35 U.S.C. § 302 — Request for reexamination (MPEP Coverage Index) – BlueIron IP

This page consolidates MPEP guidance interpreting 35 U.S.C. § 302, including 237 rules 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.

Summary

The Request for reexamination under 35 USC 302 allows patent owners to seek review and potential modification of an existing patent by demonstrating a substantial new question of patentability.

What this section covers

Outlines the statutory basis for ex parte reexamination requests under 35 USC 302.
Defines the scope and purpose of patent reexamination proceedings.

Key obligations

Demonstrate a substantial new question of patentability to initiate reexamination.
Provide comprehensive documentation and prior art supporting the reexamination request.
Comply with specific procedural requirements for filing a reexamination request.

Conditions and exceptions

Third-party submissions are not permitted in reexamination proceedings.

Practice notes

Carefully analyze prior art to establish a substantial new question of patentability.
Understand the limitations and potential outcomes of the reexamination process.

Patent Owner Can File Reissue Application for Broader ExaminationMPEP 2212Permitted
Estoppel Prohibition for Ex Parte Reexamination After IPR/PGRMPEP 2214Prohibited
Requirement for Substantial New Question of Patentability in Ex Parte Reexamination RequestMPEP 2216Required
Request Must Include Substantial New Question of PatentabilityMPEP 2216
Detailed Prior Art Application Required for Reexamination RequestMPEP 2217
Patent Owner Can Point Out Claim Distinction in Reexamination RequestMPEP 2217Permitted
Duplicate Copy Requirement When Service FailsMPEP 2220
Central Reexamination Unit Forms for Official Gazette NoticesMPEP 2229
Proceed Without Notice If Owner UnreachableMPEP 2230
No Fee for Reexamination Certificate IssuanceMPEP 2233Required
Requirement for Litigation Search and File Jacket Form in ReexaminationMPEP 2240
Guidance for Additional Litigation Search When DesirableMPEP 2240Permitted
Claims Basis for Substantial New Question of PatentabilityMPEP 2240
Substantial New Question of Patentability DeterminationMPEP 2240
Substantial New Question of Patentability Required for Second RequestMPEP 2240Recommended
Subsequent Ex Parte Reexamination Requests Must Raise New QuestionMPEP 2240Recommended
CRU Requests Waiver of Patent Owner’s StatementMPEP 2249
CRU Records Patent Owner’s Agreement on Waiver of StatementMPEP 2249
Patent Owner Waiver Not Required for Ex Parte ReexaminationMPEP 2249Required
Issue of Double Patenting Must Be Evaluated During ReexaminationMPEP 2258
Examiner Must Determine Double Patenting QuestionMPEP 2258Recommended
Issue of Double Patenting During ExaminationMPEP 2258
Admissions Can Modify Prior Art in ReexaminationMPEP 2258Permitted
Admissions by Patent Owner Can Determine Prior Art ScopeMPEP 2258Permitted
Request Must Apply Cited Art to ClaimsMPEP 2258Required
Office May Initiate Reexamination Without RequestMPEP 2258Permitted
Continuing Disclosure Requirement During ReexaminationMPEP 2280Required
Ex Parte Reexamination When Involved in LitigationMPEP 2286
Ex Parte Reexamination Where Concurrent Litigation ExistsMPEP 2286
Material to Patentability Standard Applies to Ex Parte ReexaminationMPEP 2818.01
Applicant Reference Read As Patent Owner In Supplemental Examination and Ex Parte ReexaminationMPEP 2818.01
Certifications Ensure Estoppel ComplianceMPEP 2214
Real Party In Interest Can Remain Anonymous Through PractitionerMPEP 2214Permitted
Certification Requirement for Real Party In InterestMPEP 2214
Individual Filer Must Sign CertificationMPEP 2214Prohibited
New Request for Reexamination of Reissued Patent RequiredMPEP 2258Required
Weekly Forms Sent to Data Management for Official Gazette PublicationMPEP 2229
Litigation Review Required for Ex Parte ReexaminationMPEP 2240Recommended
Litigation Reference Requirement for Reexamination IFW File Jacket FormMPEP 2240Recommended
No Need to Repeat Litigation Search if Already NotedMPEP 2240
Discussion of Merits Not Permitted in Reexamination ProceedingsMPEP 2249Permitted
Copy of Form Mailed to Patent Owner and Requester After Interview SummaryMPEP 2249
Examiner Can Issue First Office Action on Same Day as Order If Patent Owner Waives StatementMPEP 2249Permitted
Corporations and Governmental Entities Can File for Ex Parte ReexaminationMPEP 2212
Patent Owner Can Request Ex Parte Reexamination Limited to Prior ArtMPEP 2212Permitted
Requestor’s Name Not Kept Confidential During Ex Parte ReexaminationMPEP 2212
Reduced Fee for Ex Parte Reexamination RequestsMPEP 2214
Reduced Fee for Streamlined Ex Parte Reexamination RequestsMPEP 2215
Request Must Distinguish Previous ExaminationMPEP 2216Required
Prior Art Cannot Be Used for Public Use GroundsMPEP 2217Prohibited
Prior Art Must Directly Apply to ClaimsMPEP 2217Required
Service Must Be Made on Patent Owner’s Correspondence AddressMPEP 2220Required
Third Party Requester Must Include Service Details on CertificateMPEP 2220Required
Certificate of Service Must Be Attached to RequestMPEP 2220Required
Certificate of Service Must Include Request and CopyMPEP 2220Required
Duplicate Copy When Service Not PossibleMPEP 2220Required
Constructive Notice Without Current AddressMPEP 2230Prohibited
New Question of Patentability Not Precluded by Previous CitationsMPEP 2240
Director's Final Nonappealable Determination on PatentabilityMPEP 2240
Requirement for Reexamining Patent When Substantial New Question of Patentability RisesMPEP 2246
Patent Owner Must File Statement Within Two MonthsMPEP 2246Permitted
Person May File Reply Within Two MonthsMPEP 2246Permitted
Patent Owner Must Promptly Serve Reply to RequesterMPEP 2246
No Claim Fee for Existing Claims RevisionMPEP 2250.03
Excess Claims Fees Apply Only to New Claims in ReexaminationMPEP 2250.03
Double Patenting Must Be Considered During ReexaminationMPEP 2258
Examiner Must Determine Double Patenting Rejection AppropriatenessMPEP 2258Recommended
Admissions in Parent Specification Considered as Prior Art During ReexaminationMPEP 2258Permitted
Admissions Regarding Prior Art Must Be Considered in ReexaminationMPEP 2258
Prior Art Admissions Must Be Considered in ReexaminationMPEP 2258
Board Overrules Prior Admission RequirementMPEP 2258Required
Patent Owner Admissions ProperMPEP 2258
Third Parties Cannot Submit Patent Owner’s Outside AdmissionsMPEP 2258Prohibited
Admissions Not Part of ReexaminationMPEP 2258
Reexamination Limited to Live ClaimsMPEP 2258
Art Must Be Applied to All Requested Claims for ReexaminationMPEP 2258
Clear Issue Must Be Developed Before Final ActionMPEP 2271Recommended
Examiner Must Provide Patent Owner with Useful Information Twice Before Final ActionMPEP 2271Permitted
Identification of Substantial New Questions Raised by Cited Prior Art in ReexaminationMPEP 2271
No Action by USPTO After Patent Grant Except as ProvidedMPEP 1305Permitted
Guide for Processing Prior Art Citations and Ex Parte Reexamination RequestsMPEP 2201
Any Person May Request Patent Reexamination Based on Prior ArtMPEP 2210Permitted
Request for Reexamination Must Be Accompanied by FeeMPEP 2210Required
Request Must Cite Pertinent Prior Art for Each ClaimMPEP 2210Required
Request for Reexamination Copy Sent to Patent OwnerMPEP 2210
Any Person Can File Request for Ex Parte Reexamination Unless EstoppedMPEP 2212Prohibited
Any Person May Seek Patent Reexamination Under 35 U.S.C. 302MPEP 2212
Patent Owner Estoppel Bars Ex Parte Reexamination RequestMPEP 2212
Who Can Request Ex Parte Reexamination of a PatentMPEP 2212
Fee Required for Reexamination RequestMPEP 2214
Excess Claims Fees for Proposed Amendments During ReexaminationMPEP 2214Permitted
Certification Required for Ex Parte ReexaminationMPEP 2214
Anonymous Filing Not Required for Ex Parte Reexamination RequestsMPEP 2214
Streamlined Request for Ex Parte Reexamination with Reduced FeeMPEP 2214Permitted
Filing Fee Required for Ex Parte Reexamination Request Before January 16, 2018MPEP 2215Required
Excess Claims Fees for Patent Owner's Request with Proposed AmendmentMPEP 2215Permitted
Reduced Fee for Streamlined Ex Parte Reexamination RequestsMPEP 2215Permitted
Filing Fee for Ex Parte Reexamination Requests Filed Before January 16, 2018MPEP 2215
Refund for Denied Ex Parte Reexamination RequestMPEP 2215
Refund for Incomplete Ex Parte Reexamination RequestMPEP 2215
Request Must Clearly State Substantial New Question of PatentabilityMPEP 2216
Request Content Must Exclude Non-Prior Art RejectionsMPEP 2216Recommended
Request Must Explain Prior Art for Each ClaimMPEP 2217Required
Patentability Questions Must Be Based on Patents or PublicationsMPEP 2217Required
Request Must Be Served on Patent OwnerMPEP 2220Required
Address for Ex Parte Reexamination CorrespondenceMPEP 2224Recommended
Complete Ex Parte Reexamination Requests Published in Official GazetteMPEP 2229
Ex Parte Reexamination Requests and Director-Initiated Orders Must Be Announced in Official GazetteMPEP 2229
Constructive Notice Through Official Gazette PublicationMPEP 2230
Submissions for Ex Parte Reexamination Must Be Marked CorrectlyMPEP 2231Recommended
Fees for Reexamination Request and AppealsMPEP 2233
Director Must Determine Substantial New Question of Patentability Within Three MonthsMPEP 2240
Director May Determine New Patentability QuestionsMPEP 2240Permitted
Director May Refund Reexamination Fee If No New Question RaisedMPEP 2240Required
Patent Litigation Review Required Before Reexamination DeterminationMPEP 2240Required
Amendments Not Considered in Ex Parte ReexaminationMPEP 2240
Examiner Must State Initial Position on Requested IssuesMPEP 2240Recommended
Substantial New Question Depends on Cited Prior Art in Second Ex Parte Reexamination RequestMPEP 2240
Patent Owner Must Serve Copy of Statement on RequestorMPEP 2246
Central Reexamination Unit Requests Waiver of Patent Owner’s StatementMPEP 2249
Excess Claims Fees for Patent Owner Amendments During Ex Parte ReexaminationMPEP 2250.03Permitted
Double Patenting Issue in ReexaminationMPEP 2258
Admissions by Patent Owner Can Be Used in Reexamination for Anticipation and Obviousness DeterminationsMPEP 2258Permitted
Admissions Considered as Prior Art in ReexaminationMPEP 2258
Admission of Prior Art in ReexaminationMPEP 2258Permitted
Claims Not Requested for Reexamination Generally Not ExaminedMPEP 2258Required
Office Has Sole Discretion to Reexamine ClaimsMPEP 2258
Office May Initiate Ex Parte Reexamination Without RequestMPEP 2258Permitted
Examiner Must Not Raise Independently Discovered IssuesMPEP 2258
Reexamination Denied After Patent ReissueMPEP 2258
Amendments Must Reflect Reissue ChangesMPEP 2258Recommended
First Office Action Must Consider All SubmissionsMPEP 2271Recommended
Disclosure Obligation for Patent Owner and RepresentativesMPEP 2280
Request for Ex Parte Reexamination at Any TimeMPEP 2286
Ex Parte Reexamination Material Limited to Patents and PublicationsMPEP 2818.01

Requirement for Substantial New Question of Patentability in Ex Parte Reexamination RequestMPEP 2216Required
No Fee for Reexamination Certificate IssuanceMPEP 2233Required
Claim Not Requested for Reexamination Must Have Cited Art AppliedMPEP 2240Required
Request Must Apply Cited Art to ClaimsMPEP 2240Required
Request Must Address Modified ClaimsMPEP 2240Required
Requirement for Different Substantial New Question of PatentabilityMPEP 2240Required
Requirement for Substantial New Question of Patentability in ReexaminationMPEP 2240Required
Claim Requires Cited Art Application for ReexaminationMPEP 2243Required
Patent Owner Waiver Not Required for Ex Parte ReexaminationMPEP 2249Required
Request Must Apply Cited Art to ClaimsMPEP 2258Required
Continuing Disclosure Requirement During ReexaminationMPEP 2280Required
New Request for Reexamination of Reissued Patent RequiredMPEP 2258Required
Filing Fee for Non-Streamlined RequestMPEP 2214Required
Certification of Service on Patent Owner Required for Ex Parte Reexamination RequestMPEP 2214Required
Duplicate Copy When Service Not PossibleMPEP 2214Required
Filing Fee Requires Compliance with Specific RequirementsMPEP 2215Required
Filing Fee Must Comply with Specific RequirementsMPEP 2215Required
Filing Fee for Non-Streamlined Reexamination RequestsMPEP 2215Required
Requester Must Affirmatively State Small Entity StatusMPEP 2215Required
Request Must Distinguish Previous ExaminationMPEP 2216Required
Prior Art Must Directly Apply to ClaimsMPEP 2217Required
Translation Required for Non-English DocumentsMPEP 2218Required
Service Must Be Made on Patent Owner’s Correspondence AddressMPEP 2220Required
Third Party Requester Must Include Service Details on CertificateMPEP 2220Required
Certificate of Service Must Be Attached to RequestMPEP 2220Required
Certificate of Service Must Include Request and CopyMPEP 2220Required
Duplicate Copy When Service Not PossibleMPEP 2220Required
Board Overrules Prior Admission RequirementMPEP 2258Required
Request for Reexamination Must Be Accompanied by FeeMPEP 2210Required
Request Must Cite Pertinent Prior Art for Each ClaimMPEP 2210Required
Certification Required for Non-Patent Owner RequestsMPEP 2214Required
Ex Parte Reexamination Filing Fee Must Be PaidMPEP 2215Required
Filing Fee Required for Ex Parte Reexamination Request Before January 16, 2018MPEP 2215Required
Requirement for New Non-Cumulative Technological TeachingMPEP 2216Required
Request Must Explain Prior Art for Each ClaimMPEP 2217Required
Patentability Questions Must Be Based on Patents or PublicationsMPEP 2217Required
Requirement for Patent and Printed Publication CopiesMPEP 2218Required
Request Must Be Served on Patent OwnerMPEP 2220Required
Director May Refund Reexamination Fee If No New Question RaisedMPEP 2240Required
Patent Litigation Review Required Before Reexamination DeterminationMPEP 2240Required
Claims Not Requested for Reexamination Generally Not ExaminedMPEP 2240Required
Second Request Must Raise New Patentability QuestionMPEP 2240Required
Claims Not Requested for Reexamination Generally Not ExaminedMPEP 2243Required
Claims Not Requested for Reexamination Generally Not ExaminedMPEP 2258Required

Initial Determination of Substantial New Question of PatentabilityMPEP 2209
Limitations on Rejections in Ex Parte ReexaminationMPEP 2209Permitted
Reexamination Certificate Indicates Claim Status After TerminationMPEP 2209
Duplicate Copy When Service on Patent Owner Not PossibleMPEP 2214
Request Should Be Complete for Ex Parte ReexaminationMPEP 2214Recommended
102(g)(2) Rejection in First-to-Invent ReexaminationMPEP 2217Permitted
Admissions by Patent Owner Can Support New Question of PatentabilityMPEP 2217Prohibited
Requirement for Legible Prior Art CopiesMPEP 2218
Merit Papers Filed Before Decision ExpungedMPEP 2225
Requirement for Substantial New Question of Patentability in Reexamination RequestMPEP 2240
Requester Can Seek Review of Denial Decision for ReexaminationMPEP 2240Recommended
Substantial New Question of Patentability Required for ReexaminationMPEP 2240
Reexamination Limited to Requested ClaimsMPEP 2240
Office May Initiate Reexamination of Non-Request ClaimMPEP 2240Permitted
Claim Basis for Substantial New Question of PatentabilityMPEP 2243
Claims for Which Reexamination is Requested OnlyMPEP 2243
Petition Seeking Review Must Be Filed Within One MonthMPEP 2248
Double Patenting Considered in Ex Parte ReexaminationMPEP 2258
Patent Owner Can Disclose Information to Reexamination AgentMPEP 2280Permitted
No Duty to Submit Non-Material Information During ReexaminationMPEP 2280
Material to Patentability Standard for Ex Parte ReexaminationMPEP 2280
Ex Parte Reexamination Not Limited to Patents and Printed PublicationsMPEP 2280
Applicant Refers to Patent Owner in Ex Parte ReexaminationMPEP 2280
Requirement for Determining SNQ After Request FilingMPEP 2816
Notification of Returned/Expunged Papers RequiredMPEP 2225
Returned/Pages Expunged May Be Resubmitted LaterMPEP 2225Permitted
Papers Directed to Merits Prohibited Before DecisionMPEP 2225
Proper Claim Amendment Format for Patent OwnerMPEP 2234
Amendments Required for Merged Reexamination ProceedingsMPEP 2234
Determination Without Limiting to Requested CitationsMPEP 2240Permitted
No Patent Owner Input Before Determination Unless RequestedMPEP 2240
Director Must Determine Substantial New Question of PatentabilityMPEP 2240
Patentability Not Decided in Request DecisionMPEP 2240
No Prima Facie Case Needed for ReexaminationMPEP 2240
Art Must Be Applied to All Requested Claims for ReexaminationMPEP 2240
New Question Requires ReexaminationMPEP 2209
Reexamination Proceedings Similar to Regular ExaminationMPEP 2209
Filing Fee Requirement for Ex Parte Reexamination RequestsMPEP 2215
Patent Owner Can Establish Micro Entity StatusMPEP 2215Permitted
Third-Party Requester Cannot Establish Micro Entity StatusMPEP 2215Prohibited
Exceptions to Patentability Based on Prior ArtMPEP 2217
Nonstatutory Double Patenting Rejection Allowed for Same Filing DateMPEP 2217
Legible Copy Required for Patent RequestMPEP 2218
Color Photographs and Submissions Must Be Legible as PresentedMPEP 2218
Translation Required for Non-English DocumentsMPEP 2218
Non-English Publications Require TranslationMPEP 2218
Third Party Requester Must Apply Art to All ClaimsMPEP 2243
Double Patenting Consideration During ReexaminationMPEP 2258
Third Parties Can Submit Information in Reissue ApplicationsMPEP 1134.01
Third-Party Submission as Protest in Reissue ApplicationMPEP 1134.01
No Third-Party Submissions in Post-Issuance ProceedingsMPEP 1134.01Permitted
Request for Ex Parte Reexamination AllowedMPEP 2209
Filing Fee for Non-Streamlined Reexamination RequestMPEP 2214
Filing Fee for Non-Compliant Reexamination RequestsMPEP 2215
Different Filing Fees for Large, Small, and Micro EntitiesMPEP 2215
Substantial New Questions of Patentability Based on Prior ArtMPEP 2217
Ex Parte Reexamination Consideration Limited to Patents and PublicationsMPEP 2217
Papers Directed to Merits Prohibited Before DecisionMPEP 2225Recommended
Clerical Handling of Amendments by Patent OwnerMPEP 2234
Director Must Determine Substantial New Question of Patentability Within 3 MonthsMPEP 2240
Decision on Request for ReexaminationMPEP 2240
Office Has Sole Discretion to Reexamine ClaimsMPEP 2240
Office May Reexamine Unrequested ClaimsMPEP 2240Permitted
Claims for Which Reexamination is Requested OnlyMPEP 2243
Office Has Sole Discretion to Reexamine ClaimsMPEP 2243
Office May Reexamine Unrequested Claims Under 35 U.S.C. 302MPEP 2243Permitted
Office May Initiate Reexamination of Non-Requested ClaimsMPEP 2243Permitted
Examiner Can Examine Unrequested ClaimsMPEP 2243Permitted
Non-Patent Grounds Not Considered in ReexaminationMPEP 2246Recommended
Petition for Review of Examiner’s Determination Refusing ReexaminationMPEP 2248
Patent Owner’s Statement Before Reexamination Order Not AcknowledgedMPEP 2249
Amendments Must Not Enlarge Claim ScopeMPEP 2250Prohibited
Claims Must Not Broaden Patent ScopeMPEP 2250Recommended
Amended Claim Must Not Enlarge Original ScopeMPEP 2250
Amendments Must Not Enlarge Claim ScopeMPEP 2250
Amendments Considered Before Certificate IssuanceMPEP 2250
Double Patenting Considered in ReexaminationMPEP 2258
Amendments for Reexamination Must Comply with RulesMPEP 2270
Individuals Involved Must Disclose Information to Patent Owner or AttorneyMPEP 2280Permitted
Ex Parte Reexamination Material Limited to Patents and PublicationsMPEP 2280
Standard for Raising SNQ in Supplemental ExaminationMPEP 2816

MPEP Section	Rules
MPEP § 1134.01	Third Parties Can Submit Information in Reissue ApplicationsMPEP 1134.01 Third-Party Submission as Protest in Reissue ApplicationMPEP 1134.01 No Third-Party Submissions in Post-Issuance ProceedingsMPEP 1134.01Permitted
MPEP § 1305	No Action by USPTO After Patent Grant Except as ProvidedMPEP 1305Permitted
MPEP § 2201	Guide for Processing Prior Art Citations and Ex Parte Reexamination RequestsMPEP 2201
MPEP § 2209	Initial Determination of Substantial New Question of PatentabilityMPEP 2209 Limitations on Rejections in Ex Parte ReexaminationMPEP 2209Permitted Reexamination Certificate Indicates Claim Status After TerminationMPEP 2209 New Question Requires ReexaminationMPEP 2209 Reexamination Proceedings Similar to Regular ExaminationMPEP 2209 Request for Ex Parte Reexamination AllowedMPEP 2209
MPEP § 2210	Any Person May Request Patent Reexamination Based on Prior ArtMPEP 2210Permitted Request for Reexamination Must Be Accompanied by FeeMPEP 2210Required Request Must Cite Pertinent Prior Art for Each ClaimMPEP 2210Required Request for Reexamination Copy Sent to Patent OwnerMPEP 2210
MPEP § 2212	Patent Owner Can File Reissue Application for Broader ExaminationMPEP 2212Permitted Corporations and Governmental Entities Can File for Ex Parte ReexaminationMPEP 2212 Patent Owner Can Request Ex Parte Reexamination Limited to Prior ArtMPEP 2212Permitted Requestor’s Name Not Kept Confidential During Ex Parte ReexaminationMPEP 2212 Any Person Can File Request for Ex Parte Reexamination Unless EstoppedMPEP 2212Prohibited Any Person May Seek Patent Reexamination Under 35 U.S.C. 302MPEP 2212 Patent Owner Estoppel Bars Ex Parte Reexamination RequestMPEP 2212 Who Can Request Ex Parte Reexamination of a PatentMPEP 2212
MPEP § 2214	Duplicate Copy When Service on Patent Owner Not PossibleMPEP 2214 Request Should Be Complete for Ex Parte ReexaminationMPEP 2214Recommended Estoppel Prohibition for Ex Parte Reexamination After IPR/PGRMPEP 2214Prohibited Certifications Ensure Estoppel ComplianceMPEP 2214 Real Party In Interest Can Remain Anonymous Through PractitionerMPEP 2214Permitted Certification Requirement for Real Party In InterestMPEP 2214 Individual Filer Must Sign CertificationMPEP 2214Prohibited Filing Fee for Non-Streamlined RequestMPEP 2214Required Certification of Service on Patent Owner Required for Ex Parte Reexamination RequestMPEP 2214Required Duplicate Copy When Service Not PossibleMPEP 2214Required Reduced Fee for Ex Parte Reexamination RequestsMPEP 2214 Fee Required for Reexamination RequestMPEP 2214 Excess Claims Fees for Proposed Amendments During ReexaminationMPEP 2214Permitted Certification Required for Non-Patent Owner RequestsMPEP 2214Required Certification Required for Ex Parte ReexaminationMPEP 2214 Anonymous Filing Not Required for Ex Parte Reexamination RequestsMPEP 2214 Streamlined Request for Ex Parte Reexamination with Reduced FeeMPEP 2214Permitted Filing Fee for Non-Streamlined Reexamination RequestMPEP 2214
MPEP § 2215	Filing Fee Requires Compliance with Specific RequirementsMPEP 2215Required Filing Fee Must Comply with Specific RequirementsMPEP 2215Required Filing Fee Requirement for Ex Parte Reexamination RequestsMPEP 2215 Reduced Fee for Streamlined Ex Parte Reexamination RequestsMPEP 2215 Filing Fee for Non-Streamlined Reexamination RequestsMPEP 2215Required Requester Must Affirmatively State Small Entity StatusMPEP 2215Required Patent Owner Can Establish Micro Entity StatusMPEP 2215Permitted Third-Party Requester Cannot Establish Micro Entity StatusMPEP 2215Prohibited Ex Parte Reexamination Filing Fee Must Be PaidMPEP 2215Required Filing Fee Required for Ex Parte Reexamination Request Before January 16, 2018MPEP 2215Required Excess Claims Fees for Patent Owner's Request with Proposed AmendmentMPEP 2215Permitted Reduced Fee for Streamlined Ex Parte Reexamination RequestsMPEP 2215Permitted Filing Fee for Non-Compliant Reexamination RequestsMPEP 2215 Filing Fee for Ex Parte Reexamination Requests Filed Before January 16, 2018MPEP 2215 Different Filing Fees for Large, Small, and Micro EntitiesMPEP 2215 Refund for Denied Ex Parte Reexamination RequestMPEP 2215 Refund for Incomplete Ex Parte Reexamination RequestMPEP 2215
MPEP § 2216	Requirement for Substantial New Question of Patentability in Ex Parte Reexamination RequestMPEP 2216Required Request Must Include Substantial New Question of PatentabilityMPEP 2216 Request Must Distinguish Previous ExaminationMPEP 2216Required Request Must Clearly State Substantial New Question of PatentabilityMPEP 2216 Requirement for New Non-Cumulative Technological TeachingMPEP 2216Required Request Content Must Exclude Non-Prior Art RejectionsMPEP 2216Recommended
MPEP § 2217	Detailed Prior Art Application Required for Reexamination RequestMPEP 2217 Patent Owner Can Point Out Claim Distinction in Reexamination RequestMPEP 2217Permitted 102(g)(2) Rejection in First-to-Invent ReexaminationMPEP 2217Permitted Admissions by Patent Owner Can Support New Question of PatentabilityMPEP 2217Prohibited Prior Art Cannot Be Used for Public Use GroundsMPEP 2217Prohibited Prior Art Must Directly Apply to ClaimsMPEP 2217Required Exceptions to Patentability Based on Prior ArtMPEP 2217 Nonstatutory Double Patenting Rejection Allowed for Same Filing DateMPEP 2217 Request Must Explain Prior Art for Each ClaimMPEP 2217Required Patentability Questions Must Be Based on Patents or PublicationsMPEP 2217Required Substantial New Questions of Patentability Based on Prior ArtMPEP 2217 Ex Parte Reexamination Consideration Limited to Patents and PublicationsMPEP 2217
MPEP § 2218	Requirement for Legible Prior Art CopiesMPEP 2218 Legible Copy Required for Patent RequestMPEP 2218 Color Photographs and Submissions Must Be Legible as PresentedMPEP 2218 Translation Required for Non-English DocumentsMPEP 2218Required Translation Required for Non-English DocumentsMPEP 2218 Non-English Publications Require TranslationMPEP 2218 Requirement for Patent and Printed Publication CopiesMPEP 2218Required
MPEP § 2220	Duplicate Copy Requirement When Service FailsMPEP 2220 Service Must Be Made on Patent Owner’s Correspondence AddressMPEP 2220Required Third Party Requester Must Include Service Details on CertificateMPEP 2220Required Certificate of Service Must Be Attached to RequestMPEP 2220Required Certificate of Service Must Include Request and CopyMPEP 2220Required Duplicate Copy When Service Not PossibleMPEP 2220Required Request Must Be Served on Patent OwnerMPEP 2220Required
MPEP § 2224	Address for Ex Parte Reexamination CorrespondenceMPEP 2224Recommended
MPEP § 2225	Merit Papers Filed Before Decision ExpungedMPEP 2225 Notification of Returned/Expunged Papers RequiredMPEP 2225 Returned/Pages Expunged May Be Resubmitted LaterMPEP 2225Permitted Papers Directed to Merits Prohibited Before DecisionMPEP 2225 Papers Directed to Merits Prohibited Before DecisionMPEP 2225Recommended
MPEP § 2229	Central Reexamination Unit Forms for Official Gazette NoticesMPEP 2229 Weekly Forms Sent to Data Management for Official Gazette PublicationMPEP 2229 Complete Ex Parte Reexamination Requests Published in Official GazetteMPEP 2229 Ex Parte Reexamination Requests and Director-Initiated Orders Must Be Announced in Official GazetteMPEP 2229
MPEP § 2230	Proceed Without Notice If Owner UnreachableMPEP 2230 Constructive Notice Without Current AddressMPEP 2230Prohibited Constructive Notice Through Official Gazette PublicationMPEP 2230
MPEP § 2231	Submissions for Ex Parte Reexamination Must Be Marked CorrectlyMPEP 2231Recommended
MPEP § 2233	No Fee for Reexamination Certificate IssuanceMPEP 2233Required Fees for Reexamination Request and AppealsMPEP 2233
MPEP § 2234	Proper Claim Amendment Format for Patent OwnerMPEP 2234 Amendments Required for Merged Reexamination ProceedingsMPEP 2234 Clerical Handling of Amendments by Patent OwnerMPEP 2234
MPEP § 2240	Requirement for Litigation Search and File Jacket Form in ReexaminationMPEP 2240 Guidance for Additional Litigation Search When DesirableMPEP 2240Permitted Claims Basis for Substantial New Question of PatentabilityMPEP 2240 Substantial New Question of Patentability DeterminationMPEP 2240 Requirement for Substantial New Question of Patentability in Reexamination RequestMPEP 2240 Requester Can Seek Review of Denial Decision for ReexaminationMPEP 2240Recommended Substantial New Question of Patentability Required for ReexaminationMPEP 2240 Reexamination Limited to Requested ClaimsMPEP 2240 Claim Not Requested for Reexamination Must Have Cited Art AppliedMPEP 2240Required Office May Initiate Reexamination of Non-Request ClaimMPEP 2240Permitted Request Must Apply Cited Art to ClaimsMPEP 2240Required Substantial New Question of Patentability Required for Second RequestMPEP 2240Recommended Subsequent Ex Parte Reexamination Requests Must Raise New QuestionMPEP 2240Recommended Request Must Address Modified ClaimsMPEP 2240Required Requirement for Different Substantial New Question of PatentabilityMPEP 2240Required Requirement for Substantial New Question of Patentability in ReexaminationMPEP 2240Required Litigation Review Required for Ex Parte ReexaminationMPEP 2240Recommended Litigation Reference Requirement for Reexamination IFW File Jacket FormMPEP 2240Recommended No Need to Repeat Litigation Search if Already NotedMPEP 2240 Determination Without Limiting to Requested CitationsMPEP 2240Permitted No Patent Owner Input Before Determination Unless RequestedMPEP 2240 Director Must Determine Substantial New Question of PatentabilityMPEP 2240 Patentability Not Decided in Request DecisionMPEP 2240 No Prima Facie Case Needed for ReexaminationMPEP 2240 Art Must Be Applied to All Requested Claims for ReexaminationMPEP 2240 New Question of Patentability Not Precluded by Previous CitationsMPEP 2240 Director's Final Nonappealable Determination on PatentabilityMPEP 2240 Director Must Determine Substantial New Question of Patentability Within Three MonthsMPEP 2240 Director May Determine New Patentability QuestionsMPEP 2240Permitted Director May Refund Reexamination Fee If No New Question RaisedMPEP 2240Required Patent Litigation Review Required Before Reexamination DeterminationMPEP 2240Required Director Must Determine Substantial New Question of Patentability Within 3 MonthsMPEP 2240 Amendments Not Considered in Ex Parte ReexaminationMPEP 2240 Decision on Request for ReexaminationMPEP 2240 Claims Not Requested for Reexamination Generally Not ExaminedMPEP 2240Required Office Has Sole Discretion to Reexamine ClaimsMPEP 2240 Office May Reexamine Unrequested ClaimsMPEP 2240Permitted Examiner Must State Initial Position on Requested IssuesMPEP 2240Recommended Substantial New Question Depends on Cited Prior Art in Second Ex Parte Reexamination RequestMPEP 2240 Second Request Must Raise New Patentability QuestionMPEP 2240Required
MPEP § 2243	Claim Basis for Substantial New Question of PatentabilityMPEP 2243 Claims for Which Reexamination is Requested OnlyMPEP 2243 Claim Requires Cited Art Application for ReexaminationMPEP 2243Required Third Party Requester Must Apply Art to All ClaimsMPEP 2243 Claims for Which Reexamination is Requested OnlyMPEP 2243 Claims Not Requested for Reexamination Generally Not ExaminedMPEP 2243Required Office Has Sole Discretion to Reexamine ClaimsMPEP 2243 Office May Reexamine Unrequested Claims Under 35 U.S.C. 302MPEP 2243Permitted Office May Initiate Reexamination of Non-Requested ClaimsMPEP 2243Permitted Examiner Can Examine Unrequested ClaimsMPEP 2243Permitted
MPEP § 2246	Requirement for Reexamining Patent When Substantial New Question of Patentability RisesMPEP 2246 Patent Owner Must File Statement Within Two MonthsMPEP 2246Permitted Person May File Reply Within Two MonthsMPEP 2246Permitted Patent Owner Must Promptly Serve Reply to RequesterMPEP 2246 Patent Owner Must Serve Copy of Statement on RequestorMPEP 2246 Non-Patent Grounds Not Considered in ReexaminationMPEP 2246Recommended
MPEP § 2248	Petition Seeking Review Must Be Filed Within One MonthMPEP 2248 Petition for Review of Examiner’s Determination Refusing ReexaminationMPEP 2248
MPEP § 2249	CRU Requests Waiver of Patent Owner’s StatementMPEP 2249 CRU Records Patent Owner’s Agreement on Waiver of StatementMPEP 2249 Patent Owner Waiver Not Required for Ex Parte ReexaminationMPEP 2249Required Discussion of Merits Not Permitted in Reexamination ProceedingsMPEP 2249Permitted Copy of Form Mailed to Patent Owner and Requester After Interview SummaryMPEP 2249 Examiner Can Issue First Office Action on Same Day as Order If Patent Owner Waives StatementMPEP 2249Permitted Patent Owner’s Statement Before Reexamination Order Not AcknowledgedMPEP 2249 Central Reexamination Unit Requests Waiver of Patent Owner’s StatementMPEP 2249
MPEP § 2250	Amendments Must Not Enlarge Claim ScopeMPEP 2250Prohibited Claims Must Not Broaden Patent ScopeMPEP 2250Recommended Amended Claim Must Not Enlarge Original ScopeMPEP 2250 Amendments Must Not Enlarge Claim ScopeMPEP 2250 Amendments Considered Before Certificate IssuanceMPEP 2250
MPEP § 2250.03	No Claim Fee for Existing Claims RevisionMPEP 2250.03 Excess Claims Fees Apply Only to New Claims in ReexaminationMPEP 2250.03 Excess Claims Fees for Patent Owner Amendments During Ex Parte ReexaminationMPEP 2250.03Permitted
MPEP § 2258	Double Patenting Considered in Ex Parte ReexaminationMPEP 2258 Issue of Double Patenting Must Be Evaluated During ReexaminationMPEP 2258 Examiner Must Determine Double Patenting QuestionMPEP 2258Recommended Issue of Double Patenting During ExaminationMPEP 2258 Admissions Can Modify Prior Art in ReexaminationMPEP 2258Permitted Admissions by Patent Owner Can Determine Prior Art ScopeMPEP 2258Permitted Request Must Apply Cited Art to ClaimsMPEP 2258Required Office May Initiate Reexamination Without RequestMPEP 2258Permitted New Request for Reexamination of Reissued Patent RequiredMPEP 2258Required Double Patenting Consideration During ReexaminationMPEP 2258 Double Patenting Must Be Considered During ReexaminationMPEP 2258 Examiner Must Determine Double Patenting Rejection AppropriatenessMPEP 2258Recommended Admissions in Parent Specification Considered as Prior Art During ReexaminationMPEP 2258Permitted Admissions Regarding Prior Art Must Be Considered in ReexaminationMPEP 2258 Prior Art Admissions Must Be Considered in ReexaminationMPEP 2258 Board Overrules Prior Admission RequirementMPEP 2258Required Patent Owner Admissions ProperMPEP 2258 Third Parties Cannot Submit Patent Owner’s Outside AdmissionsMPEP 2258Prohibited Admissions Not Part of ReexaminationMPEP 2258 Reexamination Limited to Live ClaimsMPEP 2258 Art Must Be Applied to All Requested Claims for ReexaminationMPEP 2258 Double Patenting Considered in ReexaminationMPEP 2258 Double Patenting Issue in ReexaminationMPEP 2258 Admissions by Patent Owner Can Be Used in Reexamination for Anticipation and Obviousness DeterminationsMPEP 2258Permitted Admissions Considered as Prior Art in ReexaminationMPEP 2258 Admission of Prior Art in ReexaminationMPEP 2258Permitted Claims Not Requested for Reexamination Generally Not ExaminedMPEP 2258Required Office Has Sole Discretion to Reexamine ClaimsMPEP 2258 Office May Initiate Ex Parte Reexamination Without RequestMPEP 2258Permitted Examiner Must Not Raise Independently Discovered IssuesMPEP 2258 Reexamination Denied After Patent ReissueMPEP 2258 Amendments Must Reflect Reissue ChangesMPEP 2258Recommended
MPEP § 2270	Amendments for Reexamination Must Comply with RulesMPEP 2270
MPEP § 2271	Clear Issue Must Be Developed Before Final ActionMPEP 2271Recommended Examiner Must Provide Patent Owner with Useful Information Twice Before Final ActionMPEP 2271Permitted Identification of Substantial New Questions Raised by Cited Prior Art in ReexaminationMPEP 2271 First Office Action Must Consider All SubmissionsMPEP 2271Recommended
MPEP § 2280	Continuing Disclosure Requirement During ReexaminationMPEP 2280Required Patent Owner Can Disclose Information to Reexamination AgentMPEP 2280Permitted No Duty to Submit Non-Material Information During ReexaminationMPEP 2280 Material to Patentability Standard for Ex Parte ReexaminationMPEP 2280 Ex Parte Reexamination Not Limited to Patents and Printed PublicationsMPEP 2280 Applicant Refers to Patent Owner in Ex Parte ReexaminationMPEP 2280 Disclosure Obligation for Patent Owner and RepresentativesMPEP 2280 Individuals Involved Must Disclose Information to Patent Owner or AttorneyMPEP 2280Permitted Ex Parte Reexamination Material Limited to Patents and PublicationsMPEP 2280
MPEP § 2286	Ex Parte Reexamination When Involved in LitigationMPEP 2286 Ex Parte Reexamination Where Concurrent Litigation ExistsMPEP 2286 Request for Ex Parte Reexamination at Any TimeMPEP 2286
MPEP § 2816	Requirement for Determining SNQ After Request FilingMPEP 2816 Standard for Raising SNQ in Supplemental ExaminationMPEP 2816
MPEP § 2818.01	Material to Patentability Standard Applies to Ex Parte ReexaminationMPEP 2818.01 Applicant Reference Read As Patent Owner In Supplemental Examination and Ex Parte ReexaminationMPEP 2818.01 Ex Parte Reexamination Material Limited to Patents and PublicationsMPEP 2818.01

Related Provisions

Based on MPEP Last Modified: 10/30/2024 08:50:22

35 U.S.C. § 302 — Request for reexamination (MPEP Coverage Index) – BlueIron IP

35 U.S.C. § 302 Request for reexamination

Summary

Official MPEP § 302 — Request for reexamination

35 U.S.C. 302 Request for reexamination.

Verbatim in MPEP

Required Actions

Key Interpretations

Topics

MPEP Coverage

Related Provisions