MPEP § 2253 — Consideration by Examiner (Annotated Rules)
§2253 Consideration by Examiner
This page consolidates and annotates all enforceable requirements under MPEP § 2253, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Consideration by Examiner
This section addresses Consideration by Examiner. Primary authority: 35 U.S.C. 304, 37 CFR 1.530, and 37 CFR 1.535. Contains: 1 guidance statement and 3 other statements.
Key Rules
First Action on Merits (FAOM)
Once reexamination is ordered under 35 U.S.C. 304, any submissions properly filed and served in accordance with 37 CFR 1.530 and 37 CFR 1.535 will be considered by the examiner when preparing the first Office action.
New Claims in Reexamination
With respect to consideration of any proposed amendments to the specification, including claims, made by the patent owner, the examiner will be guided by the provisions of 37 CFR 1.530(d)-(j). With respect to consideration of the patent owner’s statement, the examiner will be guided by 37 CFR 1.530(c).
Amendments in Reexamination
With respect to consideration of any proposed amendments to the specification, including claims, made by the patent owner, the examiner will be guided by the provisions of 37 CFR 1.530(d)-(j). With respect to consideration of the patent owner’s statement, the examiner will be guided by 37 CFR 1.530(c).
First Office Action on Merits
As to consideration of a reply by a third party requester, the examiner will be guided by 37 CFR 1.535. If the requester’s reply to the patent owner’s statement raises issues not previously presented, such issues will be treated by the examiner in the Office action if they are within the scope of reexamination. However, if an issue raised by the third party requester in the reply is not within the scope of reexamination, it should be treated pursuant to 37 CFR 1.552(c).
Citations
| Primary topic | Citation |
|---|---|
| First Action on Merits (FAOM) | 35 U.S.C. § 304 |
| First Action on Merits (FAOM) | 37 CFR § 1.530 |
| Amendments in Reexamination New Claims in Reexamination | 37 CFR § 1.530(c) |
| Amendments in Reexamination New Claims in Reexamination | 37 CFR § 1.530(d) |
| First Action on Merits (FAOM) First Office Action on Merits | 37 CFR § 1.535 |
| First Office Action on Merits | 37 CFR § 1.552(c) |
| – | MPEP § 2270 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2253 — Consideration by Examiner
Source: USPTO2253 Consideration by Examiner [R-07.2015]
Once reexamination is ordered under 35 U.S.C. 304, any submissions properly filed and served in accordance with 37 CFR 1.530 and 37 CFR 1.535 will be considered by the examiner when preparing the first Office action.
With respect to consideration of any proposed amendments to the specification, including claims, made by the patent owner, the examiner will be guided by the provisions of 37 CFR 1.530(d)-(j). With respect to consideration of the patent owner’s statement, the examiner will be guided by 37 CFR 1.530(c).
As to consideration of a reply by a third party requester, the examiner will be guided by 37 CFR 1.535. If the requester’s reply to the patent owner’s statement raises issues not previously presented, such issues will be treated by the examiner in the Office action if they are within the scope of reexamination. However, if an issue raised by the third party requester in the reply is not within the scope of reexamination, it should be treated pursuant to 37 CFR 1.552(c).
For handling of new matter, see MPEP § 2270.