Chapter 2200

Citation of Prior Art and Ex Parte Reexamination of Patents

Chapter 2200 covers ex parte reexamination. Any person can request reexamination based on patents and printed publications only. Key rule: third-party requester has NO participation rights after the reexamination order is granted — only patent owner and examiner continue.

Core Concepts

Who Can Request — MPEP 2209 Any person including the patent owner, third parties, or the USPTO Director. Anonymous requests permitted. Filed with fee. Based on prior art patents and printed publications ONLY — cannot raise public use, on-sale, or other statutory bars.

Substantial New Question — MPEP 2242 SNQ of patentability must exist to order reexamination. SNQ can be based on art previously considered by examiner if presented differently. Different from IPR standard (reasonable likelihood of prevailing). Director orders or denies reexamination — not petitionable if denied.

Third-Party Requester Rights — MPEP 2254 After reexamination order: third-party requester has NO further participation rights. Only patent owner and examiner continue prosecution. Requester cannot file comments, responses, or appeals. Patent owner may amend claims — only narrow amendments allowed, no broadening.

Reexamination Prosecution — MPEP 2260 Conducted like regular examination but in reexamination context. Patent owner may amend claims — only narrowing amendments. New claims may be added if narrower than original claims. Examiner may reject on new grounds of rejections.

Appeal from Reexamination — MPEP 2279 Patent owner may appeal examiner rejection to PTAB. Third-party requester: NO appeal rights in ex parte reexamination. After PTAB: appeal to Federal Circuit.

Merger with Pending Litigation — MPEP 2286 Court may stay litigation pending reexamination. Reexamination certificate issued at end — cancels rejected claims, confirms patentable claims, incorporates amended claims.

Key Rules

1.Ex parte reexamination: any person may request — including anonymous

2.Based on patents and printed publications ONLY

3.SNQ required to order reexamination

4.Third-party requester: NO participation after order is granted

5.Patent owner: narrowing amendments only — no broadening

6.Third party has NO appeal rights

7.Denial of reexamination order is NOT petitionable

EXAM TIP

Third-party requester participation rule is the most tested point: after reexamination is ordered, third party disappears entirely — no comments, no responses, no appeals. Contrast with IPR where petitioner has full participation rights throughout. This asymmetry is a frequent exam question.

Common Traps

1.Thinking third party can participate after reexamination order — no rights at all

2.Raising public use or on-sale bar in reexamination request — only patents and publications

3.Assuming denial of reexamination can be petitioned — it cannot

4.Thinking patent owner can broaden claims in reexamination — narrowing only

5.Confusing SNQ standard (ex parte reexamination) with reasonable likelihood (IPR)

Search Terms

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Sections

2201Introduction

2202Citation of Prior Art and Written Statements

High Yield

2203Persons Who May Cite Prior Art or Written Statements

2204Time for Filing Prior Art or Section 301 Written Statements

2205Content of Prior Art or Section 301 Written Statements

2206Submission and Handling of Prior Art or Section 301 Written Statements

2207Entry of Court Decision in Patent File

2208Service of Prior Art or Section 301 Written Statements on Patent Owner

High Yield

2209Ex Parte Reexamination

High Yield

2210Request for Ex Parte Reexamination under 35 U.S.C. 302

2211Time for Requesting Ex Parte Reexamination under 35 U.S.C. 302

2212Persons Who May File a Request for Ex Parte Reexamination under 35 U.S.C. 302

2213Representative of Requester

2214Content of Request for Ex Parte Reexamination Filed under 35 U.S.C. 302

High Yield

2215Fee for Requesting Ex Parte Reexamination under 35 U.S.C. 302

2216Substantial New Question of Patentability

2217Statement Applying Prior Art in a Request Filed under 35 U.S.C. 302

2218Copies of Prior Art

2219Copy of Printed Patent

2220Certificate of Service

2221Amendments Included in Request Filed under 35 U.S.C. 302 by Patent Owner

2222Address of Patent Owner

2223Withdrawal of Attorney or Agent

2224Correspondence

2225Untimely Paper Filed Prior to Order under 35 U.S.C. 304

2226Initial Processing of Request for Ex Parte Reexamination Filed under 35 U.S.C. 302

2227Incomplete Request for Ex Parte Reexamination Filed under 35 U.S.C. 302

2229Notice of Request under 35 U.S.C. 302 for Ex Parte Reexamination in Official Gazette

2230Constructive Notice to Patent Owner

2231Processing of Request Corrections

2232Public Access to Reexaminations Filed under 35 U.S.C. 302

2233Processing in Central Reexamination Unit and Technology Center

2234Entry of Amendments

2235Record Systems

2236Assignment of Reexamination

2237Transfer Procedure

2238Time Reporting

2239Reexamination Ordered at the Director’s Initiative

2240Decision on Request Filed under 35 U.S.C. 302

High Yield

2241Time for Deciding Request Filed under 35 U.S.C. 302

2242Criteria for Deciding Request Filed under 35 U.S.C. 302

2243Claims Considered in Deciding Request Filed under 35 U.S.C. 302

2244Prior Art on Which the Determination Is Based in Requests Filed under 35 U.S.C. 302

2245Processing of Decision

2246Decision Ordering Reexamination under 35 U.S.C. 304

2247Decision under 35 U.S.C. 303 on Request for Reexamination filed Under 35 U.S.C. 302, Request Denied

2248Petition From Denial of Request Filed Under 35 U.S.C. 302

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

High Yield

2250Amendment by Patent Owner

High Yield

2251Reply by Third Party Requester

2252Consideration of Statement and Reply

2253Consideration by Examiner

2254Conduct of Ex Parte Reexamination Proceedings

2255Who Reexamines

2256Prior Art Patents and Printed Publications Reviewed by Examiner in Reexamination

2257Listing of Prior Art

2258Scope of Ex Parte Reexamination

2259Res Judicata and Collateral Estoppel in Reexamination Proceedings

2260Office Actions

2261Special Status for Action

2262Form and Content of Office Action

2263Time for Response

2264Mailing of Office Action

2265Extension of Time

2266Responses

2267Handling of Inappropriate or Untimely Filed Papers

2268Petition for Entry of Late Papers for Revival of Reexamination Proceeding

2269Reconsideration

2270Clerical Handling

2271Final Action

2272After Final Practice

2273Appeal in Ex Parte Reexamination

2274Appeal Brief

2275Examiner’s Answer

2276Oral Hearing

2277Board Decision

2278Action Following Decision

2279Appeal to Courts

2280Information Material to Patentability in Reexamination Proceeding Filed under 35 U.S.C. 302

2281Interviews in Ex Parte Reexamination Proceedings

2282Notification of Existence of Prior or Concurrent Proceedings and Decisions Thereon

2283Multiple Copending Ex Parte Reexamination Proceedings

2284Copending Ex Parte Reexamination and Interference Proceedings

2285Copending Ex Parte Reexamination and Reissue Proceedings

2286Ex Parte Reexamination and Litigation Proceedings

2287Conclusion of Ex Parte Reexamination Proceeding

2288Issuance of Ex Parte Reexamination Certificate

2289Reexamination Review

2290Format of Ex Parte Reexamination Certificate

2291Notice of Ex Parte Reexamination Certificate Issuance in Official Gazette

2292Distribution of Certificate

2293Intervening Rights

High Yield

2294Concluded Reexamination Proceedings

2295Reexamination of a Reexamination

2296USPTO Forms To Be Used In Ex Parte Reexamination