35 U.S.C. § 304 — Reexamination order by Director (MPEP Coverage Index) – BlueIron IP

This page consolidates MPEP guidance interpreting 35 U.S.C. § 304, including 130 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 reexamination order by the USPTO Director allows for a comprehensive review of an existing patent's validity through a formal request process that evaluates substantial new questions of patentability.

What this section covers

Statutory basis for ex parte reexamination under 35 U.S.C. 304, enabling comprehensive patent review by the USPTO.
Process for submitting and evaluating a reexamination request to determine potential patent validity issues.

Key obligations

Reexamination request must include specific substantive elements and appropriate filing fee.
Demonstrate a substantial new question of patentability that warrants review of the existing patent.

Conditions and exceptions

Conditions under which a reexamination request may be accepted or denied by the USPTO.

Practice notes

Carefully document the substantive basis for requesting patent reexamination.
Present clear and compelling evidence of prior art's relevance to the patent's validity.

Request Must Include Substantial New Question of PatentabilityMPEP 2216
Request Must Clearly State Substantial New Question of PatentabilityMPEP 2216
Proper Meaning of Patent Claims Determined for Ex Parte ReexaminationMPEP 2240
Patent Owner Statement Considered During ReexaminationMPEP 2240
Patent Owner Can Propose New Claims in ReexaminationMPEP 2254Permitted
Third Party Requester Excluded From Further ParticipationMPEP 2254
Ex Parte Proceedings Limit Third Party IssuesMPEP 2254
Issue of Double Patenting Must Be Evaluated During ReexaminationMPEP 2258
Examiner Must Determine Double Patenting QuestionMPEP 2258Recommended
Issue of Double Patenting During ExaminationMPEP 2258
Amendments Must Show Reasons for Delayed Presentation After Final ActionMPEP 2260Required
Substantial New Question of Patentability Requires ReexaminationMPEP 2802Required
Amendments Allowed After Initial Office ActionMPEP 2813.01Permitted
Ex Parte Reexamination Must Follow Chapter 30 ProceduresMPEP 2821Required
Reexamination Required If OrderedMPEP 2821Required
Third Party Requester Must Reply Within 2 MonthsMPEP 2251
Request Must Distinguish Previous ExaminationMPEP 2216Required
Opposition Should Be Filed ElectronicallyMPEP 2246Recommended
No Enlarging Claims Allowed in ReexaminationMPEP 2254Permitted
Reexamination Proceedings Conducted with Special DispatchMPEP 2254
Reexamination Uses Original Examining RegimeMPEP 2258
Reexamination Under First-Inventor-to-File for New Claims After March 16, 2013MPEP 2258
Reexamination Under First-to-Invent If Prior App Filed Before March 16, 2013MPEP 2258
Written Description Must Support All ClaimsMPEP 2258Required
Double Patenting Must Be Considered During ReexaminationMPEP 2258
Examiner Must Determine Double Patenting Rejection AppropriatenessMPEP 2258Recommended
Examiner’s First Ex Parte Action Establishes Issues in ReexaminationMPEP 2260
Issues Must Be Clearly Defined In First Ex Parte ActionMPEP 2260Recommended
Caution for Complete Response After First ActionMPEP 2260Recommended
Cautionary Statement for First Office ActionMPEP 2260
Director Must Address Substantial New Questions During ReexaminationMPEP 2802Required
Amendments Not Allowed In Supplemental ExaminationMPEP 2813.01Permitted
Supplemental Examination Requirement Within Three MonthsMPEP 2821Required
Written Statements for Patent Claim MeaningMPEP 2202Prohibited
Requirement for Substantial New Question of Patentability in Ex Parte Reexamination RequestMPEP 2216Required
Patent Owner Statement Not Considered for Ex Parte Reexamination DeterminationMPEP 2240
Requirement for Reexamining Patent When Substantial New Question of Patentability RisesMPEP 2246
Patent Owner Must File Statement Within Two MonthsMPEP 2246Permitted
Patent Owner Must Serve Copy of Statement on RequestorMPEP 2246
Person May File Reply Within Two MonthsMPEP 2246Permitted
Patent Owner Must Promptly Serve Reply to RequesterMPEP 2246
Third-Party Requester Must File Opposition Within Two WeeksMPEP 2246Required
Examiner Can Issue First Office Action Immediately After Ordering ReexaminationMPEP 2249Permitted
No Extensions for Third Party Requester ReplyMPEP 2251
Submissions Considered During First Office Action on MeritsMPEP 2253
Reexamination Follows Initial Examination ProceduresMPEP 2254
No Further Third Party Submissions Allowed After Ex Parte Reexamination OrderMPEP 2254
Rejections Must Be Based on Patents or PublicationsMPEP 2258Permitted
Double Patenting Issue in ReexaminationMPEP 2258
Rejection Must Be Based on Prior Art in Ex Parte ReexaminationMPEP 2258Prohibited
Merits Examination Dictated by 35 U.S.C. 305 After Reexamination OrderMPEP 2258
New Question of Patentability Requires Claim AdditionMPEP 2258Permitted
Amendments Must Reflect Reissue ChangesMPEP 2258Recommended
Patent Owner Must File Statement and Amendment Before First ActionMPEP 2260Permitted
Higher Number for Reexamination Issued CertificatesMPEP 2290
Format for Ex Parte Reexamination CertificateMPEP 2290
Type of Certificate Must Be Clearly IndicatedMPEP 2291
Patent Owner Lacks Section 304 Statement Right During ReexaminationMPEP 2802Prohibited
Amendments Prohibited in Supplemental Examination ProceedingMPEP 2813.01Prohibited
Amendments Not Allowed Before Initial Office Action in Ex Parte ReexaminationMPEP 2813.01Permitted
No Amendment Before Initial Office ActionMPEP 2813.01Permitted
Office Must Resolve Substantial New Question of PatentabilityMPEP 2821

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
Challenge to Examiner's SNQ Determination in ResponseMPEP 2246Required
SNQ Issue Must Be Included in Appeal Brief to BoardMPEP 2246Required
Patent Owner Must First Request Reconsideration Before Examiner for SNQ ReviewMPEP 2246Required
Amendments Must Show Reasons for Delayed Presentation After Final ActionMPEP 2260Required
Substantial New Question of Patentability Requires ReexaminationMPEP 2802Required
Ex Parte Reexamination Must Follow Chapter 30 ProceduresMPEP 2821Required
Reexamination Required If OrderedMPEP 2821Required
Request Must Distinguish Previous ExaminationMPEP 2216Required
Written Description Must Support All ClaimsMPEP 2258Required
Director Must Address Substantial New Questions During ReexaminationMPEP 2802Required
Supplemental Examination Requirement Within Three MonthsMPEP 2821Required
Requirement for Substantial New Question of Patentability in Ex Parte Reexamination RequestMPEP 2216Required
Third-Party Requester Must File Opposition Within Two WeeksMPEP 2246Required
Reexamination Ordered Must Be ConductedMPEP 2821Required

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
Reexamination Certificate Indicates Claim Status After TerminationMPEP 2209
Substantial New Question of Patentability Required 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
Patent Owner Must Present SNQ Arguments EarlyMPEP 2246
Patent Owner Can Challenge SNQ Determination in Ex Parte ReexaminationMPEP 2246Permitted
Issue and Arguments on Examiner's SNQ Determination Must Be Clearly Presented in Appeal BriefMPEP 2246
Patent Owner Can Request Extension for Reexamination ResponseMPEP 2249Permitted
New Claims Must Not Broaden Original ScopeMPEP 2258
102(g)(2) Rejection in First-to-Invent ReexaminationMPEP 2258Permitted
Claim Construction for Expired Patents in ReexaminationMPEP 2258Recommended
Limitation from Original Claim Cannot Be Examined in New Claim During ReexaminationMPEP 2258Prohibited
Rewritten Independent Claims Not Examined for 112 ComplianceMPEP 2258Prohibited
Decision on Merging Reissue and Ex Parte Reexamination Not Made Until After Reexamination OrderMPEP 2285
Requirement for Reexamination Filing and ReplyMPEP 2285
Notification for Merger Consideration RequiredMPEP 2285Recommended
Paper Files Must Be Hand Delivered to OPLAMPEP 2285Recommended
Ordinal Number for Ex Parte Reexamination CertificatesMPEP 2290
Supplemental Examination Certificate Indicates New Question of Patentability Requires ReexaminationMPEP 2802
Substantial New Question of Patentability During Supplemental Examination Requires Ex Parte ReexaminationMPEP 2802
Ex Parte Reexamination Must Be Conducted with Special DispatchMPEP 2821
Office May Determine Reexamination Proceeding Manner When Inter Partes Review Is CopendingMPEP 2821Permitted
Art Must Be Applied to All Requested Claims for ReexaminationMPEP 2240
Examination of Reissue Application Continues Until Reexamination OrderMPEP 2285
Continued Examination of Reissue Application After Denial of ReexaminationMPEP 2285Recommended
Double Patenting Issues During ReexaminationMPEP 2258Permitted
Scope of Reexamination CertificateMPEP 2258
Issues Relating to 35 U.S.C. 112 Addressed Only for New ClaimsMPEP 2258
Nonstatutory Double Patenting During Reexamination With Same Filing DateMPEP 2258
Examiner Must Acknowledge Judicial Interpretation of Claim TermsMPEP 2258Recommended
Claim Construction in Ex Parte ReexaminationMPEP 2258
Statutory Presumption of Validity Not Applicable in ReexaminationMPEP 2258
112 Compliance Limited to Amendatory ClaimsMPEP 2258Recommended
New Claim Limitations Must Be Examined SeparatelyMPEP 2258Recommended
Limitations of New Claims in ReexaminationMPEP 2258Prohibited
Written Description Priority Allowed During ReexaminationMPEP 2258Prohibited
Claims Not Examined on Certain GroundsMPEP 2258
Ordinal Number for Ex Parte Reexamination CertificatesMPEP 2290
Consider Supplemental Examination During Pending LitigationMPEP 2821Permitted
Limitations on Rejections in Ex Parte ReexaminationMPEP 2209Permitted
Reexamination Limited to Requested ClaimsMPEP 2240
Patent Owner Can Challenge SNQ Determination in Ex Parte ReexaminationMPEP 2246Permitted
Patent Owner Must First Request Reconsideration Before Examiner for SNQ Issue ReviewMPEP 2246Permitted
Appeal Brief Must Present SNQ Issue for ReviewMPEP 2246
Patent Owner Must File Statement and Amendments After Reexamination OrderMPEP 2249Permitted
Reexamination Proceeding Reviews Patent Claims Based on Prior ArtMPEP 2258
Exceptions to Substantial New Questions of Patentability in ReexaminationMPEP 2258
Claims Examined Only on Prior ArtMPEP 2258
Claims Given Broadest Reasonable Interpretation During ReexaminationMPEP 2258
Claims Must Be Examined for Compliance with 112 During ReexaminationMPEP 2258
Examiner’s Office Action Must State Unexamined Grounds in ReexaminationMPEP 2258Recommended
Amendments for Reexamination Must Comply with RulesMPEP 2270
Timely Determination Required Despite Copending Reissue ApplicationMPEP 2285Prohibited
Ex Parte Reexamination Certificate Ordinal NumberMPEP 2290Permitted
Ex Parte Reexamination Certificate Ordinal ContinuationMPEP 2290
Patent Owner Lacks Right to File Statement During Ex Parte ReexaminationMPEP 2802

MPEP Section	Rules
MPEP § 2202	Written Statements for Patent Claim MeaningMPEP 2202Prohibited
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 Reexamination Certificate Indicates Claim Status After TerminationMPEP 2209 Limitations on Rejections in Ex Parte ReexaminationMPEP 2209Permitted
MPEP § 2216	Request Must Include Substantial New Question of PatentabilityMPEP 2216 Request Must Clearly State Substantial New Question of PatentabilityMPEP 2216 Request Must Distinguish Previous ExaminationMPEP 2216Required Requirement for Substantial New Question of Patentability in Ex Parte Reexamination RequestMPEP 2216Required
MPEP § 2240	Substantial New Question of Patentability Required for ReexaminationMPEP 2240 Claims Not Requested for Reexamination Generally Not ExaminedMPEP 2240Required 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 Proper Meaning of Patent Claims Determined for Ex Parte ReexaminationMPEP 2240 Patent Owner Statement Considered During ReexaminationMPEP 2240 Art Must Be Applied to All Requested Claims for ReexaminationMPEP 2240 Reexamination Limited to Requested ClaimsMPEP 2240 Patent Owner Statement Not Considered for Ex Parte Reexamination DeterminationMPEP 2240
MPEP § 2246	Challenge to Examiner's SNQ Determination in ResponseMPEP 2246Required Patent Owner Must Present SNQ Arguments EarlyMPEP 2246 Patent Owner Can Challenge SNQ Determination in Ex Parte ReexaminationMPEP 2246Permitted SNQ Issue Must Be Included in Appeal Brief to BoardMPEP 2246Required Patent Owner Must First Request Reconsideration Before Examiner for SNQ ReviewMPEP 2246Required Issue and Arguments on Examiner's SNQ Determination Must Be Clearly Presented in Appeal BriefMPEP 2246 Opposition Should Be Filed ElectronicallyMPEP 2246Recommended Requirement for Reexamining Patent When Substantial New Question of Patentability RisesMPEP 2246 Patent Owner Must File Statement Within Two MonthsMPEP 2246Permitted Patent Owner Must Serve Copy of Statement on RequestorMPEP 2246 Person May File Reply Within Two MonthsMPEP 2246Permitted Patent Owner Must Promptly Serve Reply to RequesterMPEP 2246 Patent Owner Can Challenge SNQ Determination in Ex Parte ReexaminationMPEP 2246Permitted Patent Owner Must First Request Reconsideration Before Examiner for SNQ Issue ReviewMPEP 2246Permitted Appeal Brief Must Present SNQ Issue for ReviewMPEP 2246 Third-Party Requester Must File Opposition Within Two WeeksMPEP 2246Required
MPEP § 2249	Patent Owner Can Request Extension for Reexamination ResponseMPEP 2249Permitted Patent Owner Must File Statement and Amendments After Reexamination OrderMPEP 2249Permitted Examiner Can Issue First Office Action Immediately After Ordering ReexaminationMPEP 2249Permitted
MPEP § 2251	Third Party Requester Must Reply Within 2 MonthsMPEP 2251 No Extensions for Third Party Requester ReplyMPEP 2251
MPEP § 2253	Submissions Considered During First Office Action on MeritsMPEP 2253
MPEP § 2254	Patent Owner Can Propose New Claims in ReexaminationMPEP 2254Permitted Third Party Requester Excluded From Further ParticipationMPEP 2254 Ex Parte Proceedings Limit Third Party IssuesMPEP 2254 No Enlarging Claims Allowed in ReexaminationMPEP 2254Permitted Reexamination Proceedings Conducted with Special DispatchMPEP 2254 Reexamination Follows Initial Examination ProceduresMPEP 2254 No Further Third Party Submissions Allowed After Ex Parte Reexamination OrderMPEP 2254
MPEP § 2258	New Claims Must Not Broaden Original ScopeMPEP 2258 102(g)(2) Rejection in First-to-Invent ReexaminationMPEP 2258Permitted Issue of Double Patenting Must Be Evaluated During ReexaminationMPEP 2258 Examiner Must Determine Double Patenting QuestionMPEP 2258Recommended Issue of Double Patenting During ExaminationMPEP 2258 Claim Construction for Expired Patents in ReexaminationMPEP 2258Recommended Limitation from Original Claim Cannot Be Examined in New Claim During ReexaminationMPEP 2258Prohibited Rewritten Independent Claims Not Examined for 112 ComplianceMPEP 2258Prohibited Double Patenting Issues During ReexaminationMPEP 2258Permitted Scope of Reexamination CertificateMPEP 2258 Issues Relating to 35 U.S.C. 112 Addressed Only for New ClaimsMPEP 2258 Reexamination Uses Original Examining RegimeMPEP 2258 Reexamination Under First-Inventor-to-File for New Claims After March 16, 2013MPEP 2258 Reexamination Under First-to-Invent If Prior App Filed Before March 16, 2013MPEP 2258 Written Description Must Support All ClaimsMPEP 2258Required Nonstatutory Double Patenting During Reexamination With Same Filing DateMPEP 2258 Double Patenting Must Be Considered During ReexaminationMPEP 2258 Examiner Must Determine Double Patenting Rejection AppropriatenessMPEP 2258Recommended Examiner Must Acknowledge Judicial Interpretation of Claim TermsMPEP 2258Recommended Claim Construction in Ex Parte ReexaminationMPEP 2258 Statutory Presumption of Validity Not Applicable in ReexaminationMPEP 2258 112 Compliance Limited to Amendatory ClaimsMPEP 2258Recommended New Claim Limitations Must Be Examined SeparatelyMPEP 2258Recommended Limitations of New Claims in ReexaminationMPEP 2258Prohibited Written Description Priority Allowed During ReexaminationMPEP 2258Prohibited Claims Not Examined on Certain GroundsMPEP 2258 Reexamination Proceeding Reviews Patent Claims Based on Prior ArtMPEP 2258 Rejections Must Be Based on Patents or PublicationsMPEP 2258Permitted Exceptions to Substantial New Questions of Patentability in ReexaminationMPEP 2258 Double Patenting Issue in ReexaminationMPEP 2258 Rejection Must Be Based on Prior Art in Ex Parte ReexaminationMPEP 2258Prohibited Merits Examination Dictated by 35 U.S.C. 305 After Reexamination OrderMPEP 2258 Claims Examined Only on Prior ArtMPEP 2258 Claims Given Broadest Reasonable Interpretation During ReexaminationMPEP 2258 Claims Must Be Examined for Compliance with 112 During ReexaminationMPEP 2258 Examiner’s Office Action Must State Unexamined Grounds in ReexaminationMPEP 2258Recommended New Question of Patentability Requires Claim AdditionMPEP 2258Permitted Amendments Must Reflect Reissue ChangesMPEP 2258Recommended
MPEP § 2260	Amendments Must Show Reasons for Delayed Presentation After Final ActionMPEP 2260Required Examiner’s First Ex Parte Action Establishes Issues in ReexaminationMPEP 2260 Issues Must Be Clearly Defined In First Ex Parte ActionMPEP 2260Recommended Caution for Complete Response After First ActionMPEP 2260Recommended Cautionary Statement for First Office ActionMPEP 2260 Patent Owner Must File Statement and Amendment Before First ActionMPEP 2260Permitted
MPEP § 2270	Amendments for Reexamination Must Comply with RulesMPEP 2270
MPEP § 2285	Decision on Merging Reissue and Ex Parte Reexamination Not Made Until After Reexamination OrderMPEP 2285 Requirement for Reexamination Filing and ReplyMPEP 2285 Notification for Merger Consideration RequiredMPEP 2285Recommended Paper Files Must Be Hand Delivered to OPLAMPEP 2285Recommended Examination of Reissue Application Continues Until Reexamination OrderMPEP 2285 Continued Examination of Reissue Application After Denial of ReexaminationMPEP 2285Recommended Timely Determination Required Despite Copending Reissue ApplicationMPEP 2285Prohibited
MPEP § 2290	Ordinal Number for Ex Parte Reexamination CertificatesMPEP 2290 Ordinal Number for Ex Parte Reexamination CertificatesMPEP 2290 Ex Parte Reexamination Certificate Ordinal NumberMPEP 2290Permitted Ex Parte Reexamination Certificate Ordinal ContinuationMPEP 2290 Higher Number for Reexamination Issued CertificatesMPEP 2290 Format for Ex Parte Reexamination CertificateMPEP 2290
MPEP § 2291	Type of Certificate Must Be Clearly IndicatedMPEP 2291
MPEP § 2802	Substantial New Question of Patentability Requires ReexaminationMPEP 2802Required Supplemental Examination Certificate Indicates New Question of Patentability Requires ReexaminationMPEP 2802 Substantial New Question of Patentability During Supplemental Examination Requires Ex Parte ReexaminationMPEP 2802 Director Must Address Substantial New Questions During ReexaminationMPEP 2802Required Patent Owner Lacks Section 304 Statement Right During ReexaminationMPEP 2802Prohibited Patent Owner Lacks Right to File Statement During Ex Parte ReexaminationMPEP 2802
MPEP § 2813.01	Amendments Allowed After Initial Office ActionMPEP 2813.01Permitted Amendments Not Allowed In Supplemental ExaminationMPEP 2813.01Permitted Amendments Prohibited in Supplemental Examination ProceedingMPEP 2813.01Prohibited Amendments Not Allowed Before Initial Office Action in Ex Parte ReexaminationMPEP 2813.01Permitted No Amendment Before Initial Office ActionMPEP 2813.01Permitted
MPEP § 2821	Ex Parte Reexamination Must Follow Chapter 30 ProceduresMPEP 2821Required Reexamination Required If OrderedMPEP 2821Required Ex Parte Reexamination Must Be Conducted with Special DispatchMPEP 2821 Office May Determine Reexamination Proceeding Manner When Inter Partes Review Is CopendingMPEP 2821Permitted Supplemental Examination Requirement Within Three MonthsMPEP 2821Required Consider Supplemental Examination During Pending LitigationMPEP 2821Permitted Office Must Resolve Substantial New Question of PatentabilityMPEP 2821 Reexamination Ordered Must Be ConductedMPEP 2821Required

Related Provisions

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

35 U.S.C. § 304 — Reexamination order by Director (MPEP Coverage Index) – BlueIron IP

35 U.S.C. § 304 Reexamination order by Director

Summary

Official MPEP § 304 — Reexamination order by Director

35 U.S.C. 304 Reexamination order by Director.

Verbatim in MPEP

Required Actions

Key Interpretations

Topics

MPEP Coverage

Related Provisions