MPEP § 2260 — MPEP § 2260
Current through: 2022-07-01

2260-Office Actions 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2200 

 Section 2260 
 

 
 
 
 
 
 2260 Office Actions [R-07.2015]

 As is true in the examination of applications, 37 CFR 1.104 (Nature
 of examination) applies to the examination of reexamination proceedings. It is intended
 that the examiner’s first ex parte action on the merits be the primary
 action to establish the issues which exist between the examiner and the patent owner
 insofar as the patent is concerned. At the time the first action is issued in
 reexaminations ordered under 35 U.S.C. 304 , the patent owner has
 already been permitted to file a statement and an amendment pursuant to 37 CFR 1.530 ; and the
 reexamination requester, if the requester is not the patent owner, has been permitted to
 reply thereto pursuant to 37 CFR 1.535 . In any case, thus, at this point, the issues should be
 sufficiently focused to enable the examiner to make a definitive first ex
 parte action on the merits which should clearly establish the issues which
 exist between the examiner and the patent owner insofar as the patent is concerned. In view
 of the fact that the examiner’s first action will clearly establish the issues, the first
 action should include a statement cautioning the patent owner that a complete response
 should be made to the action since the next action is expected to be a final action. The
 first action should further caution the patent owner that the requirements of
 37 CFR
 1.116(b) will be strictly enforced after final action and that any
 amendment after a final action must include “a showing of good and sufficient reasons why
 the amendment is necessary and was not earlier presented” in order to be considered. The
 language of form paragraph 22.04 is appropriate for inclusion in the first Office
 action:
 

 ¶ 22.04 Papers To Be Submitted in Response to Action - Ex Parte Reexamination

 In order to ensure full consideration
 of any amendments, affidavits or declarations, or other documents as evidence of
 patentability, such documents must be submitted in response to this Office action.
 Submissions after the next Office action, which is intended to be a final action, will be
 governed by the requirements of 37 CFR 1.116 after final rejection and
 37 CFR
 41.33 after appeal, which will be strictly enforced.
 

 

 
 2260.01 Dependent Claims [R-07.2015]

 If an unamended base patent claim (i.e., a claim appearing in the
 reexamination as it appears in the patent) has been rejected, canceled, or is no longer
 subject to reexamination due to adjudication in court, any claim undergoing
 reexamination which is directly or indirectly dependent thereon should be confirmed or
 allowed if the dependent claim is otherwise allowable. The dependent claim should
 not be objected to or rejected merely because it depends on a
 rejected or canceled patent claim or a claim no longer subject to reexamination. No
 requirement should be made for rewriting the dependent claim in independent form. As the
 original patent claim numbers are not changed in a reexamination proceeding, the content
 of the canceled base claim would remain in the printed patent and would be available to
 be read as a part of the confirmed or allowed dependent claim.
 

 If a new base claim (a base claim other than a base claim appearing in
 the patent) has been canceled in a reexamination proceeding, a claim which depends
 thereon should be rejected as indefinite. If a new base claim or an amended patent claim
 is rejected, a claim dependent thereon should be objected to if it is otherwise
 patentable and a requirement made for rewriting the dependent claim in independent
 form.
 

 

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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