How is prior art handled in ex parte reexamination after the order is issued?

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.

The handling of prior art in ex parte reexamination after the order is issued is governed by specific rules. According to MPEP 2246:

1. Prior art citations or written statements under 37 CFR 1.501 submitted after the date of the decision on the order are stored until the reexamination is concluded.
2. After the reexamination proceeding is concluded, these submissions are entered into the patent file.
3. Submissions filed after the date of an order for reexamination will not be considered by the examiner during the reexamination.

The MPEP states: “Any prior art citations or written statements under 37 CFR 1.501 submitted after the date of the decision on the order are stored until the reexamination is concluded.” This approach ensures that the reexamination focuses on the substantial new question of patentability identified in the order, while still preserving relevant information for future reference.