37 CFR § 1.552 — Scope of reexamination inex (MPEP Coverage Index) – BlueIron IP

This page consolidates MPEP guidance interpreting 37 CFR § 1.552, including 26 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

37 CFR 1.552 defines the scope of ex parte reexamination, permitting patent owners to submit written statements from federal court or USPTO proceedings under 35 U.S.C. 301.

What this section covers

Outlines the legal basis for submitting written statements during patent reexamination proceedings.
Clarifies jurisdictional boundaries for patent owner submissions in federal court or USPTO proceedings.

Key obligations

Ensure submitted statements comply with USPTO procedural requirements for ex parte reexamination.
Provide accurate and relevant documentation when requesting patent reexamination.

Practice notes

Carefully document the context and source of any statements submitted during reexamination.
Understand the specific procedural limitations of ex parte reexamination before initiating the process.

Patent Owner Statements on Claim Scope Required in ReexaminationMPEP 2258
Requirement for Patent Owner Statement on Claim Scope in ReexaminationMPEP 2258
Responsibility for Compliance with Reexamination SectionMPEP 2014
Questions of Compliance Not Evaluated During ReexaminationMPEP 2014
Examiner Treats New Issues Raised by Third Party in Reexamination Within ScopeMPEP 2253Recommended
Claims Examined on Patent and Publication BasisMPEP 2258
Claims Cannot Enlarge Patent ScopeMPEP 2258Permitted
Issues Not Resolved in Reexamination Must Be Addressed Through ReissueMPEP 2258Permitted
Patent Owner Statements Used to Clarify ClaimsMPEP 2258Permitted
Consideration of Patent Owner Statements During ReexaminationMPEP 2258Recommended
Examiner Must Not Raise Independently Discovered IssuesMPEP 2258
First Office Action Must Clearly Explain RejectionsMPEP 2262Required
Claim Chart May Be Incorporated Into Office ActionMPEP 2262Permitted
Examiner Must Verify Claim Chart for RejectionMPEP 2262Required
Examiner Must Address Patent Owner ResponsesMPEP 2262Required
Examiner Must Explain Why Claim Is Clearly PatentableMPEP 2262Recommended
Examiner Must Cite Clear Patentability EvidenceMPEP 2262Permitted
First Action Must Address Patent Owner’s ArgumentsMPEP 2262Recommended
Inappropriate Arguments Must Be Handled According to 37 CFR 1.552(c)MPEP 2262Recommended
Disclosure Requirement for PatentabilityMPEP 2280
Disclosure Requirement During ReexaminationMPEP 2280

First Office Action Must Clearly Explain RejectionsMPEP 2262Required
Examiner Must Verify Claim Chart for RejectionMPEP 2262Required
Examiner Must Address Patent Owner ResponsesMPEP 2262Required

Disclosure Obligation for Patent Owner and Associates in ReexaminationMPEP 2014
Continuing Disclosure Requirement During ReexaminationMPEP 2014
Non-Patent Grounds Not Considered in ReexaminationMPEP 2246Recommended
Examiner’s Office Action Must State Unexamined Grounds in ReexaminationMPEP 2258Recommended
Claims Not Examined on Certain GroundsMPEP 2258

MPEP Section	Rules
MPEP § 2014	Responsibility for Compliance with Reexamination SectionMPEP 2014 Questions of Compliance Not Evaluated During ReexaminationMPEP 2014 Disclosure Obligation for Patent Owner and Associates in ReexaminationMPEP 2014 Continuing Disclosure Requirement During ReexaminationMPEP 2014
MPEP § 2246	Non-Patent Grounds Not Considered in ReexaminationMPEP 2246Recommended
MPEP § 2253	Examiner Treats New Issues Raised by Third Party in Reexamination Within ScopeMPEP 2253Recommended
MPEP § 2258	Patent Owner Statements on Claim Scope Required in ReexaminationMPEP 2258 Requirement for Patent Owner Statement on Claim Scope in ReexaminationMPEP 2258 Claims Examined on Patent and Publication BasisMPEP 2258 Claims Cannot Enlarge Patent ScopeMPEP 2258Permitted Issues Not Resolved in Reexamination Must Be Addressed Through ReissueMPEP 2258Permitted Patent Owner Statements Used to Clarify ClaimsMPEP 2258Permitted Consideration of Patent Owner Statements During ReexaminationMPEP 2258Recommended Examiner’s Office Action Must State Unexamined Grounds in ReexaminationMPEP 2258Recommended Claims Not Examined on Certain GroundsMPEP 2258 Examiner Must Not Raise Independently Discovered IssuesMPEP 2258
MPEP § 2262	First Office Action Must Clearly Explain RejectionsMPEP 2262Required Claim Chart May Be Incorporated Into Office ActionMPEP 2262Permitted Examiner Must Verify Claim Chart for RejectionMPEP 2262Required Examiner Must Address Patent Owner ResponsesMPEP 2262Required Examiner Must Explain Why Claim Is Clearly PatentableMPEP 2262Recommended Examiner Must Cite Clear Patentability EvidenceMPEP 2262Permitted First Action Must Address Patent Owner’s ArgumentsMPEP 2262Recommended Inappropriate Arguments Must Be Handled According to 37 CFR 1.552(c)MPEP 2262Recommended
MPEP § 2280	Disclosure Requirement for PatentabilityMPEP 2280 Disclosure Requirement During ReexaminationMPEP 2280

Related Provisions

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

37 CFR § 1.552 — Scope of reexamination inex (MPEP Coverage Index) – BlueIron IP

37 CFR § 1.552 Scope of reexamination inex

Summary

Official MPEP § 1.552 — Scope of reexamination inex

1.552 Scope of reexamination in ex parte reexamination proceedings.

Verbatim in MPEP

Required Actions

Key Interpretations

Topics

MPEP Coverage

Related Provisions