MPEP § 2271 — MPEP § 2271
Current through: 2022-07-01

2271-Final Action 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2271 
 

 
 
 
 
 
 2271 Final Action [R-07.2015]

 Before a final action is in order, a clear issue should be developed
 between the examiner and the patent owner. To bring the prosecution to a speedy conclusion
 and at the same time deal justly with the patent owner and the public, the examiner will
 twice provide the patent owner with such information and references as may be useful in
 defining the position of the Office as to unpatentability before the action is made final.
 Initially, the decision ordering reexamination of the patent will contain an identification
 of the substantial new questions of patentability that the examiner considers to be raised
 by the cited prior art. In addition, the first Office action will reflect the consideration
 of any arguments contained in the request, any amendments submitted with a request under
 35 U.S.C.
 302 , any owner’s statement filed pursuant to 37 CFR 1.530 , and any
 reply thereto by the requester, and should fully apply all relevant grounds of rejection to
 the claims.
 

 The statement which the patent owner may file under 37 CFR 1.530 and the
 response to the first Office action should completely respond to and/or amend with a view
 to avoiding all outstanding grounds of rejection.
 

 It is intended that the second Office action in the reexamination
 proceeding following the decision ordering reexamination will generally be made final. The
 criteria for making a rejection final in an ex parte reexamination
 proceeding is analogous to that set forth in MPEP § 706.07(a) for making a rejection
 final in an application. Both the patent owner and the examiner should recognize that a
 reexamination proceeding may result in the final cancellation of claims from the patent and
 that the patent owner does not have the right to renew or continue the proceedings by
 refiling under 37 CFR
 1.53(b) or 37 CFR 1.53(d) or former 37 CFR 1.60 or
 1.62, nor by filing a request for continued examination under 37 CFR 1.114 .
 Complete and thorough actions by the examiner coupled with complete responses by the patent
 owner, including early presentation of evidence under 37 CFR 1.131(a) 
 or 37 CFR
 1.132 , will go far in avoiding such problems and reaching a desirable
 early termination of the reexamination prosecution. 
 

 In making the final rejection, all outstanding grounds of rejection of
 record should be carefully reviewed and any grounds or rejection relied on should be
 reiterated. The grounds of rejection must (in the final rejection) be clearly developed to
 such an extent that the patent owner may readily judge the advisability of an appeal.
 However, where a single previous Office action contains a complete statement of a ground of
 rejection, the final rejection may refer to such a statement and also should include a
 rebuttal of any arguments raised in the patent owner’s response. 
 

 I. PROCESS OF PREPARING THE ACTION After an examiner has determined that the reexamination proceeding is
 ready for the final Office action, the examiner will set up a panel review conference,
 as per MPEP §
 2271.01 , to discuss the issuance of the action. The examiner
 may prepare the action after the conference, or may prepare the action prior to the
 conference and revise it as needed after the conference. 
 

 If the conference confirms the examiner’s preliminary
 decision to reject and/or allow the claims and issue a final Office action, the proposed
 final Office action shall be issued and signed by the examiner, with the two, or more,
 other conferees initialing the action (as “conferee”) to indicate their presence in the
 conference. 
 

 II. FORM PARAGRAPHS The final rejection letter should conclude with one of form paragraphs
 22.09 or 22.10 .
 

 ¶ 22.09 Ex Parte Reexamination - Action Is Final

 THIS ACTION IS MADE FINAL. 

 A shortened statutory period for
 response to this action is set to expire [1] from the mailing date of this
 action.
 

 Extensions of time under 37 CFR 1.136(a) do not apply in
 reexamination proceedings. The provisions of 37 CFR 1.136 apply only to “an applicant”
 and not to parties in a reexamination proceeding. Further, in 35 U.S.C. 305 and in
 37 CFR
 1.550(a) , it is required that reexamination proceedings “will be
 conducted with special dispatch within the Office.” 
 

 Extensions of time in reexamination proceedings are provided for in 37 CFR 1.550(c) . A request for extension of time must specify the requested period of extension and it
 must be accompanied by the petition fee set forth in 37 CFR
 1.17(g) . Any request for an extension in a third party requested
 ex parte reexamination must be filed on or before the day on which
 action by the patent owner is due, and the mere filing of a request will not effect any
 extension of time. A request for an extension of time in a third party requested ex
 parte reexamination will be granted only for sufficient cause, and for a
 reasonable time specified. Any request for extension in a patent owner requested ex
 parte reexamination (including reexamination ordered under 35 U.S.C. 257 )
 for up to two months from the time period set in the Office action must be filed no later than
 two months from the expiration of the time period set in the Office action. A request for an
 extension in a patent owner requested ex parte reexamination for more than
 two months from the time period set in the Office action must be filed on or before the day on
 which action by the patent owner is due, and the mere filing of a request for an extension for
 more than two months will not effect the extension. The time for taking action in a patent
 owner requested ex parte reexamination will not be extended for more than
 two months from the time period set in the Office action in the absence of sufficient cause or
 for more than a reasonable time.
 

 The filing of a timely first response
 to this final rejection will be construed as including a request to extend the shortened
 statutory period for an additional two months. In no event, however, will the statutory period
 for response expire later than SIX MONTHS from the mailing date of the final action. See
 MPEP §
 2265 .
 

 Examiner Note:
 
 1. This form paragraph may be used
 only in reexamination proceedings.
 

 2. In bracket 1, insert the
 appropriate period for response, which is normally TWO (2) MONTHS.
 
 
 

 ¶ 22.10 Ex Parte Reexamination - Action Is Final,
 Necessitated by Amendment
 

 Patent owner’s amendment filed [1] necessitated the new
 grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE
 FINAL . See MPEP §
 706.07(a) .
 

 A shortened statutory period for response to this action is set to expire
 [2] from the mailing date of this action.
 

 Extensions of time under 37 CFR 1.136(a) do not apply in
 reexamination proceedings. The provisions of 37 CFR 1.136 apply only to “an applicant”
 and not to parties in a reexamination proceeding. Further, in 35 U.S.C. 305 and in
 37 CFR
 1.550(a) , it is required that reexamination proceedings “will be
 conducted with special dispatch within the Office.” 
 

 Extensions of time in reexamination proceedings are provided for in 37 CFR 1.550(c) .
 A request for extension of time must specify the requested period of extension and it
 must be accompanied by the petition fee set forth in 37 CFR 1.17(g) . Any request for an
 extension in a third party requested ex parte reexamination must be filed
 on or before the day on which action by the patent owner is due, and the mere filing of a
 request will not effect any extension of time. A request for an extension of time in a third
 party requested ex parte reexamination will be granted only for sufficient
 cause, and for a reasonable time specified. Any request for extension in a patent owner
 requested ex parte reexamination (including reexamination ordered under
 35 U.S.C.
 257 ) for up to two months from the time period set in the Office action
 must be filed no later than two months from the expiration of the time period set in the
 Office action. A request for an extension in a patent owner requested ex
 parte reexamination for more than two months from the time period set in the
 Office action must be filed on or before the day on which action by the patent owner is due,
 and the mere filing of a request for an extension for more than two months will not effect the
 extension. The time for taking action in a patent owner requested ex parte 
 reexamination will not be extended for more than two months from the time period set in the
 Office action in the absence of sufficient cause or for more than a reasonable time.
 

 The filing of a timely first response to this final rejection will be
 construed as including a request to extend the shortened statutory period for an additional
 two months. In no event, however, will the statutory period for response expire later than SIX
 MONTHS from the mailing date of the final action. See MPEP § 2265 .
 

 Examiner Note:
 
 1. This form paragraph may be used only in reexamination
 proceedings.
 

 2. In bracket 1, insert filing date of amendment.

 3. In bracket 2, insert the appropriate period for response, which is
 normally TWO (2) MONTHS.
 

 4. As with all other Office correspondence on the merits in a
 reexamination proceeding, the final Office action must be signed by a primary
 examiner.
 
 
 
 III. ART CITED BY PATENT OWNER DURING PROSECUTION Where art is submitted in a prior art citation under 37 CFR 1.501 
 and/or 37 CFR
 1.555 (an IDS filed in a reexamination is construed as a prior art
 citation) and the submission is not accompanied by a statement similar to that of
 37 CFR
 1.97(e) , the examiner may use the art submitted and make the next
 Office action final whether or not the claims have been amended, provided that no other
 new ground of rejection is introduced by the examiner based on the new art not cited in
 the prior art citation. See MPEP § 706.07(a) .
 

 IV. SIGNATORY AUTHORITY As with all other Office correspondence on the merits in a
 reexamination proceeding, the final Office action must be signed by a primary
 examiner.
 

 
 2271.01 Panel Review [R-10.2019]

 A panel review will be conducted at each stage of the examiner’s
 examination in an ex parte reexamination proceeding, other than for
 actions such as notices of informality or incomplete response. Matters requiring
 decision outside of the examiner’s jurisdiction (e.g., decisions on petitions or
 extensions of time, or Central Reexamination Unit (CRU) support staff notices) will not
 be reviewed by a panel.
 

 The panel review is carried out for each Office action. The panel
 reviews the examiner’s preliminary decision to reject and/or allow the claims in the
 reexamination proceeding, prior to the issuance of each Office action.
 

 I. MAKE-UP OF THE PANEL The panel will consist of three, or more, members, one of whom will
 be a manager. The second member will be the examiner in charge of the proceeding. The
 manager may select the third member. The examiner-conferees will be primary
 examiners, or examiners who are knowledgeable in the technology of the invention
 claimed in the patent being reexamined and/or who are experienced in reexamination
 practice. The majority of those present at the conference will be examiners who were
 not involved in the examination or issuance of the patent. An “original” examiner
 (see MPEP §
 2236 ) should be chosen as a conferee only if that examiner
 is the most knowledgeable in the art, or there is some other specific and justifiable
 reason to choose an original examiner as a participant in the conference.
 

 II. PANEL PROCESS Examiners must inform their managers of their intent to issue an
 Office action. The manager will then convene a panel and the members will confer and
 review the patentability of the claim(s). If the conference confirms the examiner’s
 preliminary decision to reject and/or allow the claims, the Office action shall be
 issued and signed by the examiner, with the two, or more, other conferees initialing
 the action (as “conferee”) to indicate their participation in the conference. All
 conferees will initial, even though one of them may have dissented from the 3-party
 conference decision as to the patentability of claims. If the conference does not
 confirm the examiner’s preliminary decision, examiner will reevaluate and issue an
 appropriate Office action.
 

 III. WHAT THE CONFERENCE IS TO ACCOMPLISH Each conference will provide a forum to assist the assigned
 examiner in considering all issues of patentability as well as procedural issues
 having an impact on patentability. Review of the patentability of the claims by more
 than one primary examiner to assist the examiner in charge should diminish the
 perception that the patent owner can disproportionately influence the examiner in
 charge. The conferences will also provide greater assurance that all matters will be
 addressed appropriately. The examiner in charge will receive the benefit of having
 all issues in the proceeding reviewed from the perspectives of three examiners. The
 conference will provide for a comprehensive discussion of, and finding for, each
 issue.
 

 IV. CONSEQUENCES OF FAILURE TO HOLD CONFERENCE Should the examiner issue an Office action without panel review, the
 patent owner or the third party requester who wishes to object must promptly file a
 paper alerting the Office of this fact. (The failure to provide panel review would be
 noted by the parties where there are no conferees’ initials at the end of the Office
 action.) Any challenge of the failure to hold a panel review conference must be made
 within two weeks of receipt of the Office action issued, or the challenge will not be
 considered. In no event will the failure to hold a panel review conference, by
 itself, be grounds for vacating any Office decision(s) or action(s) and “restarting”
 the reexamination proceeding.
 

 

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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 20:49:35