MPEP § 2254 — MPEP § 2254
Current through: 2022-07-01

2254-Conduct of Ex Parte Reexamination Proceedings 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2254 
 

 
 
 
 
 
 2254 Conduct of Ex Parte Reexamination
 Proceedings [R-07.2015]
 

 
 35 U.S.C. 305 
 Conduct of reexamination proceedings. 

 After the times for filing the statement and reply provided for by
 section
 304 have expired, reexamination will be conducted according to the
 procedures established for initial examination under the provisions of sections 132 and
 133 . In any reexamination proceeding under this chapter, the
 patent owner will be permitted to propose any amendment to his patent and a new claim or
 claims thereto, in order to distinguish the invention as claimed from the prior art
 cited under the provisions of section 301 , or in response to a
 decision adverse to the patentability of a claim of a patent. No proposed amended or new
 claim enlarging the scope of a claim of the patent will be permitted in a reexamination
 proceeding under this chapter. All reexamination proceedings under this section,
 including any appeal to the Patent Trial and Appeal Board, will be conducted with
 special dispatch within the Office.
 

 

 
 37 CFR 1.550 Conduct of ex parte reexamination proceedings. 

 
 (a) All ex parte reexamination proceedings,
 including any appeals to the Board of Patent Appeals and Interferences, will be
 conducted with special dispatch within the Office. After issuance of the
 ex parte reexamination order and expiration of the time for
 submitting any responses, the examination will be conducted in accordance with
 §§
 1.104 through 1.116 and will result in the
 issuance of an ex parte reexamination certificate under
 §
 1.570 .
 

 (b) The patent owner in an ex parte reexamination
 proceeding will be given at least thirty days to respond to any Office action. In
 response to any rejection, such response may include further statements and/or
 proposed amendments or new claims to place the patent in a condition where all
 claims, if amended as proposed, would be patentable.
 

 (c) The time for taking any action by a patent owner in an
 ex parte reexamination proceeding may be extended as
 provided in this paragraph.
 
 (1) Any request for such an extension must specify
 the requested period of extension and be accompanied by the petition fee set
 forth in § 1.17(g) .
 

 
 
 (2) 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 such a request for extension will not effect the extension. A
 request for an extension in a third party requested ex
 parte reexamination will not be granted in the absence of
 sufficient cause or for more than a reasonable time.
 

 
 
 (3) Any request for an extension in a patent owner
 requested or Director ordered ex parte reexamination 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 or
 Director ordered 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 from the time
 period set in the Office action will not effect the extension. The time for
 taking action in a patent owner requested or Director ordered 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.
 

 
 
 (4) The reply or other action must in any event
 be filed prior to the expiration of the period of extension, but in no
 situation may a reply or other action be filed later than the maximum time
 period set by statute.
 

 
 
 (5) See §
 90.3(c) of this title for extensions of time for
 filing a notice of appeal to the U.S. Court of Appeals for the Federal
 Circuit or for commencing a civil action.
 

 
 

 (d) If the patent owner fails to file a timely and appropriate
 response to any Office action or any written statement of an interview required
 under §
 1.560(b) , the prosecution in the ex parte 
 reexamination proceeding will be a terminated prosecution, and the Director will
 proceed to issue and publish a certificate concluding the reexamination proceeding
 under § 1.570 in accordance with the last action of the
 Office.
 

 (e) If a response by the patent owner is not timely filed in the
 Office, a petition may be filed pursuant to § 1.137 to revive a
 reexamination prosecution terminated under paragraph (d) of this section if the
 delay in response was unintentional.
 

 (f) The reexamination requester will be sent copies of Office actions
 issued during the ex parte reexamination proceeding. After
 filing of a request for ex parte reexamination by a third party
 requester, any document filed by either the patent owner or the third party
 requester must be served on the other party in the reexamination proceeding in the
 manner provided by § 1.248 . The document must
 reflect service or the document may be refused consideration by the Office.
 

 (g) The active participation of the ex parte 
 reexamination requester ends with the reply pursuant to § 1.535 , and
 no further submissions on behalf of the reexamination requester will be
 acknowledged or considered. Further, no submissions on behalf of any third parties
 will be acknowledged or considered unless such submissions are:
 
 (1) in accordance with § 1.510 or
 §
 1.535 ; or
 

 (2) entered in the patent file prior to the date of the order
 for ex parte reexamination pursuant to § 1.525 .
 

 
 

 (h) Submissions by third parties, filed after the date of the order
 for ex parte reexamination pursuant to § 1.525 ,
 must meet the requirements of and will be treated in accordance with
 § 1.501(a) .
 

 (i) A petition in an ex parte 
 reexamination proceeding must be accompanied by the fee set forth in
 §
 1.20(c)(6) , except for petitions under paragraph (c) of this
 section to extend the period for response by a patent owner, petitions under
 paragraph (e) of this section to accept a delayed response by a patent owner,
 petitions under § 1.78 to accept an
 unintentionally delayed benefit claim, and petitions under § 1.530(l) 
 for correction of inventorship in a reexamination proceeding.
 

 
 

 Once ex parte reexamination is ordered pursuant to
 35 U.S.C.
 304 and the times for submitting any responses to the order have
 expired, no further active participation by a third party reexamination requester is
 allowed, and no third party submissions will be acknowledged or considered unless they are
 in accordance with 37 CFR
 1.510 . The reexamination proceedings will be ex
 parte , even if ordered based on a request filed by a third party, because this
 was the intention of the legislation. Ex parte proceedings preclude the
 introduction of arguments and issues by the third party requester which are not within the
 intent of 35 U.S.C.
 305 (“reexamination will be conducted according to the procedures
 established for initial examination under the provisions of sections 132 and
 133 ”).
 

 The patent owner may not file papers on behalf of the requester and
 thereby circumvent the intent of the ex parte reexamination legislation
 and the rules. The U.S. Court of Appeals for the Federal Circuit held in Emerson
 Elec. Co. v. Davoil, Inc., 88 F.3d 1051, 39 USPQ2d 1474 (Fed. Cir. 1996) that
 a federal district court does not have the authority to order a patent owner to file papers
 prepared by a third party in addition to the patent owner’s own submission in a patent
 reexamination proceeding. Such papers prepared by the third party and filed by the patent
 owner will not be entered, and the entire submission will be returned to the patent owner
 as an inappropriate response. See MPEP § 2266 and § 2267 . 
 

 The examination will be conducted in accordance with 37 CFR 1.104 ,
 1.105, 1.110 - 1.113 , and 1.116 
 ( 35 U.S.C.
 132 and 133 ) and will result in the issuance of
 a reexamination certificate under 37 CFR 1.570 . The proceeding shall be
 conducted with special dispatch within the Office pursuant to 35 U.S.C. 305 , last
 sentence. A full search will not routinely be made by the examiner. The third party
 reexamination requester will be sent copies of Office actions and the patent owner must
 serve responses on the requester. Citations submitted in the patent file prior to issuance
 of an order for reexamination will be considered by the examiner during the reexamination.
 Reexamination will proceed even if the copy of the order sent to the patent owner is
 returned undelivered. The notice under 37 CFR 1.11(c) is constructive notice
 to the patent owner and lack of response from the patent owner will not delay
 reexamination. See MPEP
 § 2230 .
 

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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 20:49:34