexamination proceeding
 ordered as a result of a supplemental examination proceeding. 
 

 Inter Partes Reexamination Proceedings: On November 29, 1999, the
 American Inventors Protection Act of 1999 (the AIPA), Public Law 106-113 was enacted, and
 expanded reexamination by providing an “inter partes” option. The AIPA
 authorized the extension of reexamination proceedings via an optional inter
 partes reexamination procedure in addition to ex parte 
 reexamination. 35 U.S.C.
 311 - 318 (in effect for inter
 partes reexaminations filed prior to September 16, 2012) are directed to the
 optional inter partes reexamination procedures. The final rules to
 implement the optional inter partes reexamination were published in the
 Federal Register on December 7, 2000 at 65 FR 76756 and in the Official Gazette on January
 2, 2001 at 1242 OG 12. Effective September 16, 2012, section 6(c) of the Leahy-Smith
 America Invents Act (the AIA), Public Law 112-29, 125 Stat. 284, replaced the
 inter partes reexamination process that was established by the AIPA
 with an inter partes review process, such that (on or after September
 16, 2012) the Office no longer entertains requests for inter partes 
 reexamination but instead accepts petitions to conduct inter partes 
 review before the Board, where appropriate. For any inter partes 
 reexamination filed prior to September 16, 2012, the provisions of 35 U.S.C. 311 -
 318 
 as they were in effect prior to September 16, 2012, continue to apply to the inter
 partes reexamination proceedings. See MPEP Chapter 2600 for guidance on the
 procedures for inter partes reexamination proceedings, as well as with
 respect to an ex parte reexamination proceeding merged (consolidated)
 with an inter partes reexamination proceeding.
 

 Flowcharts: The flowcharts show the general provisions of both the
 citation of prior art and ex parte reexamination proceedings, including
 reference to the pertinent rule sections.
 

 

 

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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 20:50:42