How does an examiner handle new prior art citations during ex parte reexamination?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

Examiners must carefully consider new prior art citations during ex parte reexamination. The process for handling these citations is outlined in MPEP 2260:

“If a supplemental response is filed by the patent owner, the examiner may or may not find that the supplemental response should be entered and considered… If the supplemental response is not entered, the examiner will notify the patent owner.”

Key points on handling new prior art citations:

• Examiners must determine if the new art is relevant and material to patentability.
• If the new art is submitted with a proper supplemental response, it may be entered and considered.
• The examiner may issue a new Office action if the new art raises substantial new questions of patentability.
• If the new art does not raise new issues, the examiner may proceed with the current Office action.
• The patent owner must be notified if a supplemental response containing new art is not entered.

Examiners strive to ensure all relevant prior art is considered while maintaining the efficiency of the reexamination process.