MPEP § 2257 — Listing of Prior Art

Ninth Edition, Revision 01.2024 · last revised R-07.2022

The reexamination request must provide a listing of the patents and printed publications (discussed in the request) as provided for in 37 CFR 1.98. See MPEP § 2214. The examiner must list on a form PTO-892, if not already listed on a form PTO/SB/08 or PTO/SB/42 (or on a form having a format equivalent to one of these forms), all prior art patents or printed publications which have been cited in the decision on the request, applied in making rejections or cited as being pertinent during the reexamination proceedings. Such prior art patents or printed publications may have come to the examiner’s attention because:

• (A) they were of record in the patent file due to a prior art submission under 37 CFR 1.501 which was received prior to the date of the order;
• (B) they were of record in the patent file as result of earlier examination proceedings; or
• (C) they were discovered by the examiner during a prior art search.

All citations listed on form PTO-892, and all citations not lined-through on any form PTO/SB/08 or PTO/SB/42 (or on a form having a format equivalent to one of these forms), will be the list of prior art documents considered in the reexamination proceeding. A notice will be printed on the reexamination certificate to state that the list of cited prior art documents will be available via the USPTO patent electronic filing system by the reexamination control number.

A submission of patents and/or publications is entitled to entry and citation in the reexamination certificate (that will be issued) when it complies with 37 CFR 1.98 and is submitted:

• (A) by the patent owner in the statement under 37 CFR 1.530;
• (B) by the reexamination requester in the reply under 37 CFR 1.535;
• (C) prior to the order of reexamination under 37 CFR 1.501 by any party; and/or
• (D) by the patent owner under the duty of disclosure requirements of 37 CFR 1.555.

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