MPEP § 2249 — MPEP § 2249
Current through: 2022-07-01

2249-Patent Owner’s Statement in Reexaminations Filed Under 35 U.S.C. 302 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2249 
 

 
 
 
 
 
 2249 Patent Owner’s Statement in Reexaminations Filed Under 35 U.S.C.
 302 [R-08.2017]
 

 
 37 CFR 1.530 Statement by patent owner in ex parte reexamination; amendment by patent owner
 in ex parte or inter partes reexamination; inventorship change in ex parte or inter
 partes reexamination. 

 
 (a) Except as provided in § 1.510(e) , no statement or
 other response by the patent owner in an ex parte reexamination
 proceeding shall be filed prior to the determinations made in accordance with
 §
 1.515 or § 1.520 . If a premature
 statement or other response is filed by the patent owner, it will not be
 acknowledged or considered in making the determination, and it will be returned or
 discarded (at the Office’s option).
 

 (b) The order for ex parte reexamination will set
 a period of not less than two months from the date of the order within which the
 patent owner may file a statement on the new question of patentability, including
 any proposed amendments the patent owner wishes to make.
 

 (c) Any statement filed by the patent owner shall clearly point out
 why the subject matter as claimed is not anticipated or rendered obvious by the
 prior art patents or printed publications, either alone or in any reasonable
 combinations. Where the reexamination request was filed by a third party
 requester, any statement filed by the patent owner must be served upon the
 ex parte reexamination requester in accordance with
 §
 1.248 .
 

 
 *****

 

 The patent owner has no right to file a statement subsequent to the filing
 of the request under 35
 U.S.C. 302 but prior to the order for reexamination. Any such
 premature statement will not be acknowledged nor considered by the Office when making the
 decision on the request and will be returned or discarded at the option of the Office, and
 will be expunged if inadvertently entered into the record. See MPEP § 2225 and
 Patlex Corp. v. Mossinghoff, 771 F.2d 480, 226 USPQ 985 (Fed. Cir.
 1985).
 

 If reexamination is ordered under 35 U.S.C. 304 , the decision will set a
 period of not less than two months within which period the patent owner may file a
 statement and any narrowing amendments to the patent claims. If necessary, an extension of
 time beyond the two months may be requested under 37 CFR 1.550(c) by the patent owner.
 See MPEP §
 2265 .
 

 Any statement filed must clearly point out why the patent claims are
 believed to be patentable, considering the cited prior art patents or printed publications
 alone or in any reasonable combination.
 

 A copy of the statement must be served by the patent owner on the
 requester, unless the request was filed by the patent owner.
 

 Lack of proof of service especially poses a problem where the patent owner
 fails to indicate that service was made to the requester in the statement subsequent to the
 order for reexamination ( 37 CFR 1.530(c) ). In this situation, the Central Reexamination Unit
 should immediately contact the patent owner to see whether the indication of proof of
 service was inadvertently omitted from the patent owner’s response. If it was, the patent
 owner should be advised to submit a supplemental paper indicating the manner and date of
 service on requester. If the patent owner cannot be contacted, the Central Reexamination
 Unit will then contact the requester to verify that service has in fact been made by the
 patent owner and indicate that acknowledgment of proof of service should accompany
 requester’s reply ( 37 CFR
 1.248(b)(1) ). If the 2-month period for response under
 37 CFR
 1.530 has expired and requester has not been served, the patent
 owner’s statement is considered inappropriate ( 37 CFR 1.248 ) and may be denied
 consideration; see MPEP §
 2267 .
 

 See also MPEP § 2266.03 for further discussion as to the patent owner
 providing service on the third party requester.
 

 It should be noted that the period for response by requester for a reply
 under 37 CFR
 1.535 is two months from the owner’s service date and not two months
 from the date the patent owner’s statement was received in the Office.
 

 Where the patent owner has determined that a statement under
 37 CFR
 1.530 will not be filed, the patent owner may expedite the
 reexamination proceeding by filing a paper that indicates that the patent owner waives the
 filing of a statement under 37 CFR 1.530 and serving the waiver on
 the requester, if any. This will permit reexamination of the proceeding to proceed pursuant
 to 37 CFR
 1.550(a) .
 

 WAIVER OF STATEMENT PROGRAM 

 If the patent owner waives the right to file a patent owner’s
 statement in response to a request from the Office, the examiner will be able to act on the
 first Office action on the merits immediately after determining that reexamination will be
 ordered under 35 U.S.C.
 304 , and in a suitable case issue the reexamination order and the
 first Office action on the merits at the same time (the first action may be a Notice of
 Intent to Issue Reexamination Certificate, where appropriate). This eliminates the delay of
 waiting for a patent owner’s statement and the third-party requester’s reply, and it
 permits the examiner to utilize time more efficiently by drafting the order and the first
 Office action on the merits together.
 

 Accordingly, the Central Reexamination Unit (CRU) will
 contact, via telephone, the patent owner to request the optional waiver of the patent
 owner’s statement after a reexamination proceeding under 35 U.S.C. 302 has
 been granted a filing date and before the examiner begins the review. The communication
 will be strictly limited to the CRU requesting the waiver of the patent owner’s statement
 and agreement (or non-agreement) to the waiver by the patent owner. Discussion of the
 merits of the proceedings, e.g., the patentability of claims in patents, is not permitted.
 The CRU will make the agreement or non-agreement of record in the reexamination file in an
 interview summary, using form PTOL-2292 ( Ex Parte Reexamination
 Interview Summary – Pilot Program for Waiver of Patent Owner’s Statement). A copy of the
 completed form will then be mailed to the patent owner and any third party requester. The
 patent owner is not required to file a written statement as to the communication under
 37 CFR
 1.560(b) or otherwise, and such a statement should not be filed as it
 will slow the process. If the patent owner agrees to the waiver of the right to file a
 patent owner’s statement, the examiner may issue the reexamination order and the first
 Office action on the merits on the same day as the order, or within a few days
 thereafter.
 

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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 20:50:43