35 U.S.C. § 303 — Determination of issue by Director (MPEP Coverage Index) – BlueIron IP

This page consolidates MPEP guidance interpreting 35 U.S.C. § 303, including 87 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

Section 35 USC 303 governs the Director's process for determining whether to grant an ex parte reexamination request based exclusively on prior art patents and printed publications.

What this section covers

Outlines the scope of the Director's review in ex parte reexamination requests under 35 U.S.C. 303.
Explains the limited evidentiary basis for determining whether to grant a reexamination request.

Key obligations

Limit reexamination requests to prior art patents and printed publications only.
Demonstrate a substantial new question of patentability based on the submitted prior art.
Follow specific procedural requirements for filing a reexamination request.

Conditions and exceptions

Recognize that patent owners can also file reexamination requests with specific limitations.

Practice notes

Carefully select and present prior art that clearly raises a substantial new question of patentability.
Be prepared for potential amendments to claims during the reexamination process.

Requirement for Substantial New Question of PatentabilityMPEP 2216
Previously Considered Art Presented Differently Raises Substantial New Question of PatentabilityMPEP 2216Permitted
Requirement for Substantial New Question of Patentability in ReexaminationMPEP 2216
Reexamination Request Must Present Art in New LightMPEP 2216
Director Must Determine Substantial New Question of Patentability Within Three MonthsMPEP 2240
Director May Determine New Patentability QuestionsMPEP 2240Permitted
New Question of Patentability Not Precluded by Previous CitationsMPEP 2240
Director's Final Nonappealable Determination on PatentabilityMPEP 2240
Director May Refund Reexamination Fee If No New Question RaisedMPEP 2240Required
Examiner Can Use Any Prior Art In Determining Substantial New Question of PatentabilityMPEP 2244Permitted
Examiner Can Use Any Prior Art for SNQ DeterminationMPEP 2244
Examiner Can Use Any Prior ArtMPEP 2244
Examiner Can Use Multiple Sources for Determining PatentabilityMPEP 2244Permitted
Primary Source of Patents and Publications for Ex Parte ReexaminationMPEP 2244
Examiner Can Use Old Art In ReexaminationMPEP 2244
Examiner Can Consider Patent File Submissions in DeterminationMPEP 2244Permitted
Examiner Can Perform Additional Search for Deficiencies in Requested Prior ArtMPEP 2244Permitted
Search Must Be Relevant to DeficiencyMPEP 2244Recommended
Partial Refund of Filing Fee After DenialMPEP 2248
Refund for Requested ReexaminationMPEP 2248
Decision on Petition Under 37 CFR 1.515(c) Is Final and Not AppealableMPEP 2248
Office Has Sole Discretion to Reexamine ClaimsMPEP 2258
Office May Initiate Ex Parte Reexamination Without RequestMPEP 2258Permitted
Office May Initiate Reexamination Without RequestMPEP 2258Permitted
Substantial New Question Not Precluded by Previous CitationsMPEP 2258.01
Double Patenting Can Raise SNQ During ReexaminationMPEP 804Permitted
Substantial New Question of Patentability During ReexaminationMPEP 804
Double Patenting Can Be Addressed During ReexaminationMPEP 804Permitted

Second Request Must Raise New Patentability QuestionMPEP 2240Required
Request Must Address Modified ClaimsMPEP 2240Required
Requirement for Substantial New Question of Patentability in ReexaminationMPEP 2240Required
Second Request for Reexamination Must Raise New Question of PatentabilityMPEP 2242Required
Second or Subsequent Reexamination Request Must Address Current ClaimsMPEP 2242Required
Requirement for Substantial New Question of Patentability in ReexaminationMPEP 2242Required
Director May Refund Reexamination Fee If No New Question RaisedMPEP 2240Required
Claims Not Requested for Reexamination Generally Not ExaminedMPEP 2240Required
Claim Not Requested for Reexamination Must Have Cited Art AppliedMPEP 2240Required
Request Must Apply Cited Art to ClaimsMPEP 2240Required
Requirement for Different Substantial New Question of PatentabilityMPEP 2240Required
Determination for Reexamination Must Be Made Within 3 MonthsMPEP 2241Required
Determination Must Be Mailed by Preceding Business Day If 3-Month Period Ends on HolidayMPEP 2241Required
Second Request Must Raise Different Substantial New Question of PatentabilityMPEP 2242Required
Claims Not Requested for Reexamination Generally Not ExaminedMPEP 2243Required
Claim Requires Cited Art Application for ReexaminationMPEP 2243Required

Admissions by Patent Owner Can Support New Question of PatentabilityMPEP 2217Prohibited
Director’s SNQ Decision Not Reviewable Until Final Agency ActionMPEP 2246
Double Patenting Considered in ReexaminationMPEP 2258
Admissions by Patent Owner Can Support New Question of PatentabilityMPEP 2258Prohibited
Patent Owner Statement Not Considered In Initial Reexamination DeterminationMPEP 2258Prohibited
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
Substantial New Question of Patentability Not Reviewable Until Final Agency DecisionMPEP 2246
Double Patenting Consideration During ReexaminationMPEP 2258
Request Must Conform to PCT RulesMPEP 1821Prohibited
Additional Material Must Be Deleted Ex OfficioMPEP 1821
Request Must Conform to PCT RulesMPEP 1821
Request for Ex Parte Reexamination AllowedMPEP 2209
Initial Determination of Substantial New Question of PatentabilityMPEP 2209
New Question Requires ReexaminationMPEP 2209
Reexamination Proceedings Similar to Regular ExaminationMPEP 2209
Limitations on Rejections in Ex Parte ReexaminationMPEP 2209Permitted
Reexamination Certificate Indicates Claim Status After TerminationMPEP 2209
Ex Parte Reexamination Consideration Limited to Patents and PublicationsMPEP 2217
Director Must Determine Substantial New Question of Patentability Within 3 MonthsMPEP 2240
Substantial New Question of Patentability Required for ReexaminationMPEP 2240
Reexamination Limited to Requested ClaimsMPEP 2240
Art Must Be Applied to All Requested Claims for ReexaminationMPEP 2240
Office Has Sole Discretion to Reexamine ClaimsMPEP 2240
Office May Reexamine Unrequested ClaimsMPEP 2240Permitted
Office May Initiate Reexamination of Non-Request ClaimMPEP 2240Permitted
Determination to Reexamine Must Be Made Within 3 MonthsMPEP 2241
Determination to Reexamine at Any Time During Patent Enforceability PeriodMPEP 2241Permitted
Claim Basis for Substantial New Question of PatentabilityMPEP 2243
Claims for Which Reexamination is Requested OnlyMPEP 2243
Claims for Which Reexamination is Requested OnlyMPEP 2243
Third Party Requester Must Apply Art to All ClaimsMPEP 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
Director’s SNQ Determination Not Subject to Early ReviewMPEP 2246
Final and Nonappealable Decision on Ex Parte ReexaminationMPEP 2248
Final Decision on Ex Parte ReexaminationMPEP 2248
Double Patenting Considered in Ex Parte ReexaminationMPEP 2258
Request for Reexamination Limited to Patents and PublicationsMPEP 2258
Supplemental Examination Request Must Raise SNQMPEP 2816.01
Office May Reexamine Additional Claims After RequestMPEP 2816.01Permitted

MPEP Section	Rules
MPEP § 1821	Request Must Conform to PCT RulesMPEP 1821Prohibited Additional Material Must Be Deleted Ex OfficioMPEP 1821 Request Must Conform to PCT RulesMPEP 1821
MPEP § 2209	Request for Ex Parte Reexamination AllowedMPEP 2209 Initial Determination of Substantial New Question of PatentabilityMPEP 2209 New Question Requires ReexaminationMPEP 2209 Reexamination Proceedings Similar to Regular ExaminationMPEP 2209 Limitations on Rejections in Ex Parte ReexaminationMPEP 2209Permitted Reexamination Certificate Indicates Claim Status After TerminationMPEP 2209
MPEP § 2216	Requirement for Substantial New Question of PatentabilityMPEP 2216 Previously Considered Art Presented Differently Raises Substantial New Question of PatentabilityMPEP 2216Permitted Requirement for Substantial New Question of Patentability in ReexaminationMPEP 2216 Reexamination Request Must Present Art in New LightMPEP 2216
MPEP § 2217	Admissions by Patent Owner Can Support New Question of PatentabilityMPEP 2217Prohibited Ex Parte Reexamination Consideration Limited to Patents and PublicationsMPEP 2217
MPEP § 2240	Second Request Must Raise New Patentability QuestionMPEP 2240Required Request Must Address Modified ClaimsMPEP 2240Required Requirement for Substantial New Question of Patentability in ReexaminationMPEP 2240Required 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 Director Must Determine Substantial New Question of Patentability Within Three MonthsMPEP 2240 Director May Determine New Patentability QuestionsMPEP 2240Permitted New Question of Patentability Not Precluded by Previous CitationsMPEP 2240 Director's Final Nonappealable Determination on PatentabilityMPEP 2240 Director May Refund Reexamination Fee If No New Question RaisedMPEP 2240Required Director Must Determine Substantial New Question of Patentability Within 3 MonthsMPEP 2240 Substantial New Question of Patentability Required for ReexaminationMPEP 2240 Reexamination Limited to Requested ClaimsMPEP 2240 Claims Not Requested for Reexamination Generally Not ExaminedMPEP 2240Required Art Must Be Applied to All Requested Claims for ReexaminationMPEP 2240 Claim Not Requested for Reexamination Must Have Cited Art AppliedMPEP 2240Required Office Has Sole Discretion to Reexamine ClaimsMPEP 2240 Office May Reexamine Unrequested ClaimsMPEP 2240Permitted Office May Initiate Reexamination of Non-Request ClaimMPEP 2240Permitted Request Must Apply Cited Art to ClaimsMPEP 2240Required Requirement for Different Substantial New Question of PatentabilityMPEP 2240Required
MPEP § 2241	Determination for Reexamination Must Be Made Within 3 MonthsMPEP 2241Required Determination Must Be Mailed by Preceding Business Day If 3-Month Period Ends on HolidayMPEP 2241Required Determination to Reexamine Must Be Made Within 3 MonthsMPEP 2241 Determination to Reexamine at Any Time During Patent Enforceability PeriodMPEP 2241Permitted
MPEP § 2242	Second Request for Reexamination Must Raise New Question of PatentabilityMPEP 2242Required Second or Subsequent Reexamination Request Must Address Current ClaimsMPEP 2242Required Requirement for Substantial New Question of Patentability in ReexaminationMPEP 2242Required Second Request Must Raise Different Substantial New Question of PatentabilityMPEP 2242Required
MPEP § 2243	Claim Basis for Substantial New Question of PatentabilityMPEP 2243 Claims for Which Reexamination is Requested OnlyMPEP 2243 Claims for Which Reexamination is Requested OnlyMPEP 2243 Claims Not Requested for Reexamination Generally Not ExaminedMPEP 2243Required Third Party Requester Must Apply Art to All ClaimsMPEP 2243 Claim Requires Cited Art Application for ReexaminationMPEP 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 § 2244	Examiner Can Use Any Prior Art In Determining Substantial New Question of PatentabilityMPEP 2244Permitted Examiner Can Use Any Prior Art for SNQ DeterminationMPEP 2244 Examiner Can Use Any Prior ArtMPEP 2244 Examiner Can Use Multiple Sources for Determining PatentabilityMPEP 2244Permitted Primary Source of Patents and Publications for Ex Parte ReexaminationMPEP 2244 Examiner Can Use Old Art In ReexaminationMPEP 2244 Examiner Can Consider Patent File Submissions in DeterminationMPEP 2244Permitted Examiner Can Perform Additional Search for Deficiencies in Requested Prior ArtMPEP 2244Permitted Search Must Be Relevant to DeficiencyMPEP 2244Recommended
MPEP § 2246	Director’s SNQ Decision Not Reviewable Until Final Agency ActionMPEP 2246 Substantial New Question of Patentability Not Reviewable Until Final Agency DecisionMPEP 2246 Director’s SNQ Determination Not Subject to Early ReviewMPEP 2246
MPEP § 2248	Final and Nonappealable Decision on Ex Parte ReexaminationMPEP 2248 Final Decision on Ex Parte ReexaminationMPEP 2248 Partial Refund of Filing Fee After DenialMPEP 2248 Refund for Requested ReexaminationMPEP 2248 Decision on Petition Under 37 CFR 1.515(c) Is Final and Not AppealableMPEP 2248
MPEP § 2258	Double Patenting Considered in ReexaminationMPEP 2258 Admissions by Patent Owner Can Support New Question of PatentabilityMPEP 2258Prohibited Patent Owner Statement Not Considered In Initial Reexamination DeterminationMPEP 2258Prohibited Double Patenting Consideration During ReexaminationMPEP 2258 Double Patenting Considered in Ex Parte ReexaminationMPEP 2258 Request for Reexamination Limited to Patents and PublicationsMPEP 2258 Office Has Sole Discretion to Reexamine ClaimsMPEP 2258 Office May Initiate Ex Parte Reexamination Without RequestMPEP 2258Permitted Office May Initiate Reexamination Without RequestMPEP 2258Permitted
MPEP § 2258.01	Substantial New Question Not Precluded by Previous CitationsMPEP 2258.01
MPEP § 2816.01	Supplemental Examination Request Must Raise SNQMPEP 2816.01 Office May Reexamine Additional Claims After RequestMPEP 2816.01Permitted
MPEP § 804	Double Patenting Can Raise SNQ During ReexaminationMPEP 804Permitted Substantial New Question of Patentability During ReexaminationMPEP 804 Double Patenting Can Be Addressed During ReexaminationMPEP 804Permitted

Related Provisions

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

35 U.S.C. § 303 — Determination of issue by Director (MPEP Coverage Index) – BlueIron IP

35 U.S.C. § 303 Determination of issue by Director

Summary

Official MPEP § 303 — Determination of issue by Director

35 U.S.C. 303 Determination of issue by Director.

Verbatim in MPEP

Required Actions

Key Interpretations

Topics

MPEP Coverage

Related Provisions