MPEP § 2823 — Differences Between an Ex Parte Reexamination Proceeding Ordered Pursuant to 35 U.S.C. 257 and an Ex Parte Reexamination Proceeding Ordered Pursuant to 35 U.S.C. 302

Ninth Edition, Revision 01.2024 · last revised R-11.2013

Ex parte reexamination ordered under 35 U.S.C. 257, i.e., as a result of a supplemental examination, will be conducted in accordance with regulations and procedures that govern ex parte reexamination ordered pursuant to 35 U.S.C. 302 (e.g., 37 CFR 1.530 through 37 CFR 1.570), except that:

• (1) the patent owner will not have the right to file a statement pursuant to 37 CFR 1.530, and the order will not set a time period within which to file such a statement;
• (2) the patent owner cannot file an amendment to the patent until after supplemental examination is concluded and after the issuance of an initial Office action on the merits in any ex parte reexamination proceeding ordered under 35 U.S.C. 257;
• (3) ex parte reexamination of any claim of the patent may be conducted on the basis of any item of information as set forth in 37 CFR 1.605, and is not limited to patents and printed publications or to subject matter that has been added or deleted during a reexamination proceeding, which differs from the provisions of 37 CFR 1.552(a);
• (4) issues in addition to those raised by patents and printed publications and by subject matter added or deleted during an ex parte reexamination proceeding may be considered and resolved, which differs from 37 CFR 1.552(c); and
• (5) information material to patentability will be defined by 37 CFR 1.56(b) for an ex parte reexamination proceeding resulting from a supplemental examination proceeding.

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