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MPEP 2200
Citation of Prior Art and Ex Parte Reexamination of Patents
Brief Summary:
This chapter serves as a guide regarding the processing and filing of prior art citations and reexamination requests. The purpose for citing prior art in patent files is to inform the patent owner and the public in general that such patents or printed publications are in existence and should be considered when evaluating the validity of the patent claims in question. The examiner will consider these citations when examining the application.
Key Terms:
| Amendments | Amendments refer to changes or modifications made to a patent application or an issued patent’s claims, specifications, or drawings, often to clarify, correct, or respond to objections raised during the examination process. |
| Appeal | An Appeal is the process by which an applicant challenges a decision made by a patent examiner, typically regarding the rejection of a patent application, by seeking a review from a higher authority, such as the Patent Trial and Appeal Board. |
| Citation of Prior Art | Citation of Prior Art involves referencing existing documents or inventions that are relevant to assessing the novelty and non-obviousness of a patent application, helping to determine whether the invention is truly innovative. |
| Concurrent Proceedings | Concurrent Proceedings refer to multiple legal processes or actions involving the same patent or patent application that occur simultaneously, such as litigation and reexamination, potentially affecting the patent’s status or enforcement. |
| Reexamination | Reexamination is a process by which a patent’s validity is re-evaluated by the patent office, typically in light of new evidence or prior art, to ensure that the patent meets all legal requirements for patentability. |
| Substantial New Question of Patentability | Refers to a significant issue raised about the validity of a patent’s claims, based on new evidence or prior art not previously considered, which can prompt a reexamination of the patent. |
37 CFR (Code of Federal Regulations):
| 37 CFR 1.121 – Manner of making amendments in applications. |
| 37 CFR 1.121 specifies the procedures for making amendments to patent applications, including how to present changes to claims, specifications, and drawings in a clear and precise manner. |
| 37 CFR 1.52 – Language, paper, writing, margins, compact disc specifications. |
| 37 CFR 1.52 details the standards for the language, paper quality, writing style, margin sizes, and specifications for using compact discs in patent application documents. |
35 USC (United States Code):
| 35 USC 133 – Time for prosecuting application. |
| 35 USC 133 sets a time limit for applicants to respond to actions from the patent office, requiring responses within six months to avoid application abandonment. |
| 35 USC 305 – Conduct of reexamination proceedings. |
| 35 USC 305 governs the conduct of reexamination proceedings, requiring them to be conducted with special dispatch and allowing patent owners to propose amendments or new claims to distinguish their invention from prior art. |
Quick Statistics:
Number of Pages: 199 pgs
Sections: 2201 – 2296
List of Sections:
| 2201 | Introduction |
| 2202 | Citation of Prior Art and Written Statements |
| 2203 | Persons Who May Cite Prior Art or Written Statements |
| 2204 | Time for Filing Prior Art or Section 301 Written Statements |
| 2205 | Content of Prior Art or Section 301 Written Statements |
| 2206 | Submission and Handling of Prior Art or Section 301 Written Statements |
| 2207 | Entry of Court Decision in Patent File |
| 2208 | Service of Prior Art or Section 301 Written Statements on Patent Owner |
| 2209 | Ex Parte Reexamination |
| 2210 | Request for Ex Parte Reexamination under 35 U.S.C. 302 |
| 2211 | Time for Requesting Ex Parte Reexamination under 35 U.S.C. 302 |
| 2212 | Persons Who May File a Request for Ex Parte Reexamination under 35 U.S.C. 302 |
| • 2212.01 Inquiries from Persons Other Than the Patent Owner | |
| 2213 | Representative of Requester |
| 2214 | Content of Request for Ex Parte Reexamination Filed under 35 U.S.C. 302 |
| 2215 | Fee for Requesting Ex Parte Reexamination under 35 U.S.C. 302 |
| 2216 | Substantial New Question of Patentability |
| 2217 | Statement Applying Prior Art in a Request Filed under 35 U.S.C. 302 |
| 2218 | Copies of Prior Art |
| 2219 | Copy of Printed Patent |
| 2220 | Certificate of Service |
| 2221 | Amendments Included in Request Filed under 35 U.S.C. 302 by Patent Owner |
| 2222 | Address of Patent Owner |
| 2223 | Withdrawal of Attorney or Agent |
| 2224 | Correspondence |
| 2225 | Untimely Paper Filed Prior to Order under 35 U.S.C. 304 |
| 2226 | Initial Processing of Request for Ex Parte Reexamination Filed under 35 U.S.C. 302 |
| 2227 | Incomplete Request for Ex Parte Reexamination Filed under 35 U.S.C. 302 |
| 2228 | [Reserved] |
| 2229 | Notice of Request under 35 U.S.C. 302 for Ex Parte Reexamination in Official Gazette |
| 2230 | Constructive Notice to Patent Owner |
| 2231 | Processing of Request Corrections |
| 2232 | Public Access to Reexaminations Filed under 35 U.S.C. 302 |
| • 2232.01 Determining if a Reexamination Request Was Filed under 35 U.S.C. 302 for a Patent | |
| 2233 | Processing in Central Reexamination Unit and Technology Center |
| 2234 | Entry of Amendments |
| 2235 | Record Systems |
| 2236 | Assignment of Reexamination |
| 2237 | Transfer Procedure |
| 2238 | Time Reporting |
| 2239 | Reexamination Ordered at the Director’s Initiative |
| 2240 | Decision on Request Filed under 35 U.S.C. 302 |
| 2241 | Time for Deciding Request Filed under 35 U.S.C. 302 |
| 2242 | Criteria for Deciding Request Filed under 35 U.S.C. 302 |
| 2243 | Claims Considered in Deciding Request Filed under 35 U.S.C. 302 |
| 2244 | Prior Art on Which the Determination Is Based in Requests Filed under 35 U.S.C. 302 |
| 2245 | Processing of Decision |
| 2246 | Decision Ordering Reexamination under 35 U.S.C. 304 |
| 2247 | Decision under 35 U.S.C. 303 on Request for Reexamination filed Under 35 U.S.C. 302, Request Denied |
| • 2247.01 Examples of Decisions on Request for Reexamination | |
| 2248 | Petition From Denial of Request Filed Under 35 U.S.C. 302 |
| 2249 | Patent Owner’s Statement in Reexaminations Filed Under 35 U.S.C. 302 |
| 2250 | Amendment by Patent Owner |
| • 2250.01 Correction of Patent Drawings • 2250.02 Correction of Inventorship • 2250.03 Fees for Adding Claims and for Filing a Petition | |
| 2251 | Reply by Third Party Requester |
| 2252 | Consideration of Statement and Reply |
| 2253 | Consideration by Examiner |
| 2254 | Conduct of Ex Parte Reexamination Proceedings |
| 2255 | Who Reexamines |
| 2256 | Prior Art Patents and Printed Publications Reviewed by Examiner in Reexamination |
| 2257 | Listing of Prior Art |
| 2258 | Scope of Ex Parte Reexamination |
| • 2258.01 Use of Previously Cited/Considered Art in Rejections • 2258.02 Claiming Foreign Priority and Domestic Benefit in Reexamination | |
| 2259 | Res Judicata and Collateral Estoppel in Reexamination Proceedings |
| 2260 | Office Actions |
| • 2260.01 Dependent Claims | |
| 2261 | Special Status for Action |
| 2262 | Form and Content of Office Action |
| 2263 | Time for Response |
| 2264 | Mailing of Office Action |
| 2265 | Extension of Time |
| 2266 | Responses |
| • 2266.01 Submission Not Fully Responsive to Non-Final Office Action • 2266.02 Examiner Issues Notice of Defective Paper in Ex Parte Reexamination • 2266.03 Service of Papers | |
| 2267 | Handling of Inappropriate or Untimely Filed Papers |
| 2268 | Petition for Entry of Late Papers for Revival of Reexamination Proceeding |
| 2269 | Reconsideration |
| 2270 | Clerical Handling |
| 2271 | Final Action |
| • 2271.01 Panel Review | |
| 2272 | After Final Practice |
| 2273 | Appeal in Ex Parte Reexamination |
| 2274 | Appeal Brief |
| 2275 | Examiner’s Answer |
| 2276 | Oral Hearing |
| 2277 | Board Decision |
| 2278 | Action Following Decision |
| 2279 | Appeal to Courts |
| 2280 | Information Material to Patentability in Reexamination Proceeding Filed under 35 U.S.C. 302 |
| 2281 | Interviews in Ex Parte Reexamination Proceedings |
| 2282 | Notification of Existence of Prior or Concurrent Proceedings and Decisions Thereon |
| 2283 | Multiple Copending Ex Parte Reexamination Proceedings |
| 2284 | Copending Ex Parte Reexamination and Interference Proceedings |
| 2285 | Copending Ex Parte Reexamination and Reissue Proceedings |
| 2286 | Ex Parte Reexamination and Litigation Proceedings |
| • 2286.01 Reexamination and Inter Partes Review Proceedings, Post-Grant Review, and Covered Business Method Patent Review | |
| 2287 | Conclusion of Ex Parte Reexamination Proceeding |
| • 2287.01 Examiner Consideration of Submissions After a NIRC | |
| 2288 | Issuance of Ex Parte Reexamination Certificate |
| 2289 | Reexamination Review |
| 2290 | Format of Ex Parte Reexamination Certificate |
| 2291 | Notice of Ex Parte Reexamination Certificate Issuance in Official Gazette |
| 2292 | Distribution of Certificate |
| 2293 | Intervening Rights |
| 2294 | Concluded Reexamination Proceedings |
| 2295 | Reexamination of a Reexamination |
| 2296 | USPTO Forms To Be Used In Ex Parte Reexamination |