MPEP § 2212 — Persons Who May File a Request for Ex Parte Reexamination under 35 U.S.C. 302

Ninth Edition, Revision 01.2024 · last revised R-07.2015

35 U.S.C. 302 and 37 CFR 1.510(a) both indicate that “any person” may file a request for ex parte reexamination of a patent, unless prohibited by AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1). Accordingly, there are no types of “persons” who are excluded from being able to seek reexamination under 35 U.S.C. 302. Corporations and/or governmental entities are included within the scope of the term “any person.” The only “person” who is barred from filing a request for ex parte reexamination of a patent under 35 U.S.C. 302 is one who is barred from doing so by the estoppel provisions of AIA 35 U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1) based on inter partes review and post grant review, respectively, once the estoppel attaches. The patent owner can ask for reexamination which will be limited to an ex parte consideration of prior art patents or printed publications. If the patent owner wishes to have a wider consideration of issues by the Office, including matters such as prior public use or on sale, the patent owner may file a reissue application (see, e.g., MPEP § 1401 - § 1403), or, where appropriate, a supplemental examination proceeding (see, e.g., MPEP § 2801 – § 2803). It is also possible for the Director of the Office to initiate reexamination on the Director’s own initiative under 37 CFR 1.520. Some of the persons likely to use reexamination under 35 U.S.C. 302 are patentees, licensees, potential licensees, attorneys without identification of their real client in interest, infringers, potential exporters, patent litigants, interference applicants, and International Trade Commission respondents. The name of the person who files the request will not be maintained in confidence.