2258.01 Use of Previously Cited/Considered Art in Rejections [R-07.2022]

In the examining stage of a reexamination proceeding, the examiner will consider whether the claims are subject to rejection based on art. Before making such a rejection, the examiner should check the patent’s file history to ascertain whether the art that will provide the basis for the rejection was previously cited/considered in an earlier concluded Office examination of the patent (e.g., in the examination of the application for the patent). For the sake of expediency, such art is referred to as “old art” throughout, since the term “old art” was coined by the Federal Circuit in its decision of In re Hiniker, 150 F.3d 1362, 1365-66, 47 USPQ2d 1523, 1526 (Fed. Cir. 1998).

If the rejection to be made by the examiner will be based on a combination of “old art” and art newly cited during the reexamination proceeding, the rejection is proper, and should be made. See In re Hiniker, 150 F.3d at 1367, 47 USPQ2d at 1527. (Court held the reexamination proceeding was supported by a substantial new question of patentability where the rejection before the court was based on a combination of art that had been before the examiner during the original prosecution, and art newly cited during the reexamination proceeding.)

If the “old art” provides the sole basis for a rejection, the following applies:

• (A) Reexamination was ordered on or after November 2, 2002:

For a reexamination that was ordered on or after November 2, 2002 (the date of enactment of Public Law 107-273; see Section 13105, of the Patent and Trademark Office Authorization Act of 2002), reliance solely on old art (as the basis for a rejection) does not necessarily preclude the existence of a substantial new question of patentability (SNQ) that is based exclusively on that old art. Determinations on whether a SNQ exists in such an instance shall be based upon a fact-specific inquiry done on a case-by-case basis. For example, a SNQ may be based solely on old art where the old art is being presented/viewed in a new light, or in a different way, as compared with its use in the earlier concluded examination(s), in view of a material new argument or interpretation presented in the request.

When an Office action is being considered, and it is newly determined that a SNQ based solely on old art is raised by a request in a reexamination that was ordered on or after November 2, 2002, form paragraph 22.01.01 should be included in the Office action. Form paragraph 22.01.01 should be included in any Office action in which a SNQ based solely on the old art is first set forth (i.e., it was not set forth in the order granting reexamination or a prior Office action in the proceeding).

• (B) Reexamination was ordered prior to November 2, 2002:

For a reexamination that was ordered prior to November 2, 2002, old art cannot (subject to the exceptions set forth below) be used as the sole basis for a rejection.

In determining the presence or absence of “a substantial new question of patentability” on which to base a rejection, the use of “old art” in a reexamination that was ordered prior to November 2, 2002, is controlled by In re Portola Packaging Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997). (Note that Portola Packaging was decided based on the reexamination statute as it existed prior to the amendment by Public Law 107-273, Section 13105 of the Patent and Trademark Office Authorization Act of 2002). The amendment by Public Law 107-273, Section 13105, overruled the Portola Packaging decision for any reexamination that was ordered on or after November 2, 2002. See In re Bass, 314 F.3d 575, 576-77, 65 USPQ2d 1156, 1157 (Fed. Cir. 2002) where the court stated in the sole footnote:

On November 2, 2002, 35 U.S.C. 303(a) was amended by the passage of Pub. L. No. 107-273, 13105, (116 Stat.) 1758, 1900, to add “[t]he existence of a substantial new question of patentability is not precluded by the fact that a patent or printed publication was previously cited by or to the Office or considered by the Office,” thereby overruling Portola Packaging.

The following guidelines are provided for reviewing ongoing reexaminations ordered prior to November 2, 2002, for compliance with the Portola Packaging decision.

• • (1) General principles governing compliance with Portola Packaging for ongoing reexaminations ordered prior to November 2, 2002.

    If prior art was previously relied upon to reject a claim in a concluded prior related Office proceeding, the Office will not conduct reexamination based only on such prior art. “Prior related Office proceedings” include the application which matured into the patent that is being reexamined, any reissue application for the patent, and any reexamination proceeding for the patent.

    If prior art was not relied upon to reject a claim, but was cited in the record of a concluded prior related Office proceeding, and its relevance to the patentability of any claim was actually discussed on the record, the Office will not conduct reexamination based only on such prior art. The relevance of the prior art to patentability may have been discussed by the applicant, patentee, examiner, or any third party. However, 37 CFR 1.2 requires that all Office business be transacted in writing. Thus, the Office cannot presume that a prior art reference was previously relied upon or discussed in a prior Office proceeding if there is no basis in the written record to so conclude other than the examiner’s initials or a check mark on a form PTO/SB/08 or PTO/SB/42 (or on a form having a format equivalent to one of these forms) submitted with an information disclosure statement. Thus, any specific discussion of prior art must appear on the record of a prior related Office proceeding. Generalized statements such as the prior art is “cited to show the state of the art,” “cited to show the background of the invention,” or “cited of interest” would not preclude reexamination.

    The Office may conduct reexamination based on prior art that was cited but whose relevance to patentability of the claims was not discussed in any prior related Office proceeding.

  • (2) Procedures for determining whether the prosecution of an ongoing reexamination must be terminated in compliance with Portola Packaging.

    Office personnel must adhere to the following procedures when determining whether the prosecution of an ongoing reexamination should be terminated in compliance with the Federal Circuit’s decision in Portola Packaging.

    • (a) Ascertain that the order granting reexamination was mailed prior to November 2, 2002. If the order granting reexamination was not mailed prior to November 2, 2002, see above “Reexamination was ordered on or after November 2, 2002” for guidance.
    • (b) Prior to making any rejection in the ongoing reexamination, determine for any prior related Office proceeding what prior art was (i) relied upon to reject any claim, or (ii) cited and discussed.
    • (c) Base any and all rejections of the patent claims under reexamination at least in part on prior art that was, in any prior related Office proceeding, neither (i) relied upon to reject any claim, nor (ii) cited and its relevance to patentability of any claim discussed.
    • (d) Withdraw any rejections based only on prior art that was, in any prior related Office proceeding, previously either (i) relied upon to reject any claim, or (ii) cited and its relevance to patentability of any claim discussed.
    • (e) Terminate the prosecution of any reexamination in which the only remaining rejections are entirely based on prior art that was, in any prior related Office proceeding, previously (i) relied upon to reject any claim, and/or (ii) cited and its relevance to patentability of a claim discussed.

      The Director of the USPTO may conduct a search for new art to determine whether a substantial new question of patentability exists prior to terminating the prosecution of any ongoing reexamination proceeding. See 35 U.S.C. 303. See also 35 U.S.C. 305 (indicating that “reexamination will be conducted according to the procedures established for initial examination,” thereby suggesting that the Director of the USPTO may conduct a search during an ongoing reexamination proceeding).

  • (3) Application of Portola Packaging to unusual fact patterns.

The Office recognizes that each case must be decided on its particular facts and that cases with unusual fact patterns will occur. In such a case, the reexamination should be brought to the attention of the Central Reexamination Unit (CRU) or Technology Center (TC) Director who will then determine the appropriate action to be taken.

Unusual fact patterns may appear in cases in which prior art was relied upon to reject any claim or cited and discussed with respect to the patentability of a claim in a prior related Office proceeding, but other evidence clearly shows that the examiner did not appreciate the issues raised in the reexamination request or the ongoing reexamination with respect to that art. Such other evidence may appear in the reexamination request, in the nature of the prior art, in the prosecution history of the prior examination, or in an admission by the patent owner, applicant, or inventor. See 37 CFR 1.104(c)(3).

The following examples are intended to be illustrative and not inclusive.

For example, if a textbook was cited during prosecution of the application which matured into the patent, the record of that examination may show that only select information from the textbook was discussed with respect to the patentability of the claims. The file history of the prior Office proceeding should indicate which portion of the textbook was previously considered. See 37 CFR 1.98(a)(2)(ii) (an information disclosure statement must include a copy of each “publication or that portion which caused it to be listed”). If a subsequent reexamination request relied upon other information in the textbook that actually teaches what is required by the claims, it may be appropriate to rely on this other information in the textbook to order and/or conduct reexamination. However, a reexamination request that merely provides a new interpretation of a reference already previously relied upon or actually discussed by the Office does not create a substantial new question of patentability.

Another example involves the situation where an examiner discussed a reference in a prior Office proceeding, but did not either reject a claim based upon the reference or maintain the rejection based on the mistaken belief that the reference did not qualify as prior art. For example, the examiner may not have believed that the reference qualified as prior art because: (i) the reference was undated or was believed to have a bad date; (ii) the applicant submitted a declaration believed to be sufficient to antedate the reference under 37 CFR 1.131(a); or (iii) the examiner attributed an incorrect filing date to the claimed invention. If the reexamination request were to explain how and why the reference actually does qualify as prior art, it may be appropriate to rely on the reference to order and/or conduct reexamination. For example, the request could: (i) verify the date of the reference; (ii) undermine the sufficiency of the declaration filed under 37 CFR 1.131(a) (by a showing of an inaccuracy/mistake of fact in the declaration); or (iii) explain the correct filing date accorded a claim where the issue was not previously addressed in an earlier examination of the patent. See e.g., Heinl v. Godici, 143 F. Supp.2d 593 (E.D.Va. 2001) (reexamination on the basis of art previously presented without adequate proof of date may proceed if prior art status is now established).

Another example involves foreign language prior art references. If a foreign language prior art reference was cited and discussed in any prior Office proceeding but the foreign language prior art reference was never completely and accurately translated into English during the original prosecution, Portola Packaging may not prohibit reexamination over a complete and accurate translation of that foreign language prior art reference. Specifically, if a reexamination request were to explain why a more complete and accurate translation of that same foreign language prior art reference actually teaches what is required by the patent claims, it may be appropriate to rely on the foreign language prior art reference to order and/or conduct reexamination.

Another example of an unusual fact pattern involves cumulative references. To the extent that a cumulative reference is repetitive of a prior art reference that was previously applied or discussed, Portola Packaging may prohibit reexamination of the patent claims based only on the repetitive reference. For purposes of reexamination, a cumulative reference that is repetitive is one that substantially reiterates verbatim the teachings of a reference that was either previously relied upon or discussed in a prior Office proceeding even though the title or the citation of the reference may be different. However, it is expected that a repetitive reference which cannot be considered by the Office during reexamination will be a rare occurrence since most references teach additional information or present information in a different way than other references, even though the references might address the same general subject matter.

• • (4) Notices regarding compliance with Portola Packaging.
    • (a) If the prosecution of an ongoing reexamination is terminated under (2)(e) above in order to comply with the Federal Circuit’s decision in Portola Packaging, the Notice of Intent to Issue Ex Parte Reexamination Certificate should state:

      “The prosecution of this reexamination is terminated based on In re Portola Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997). No patentability determination has been made in this reexamination proceeding.”

    • (b) If a rejection in the reexamination has previously been issued and that rejection is withdrawn under (2)(d) above in order to comply with the Federal Circuit’s decision in Portola Packaging, the Office action withdrawing such rejection should state:

      “The rejection(s) based upon _______is/are withdrawn in view of In re Portola Packaging, Inc., 110 F.3d 786, 42 USPQ2d 1295 (Fed. Cir. 1997). No patentability determination of the claims of the patent in view of such prior art has been made in this reexamination proceeding.”

2258.02 Claiming Foreign Priority and Domestic Benefit in Reexamination [R-01.2024]

The patent owner may correct the failure to adequately claim foreign priority or domestic benefit in a patent to be reexamined during reexamination in accordance with the guidelines set forth in this section. However, a renewal of previously made claims for foreign priority under 35 U.S.C. 119 or domestic benefit under 35 U.S.C. 119(e) or 120, is not necessary during reexamination. Note that a design application cannot claim the benefit of a provisional application. See MPEP § 211.02, subsection III; see also MPEP § 1504.20 for benefit information specific to design applications.

The patent owner may obtain the right of foreign priority under 35 U.S.C. 119(a)-(d) where a claim for priority had been made before the patent was granted, and it is only necessary for submission of the certified copy in the reexamination proceeding to perfect priority.

However, where a petition to accept a delayed certified copy under 37 CFR 1.55(f) or (g) is required (such as, for example, when the application which matured in the patent to be reexamined was filed on or after March 16, 2013), a grantable petition, the appropriate fee, and any required attachments must be filed in the file of the application that matured into the patent to be reexamined. See MPEP § 215.02 for further guidance. In addition, a letter must be filed as a separate paper in the reexamination proceeding, notifying the Office that a petition to accept a delayed certified copy under 37 CFR 1.55(f) or (g), the appropriate fee, and any required attachments was or is being concurrently filed in the file of the patent to be reexamined. When a decision on the petition to accept a delayed certified copy under 37 CFR 1.55(f) or (g) is rendered in the file of the application that matured into the patent to be reexamined, a copy of the decision will also be placed in the file of the reexamination proceeding.

The patent owner may obtain the right of foreign priority under 35 U.S.C. 119(a)-(d) where the claim for foreign priority was not previously made. However, a grantable petition for an unintentionally delayed priority claim under 37 CFR 1.55(e) must be filed. The petition, and any required attachments, must be filed in the file of the application which matured into the patent to be reexamined, and a letter must be filed in the reexamination proceeding as a separate paper notifying the Office that the petition and accompanying attachments was or is concurrently being filed in the application (identifying the application number) which matured into the patent to be reexamined, according to the following guidance:

If the patent to be reexamined matured from an application filed on or after September 16, 2012, the patent owner must file in the File of the Application Which Matured into the Patent to be Reexamined:

• (a) A grantable petition for an unintentionally delayed priority claim under 37 CFR 1.55(e);
• (b) An application data sheet (37 CFR 1.76(b)(6)), identifying the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing, unless previously submitted;
• (c) A certified copy of the foreign application, unless previously submitted, or the exception in 37 CFR 1.55(h) is applicable;
• (d) The petition fee as set forth in 37 CFR 1.17(m); and
• (e) A statement that the entire delay between the date the priority claim was due under 37 CFR 1.55 and the date the priority claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. Additionally, a person filing a petition to accept a delayed priority claim more than two years after the date the foreign priority claim was due is required to provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional. See MPEP § 214.02.
• (f) In the Reexamination Proceeding:

  A letter, as a separate paper, notifying the Office that items (a)-(e), as applicable, was or is concurrently being filed in the file of the application which matured into the patent to be reexamined.

  When a decision on the petition for an unintentionally delayed priority claim under 37 CFR 1.55(e) is rendered in the file of the application which matured into the patent to be reexamined, a copy of the decision will also be placed in the file of the reexamination proceeding. In addition, if the petition is granted, a copy of the application data sheet which was determined by the Office in its decision to meet the requirements of 37 CFR 1.55(e) (and all other applicable requirements), will also be placed in the file of the reexamination proceeding.

If the patent to be reexamined matured from an application filed before September 16, 2012, the patent owner must file in the File of the Application Which Matured into the Patent to be Reexamined:

• (a) A grantable petition for an unintentionally delayed priority claim under 37 CFR 1.55(e);
• (b) Unless previously submitted, either (i) an application data sheet (37 CFR 1.76(b)(6)) or (ii) an oath or declaration under 37 CFR 1.63; where the application data sheet, oath or declaration, whichever is filed, identifies the foreign application to which priority is claimed, by specifying the application number, country (or intellectual property authority), day, month, and year of its filing (see 37 CFR 1.55(n));
• (c) A certified copy of the foreign application, unless previously submitted, or the exception in 37 CFR 1.55(h) is applicable;
• (d) The petition fee as set forth in 37 CFR 1.17(m); and
• (e) A statement that the entire delay between the date the priority claim was due under 37 CFR 1.55 and the date the priority claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. Additionally, a person filing a petition to accept a delayed priority claim more than two years after the date the foreign priority claim was due is required to provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional. See MPEP § 214.02.
• (f) In the Reexamination Proceeding:

  A letter, as a separate paper, notifying the Office that items (a)-(e), as applicable, was or is concurrently being filed in the file of the application which matured into the patent to be reexamined.

When a decision on the petition for an unintentionally delayed priority claim under 37 CFR 1.55(e) is rendered in the file of the application which matured into the patent to be reexamined, a copy of the decision will also be placed in the file of the reexamination proceeding. In addition, if the petition is granted, a copy of the application data sheet, oath, or declaration, which was determined by the Office in its decision to meet the requirements of 37 CFR 1.55(e) (and all other applicable requirements), will also be placed in the file of the reexamination proceeding.

For further guidance on the requirements for a grantable petition for an unintentionally delayed priority claim under 37 CFR 1.55(e), see MPEP § 214.02.

The patent owner may also restore the right of foreign priority under 35 U.S.C. 119(a)-(d) where the filing of the subsequent application was delayed, in accordance with 37 CFR 1.55(c). A grantable petition to restore the right of foreign priority and any required attachments, including an application data sheet, must be filed in the application specified in 37 CFR 1.55(c), not in the reexamination proceeding. A letter must be filed in the reexamination proceeding as a separate paper notifying the Office that the petition and accompanying attachments was or is concurrently being filed in the application specified in 37 CFR 1.55(c) (identifying the application number).

When a decision on the petition to restore the right of foreign priority under 37 CFR 1.55(c) is rendered in the file of the application specified in 37 CFR 1.55(c), a copy of the decision will also be placed in the file of the reexamination proceeding. In addition, if the petition is granted, a copy of the application data sheet which was determined by the Office in its decision to meet the requirements of 37 CFR 1.55(c) (and all other applicable requirements), will also be placed in the file of the reexamination proceeding.

For further guidance on the requirements for a grantable petition to restore the right of foreign priority under 37 CFR 1.55(c), see MPEP § 213.03, subsection III.

The patent owner may also correct the failure to adequately claim (in the application for the patent to be reexamined) benefit under 35 U.S.C. 120 of an earlier filed copending U.S. patent application. For a patent to be reexamined, a grantable petition for an unintentionally delayed benefit claim under 37 CFR 1.78(e) must be filed. The petition, and any required attachments (with the exception of an amendment to the first sentence(s) of the specification if the application which matured into the patent to be reexamined is a nonprovisional application filed before September 16, 2012 – see subsection II.A.2. below), must be filed in the file of the application which matured into the patent to be reexamined, and a letter must be filed in the reexamination proceeding as a separate paper notifying the Office that the petition and accompanying attachments was or is concurrently being filed in the application (identifying the application number) which matured into the patent to be reexamined, according to the following guidance:

If the patent to be reexamined matured from an application filed on or after September 16, 2012, the patent owner must file in the File of the Application Which Matured into the Patent to be Reexamined:

• (a) A grantable petition for an unintentionally delayed benefit claim under 37 CFR 1.78(e);
• (b) An application data sheet including the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed application (37 CFR 1.76(b)(5)), unless previously submitted;
• (c) The petition fee as set forth in 37 CFR 1.17(m); and
• (d) A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(d)(3) and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. Additionally, a person filing a petition to accept a delayed benefit claim more than two years after the date the benefit claim was due is required to provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional. See MPEP § 211.04.
• (e) In the Reexamination Proceeding:

  A letter, as a separate paper, notifying the Office that items (a)-(d), as applicable, was or is concurrently being filed in the file of the application which matured into the patent to be reexamined.

When a decision on the petition for an unintentionally delayed benefit claim under 37 CFR 1.78(e) is rendered in the file of the application which matured into the patent to be reexamined, a copy of the decision will also be placed in the file of the reexamination proceeding. In addition, if the petition is granted, a copy of the application data sheet which was determined by the Office in its decision to meet the requirements of 37 CFR 1.78(e) (and all other applicable requirements), will also be placed in the file of the reexamination proceeding.

If the patent to be reexamined matured from an application filed before September 16, 2012, the patent owner must file in the File of the Application Which Matured into the Patent to be Reexamined:

• (a) A grantable petition for an unintentionally delayed benefit claim under 37 CFR 1.78(e);
• (b) If the patent owner does not choose to file an amendment as set forth in (e) below in the reexamination proceeding, an application data sheet including the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed application (37 CFR 1.76(b)(5)), unless previously submitted;
• (c) The petition fee as set forth in 37 CFR 1.17(m); and
• (d) A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(d)(3) and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. Additionally, a person filing a petition to accept a delayed benefit claim more than two years after the date the benefit claim was due is required to provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional. See MPEP § 211.04.
• (e) In the Reexamination Proceeding:

  If the patent owner does not choose to file an application data sheet as set forth in (b) above in the application which matured into the patent to be reexamined, an amendment inserting the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed application in the first sentence(s) of the specification following the title as set forth in 37 CFR 1.78(h), unless previously submitted; and

• (f) In the Reexamination Proceeding:

  A letter, as a separate paper, notifying the Office that items (a)-(d), as applicable, was or is concurrently being filed in the file of the application which matured into the patent to be reexamined.

When a decision on the petition for an unintentionally delayed benefit claim under 37 CFR 1.78(e) is rendered in the file of the application which matured into the patent to be reexamined, a copy of the decision will also be placed in the file of the reexamination proceeding. In addition, if the petition is granted, a copy of any application data sheet, where applicable, which was determined by the Office in its decision to meet the requirements of 37 CFR 1.78(e) (and all other applicable requirements), will also be placed in the file of the reexamination proceeding.

Note, if the application which matured into the patent to be reexamined is a nonprovisional application filed before September 16, 2012, the patent owner must choose to either (i) file, in the application which matured into the patent to be reexamined, an application data sheet including the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed application (37 CFR 1.76(b)(5)), unless previously submitted; or (ii) file, in the reexamination proceeding, an amendment inserting the reference required by 35 U.S.C. 120 and 37 CFR 1.78(d)(2) to the prior-filed application in the first sentence(s) of the specification following the title as set forth in 37 CFR 1.78(h), unless previously submitted. See (b) and (e) above.

For further guidance on the requirements for a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(e), see MPEP § 211.04.

The patent owner may correct, in a patent to be reexamined which matured from a utility or plant application, the failure to adequately claim benefit under 35 U.S.C. 119(e) of an earlier filed provisional application. A design application cannot claim the benefit of a provisional application. See MPEP § 211.02; see also MPEP § 1504.20 for benefit information specific to design applications.

In order to make such a correction in a utility or plant patent, the patent owner must file a grantable petition for an unintentionally delayed claim under 35 U.S.C. 119(e), pursuant to 37 CFR 1.78(c). The petition, and any required attachments (with the exception of an amendment to the first sentence(s) of the specification if the application which matured into the patent to be reexamined is a nonprovisional utility or plant application filed before September 16, 2012 – see subsection II.B.2. below), must be filed in the file of the application which matured into the patent to be reexamined, and a letter must be filed in the reexamination proceeding as a separate paper notifying the Office that the petition and accompanying attachments was or is concurrently being filed in the application (identifying the application number) which matured into the patent to be reexamined, according to the following guidance:

If the patent to be reexamined matured from a utility or plant application filed on or after September 16, 2012, the patent owner must file in the File of the Application Which Matured into the Patent to be Reexamined:

• (a) A grantable petition for an unintentionally delayed claim under 35 U.S.C. 119(e), pursuant to 37 CFR 1.78(c);
• (b) An application data sheet including the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed provisional application; unless previously submitted;
• (c) The petition fee as set forth in 37 CFR 1.17(m); and
• (d) A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(a)(4) and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. Additionally, a person filing a petition to accept a delayed benefit claim more than two years after the date the benefit claim was due is required to provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional. See MPEP § 211.04.
• (e) In the Reexamination Proceeding:

  A letter, as a separate paper, notifying the Office that items (a)-(d), as applicable, was or is concurrently being filed in the file of the application which matured into the patent to be reexamined.

When a decision on the petition for an unintentionally delayed claim under 35 U.S.C. 119(e) is rendered in the file of the application which matured into the patent to be reexamined, a copy of the decision will also be placed in the file of the reexamination proceeding. In addition, if the petition is granted, a copy of the application data sheet which was determined by the Office in its decision to meet the requirements of 35 U.S.C. 119(e) (and all other applicable requirements), will also be placed in the file of the reexamination proceeding.

If the patent to be reexamined matured from a utility or plant application filed before September 16, 2012, the patent owner must file in the File of the Application Which Matured into the Patent to be Reexamined:

• (a) A grantable petition for an unintentionally delayed claim under 35 U.S.C. 119(e), pursuant to 37 CFR 1.78(c);
• (b) If the patent owner does not choose to file an amendment as set forth in (e) below in the reexamination proceeding, an application data sheet including the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed provisional application; unless previously submitted;
• (c) The petition fee as set forth in 37 CFR 1.17(m); and
• (d) A statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78(a)(4) and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. Additionally, a person filing a petition to accept a delayed benefit claim more than two years after the date the benefit claim was due is required to provide additional explanation of the circumstances surrounding the delay that establishes that the entire delay was unintentional. See MPEP § 211.04.
• (e) In the Reexamination Proceeding:

  If the patent owner does not choose to file an application data sheet as set forth in (b) above in the application which matured into the patent to be reexamined, an amendment inserting the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed application in the first sentence(s) of the specification following the title as set forth in 37 CFR 1.78(h), unless previously submitted; and

• (f) In the Reexamination Proceeding:

  A letter, as a separate paper, notifying the Office that items (a)-(d), as applicable, was or is concurrently being filed in the file of the application which matured into the patent to be reexamined.

When a decision on the petition for an unintentionally delayed claim under 35 U.S.C. 119(e) is rendered in the file of the application which matured into the patent to be reexamined, a copy of the decision will also be placed in the file of the reexamination proceeding. In addition, if the petition is granted, a copy of any application data sheet, where applicable, which was determined by the Office in its decision to meet the requirements of 35 U.S.C. 119(e) (and all other applicable requirements), will also be placed in the file of the reexamination proceeding.

Note, if the application which matured into the patent to be reexamined is a nonprovisional utility or plant application filed before September 16, 2012, the patent owner must choose to either (i) file, in the application which matured into the patent to be reexamined, an application data sheet including the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed application (37 CFR 1.76(b)(5)), unless previously submitted; or (ii) file, in the reexamination proceeding, an amendment inserting the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(3) to the prior-filed application in the first sentence(s) of the specification following the title as set forth in 37 CFR 1.78(h), unless previously submitted. See (b) and (e) above.

For further guidance on petitions for an unintentionally delayed benefit claim under 35 U.S.C. 119(e), pursuant to 37 CFR 1.78(c), see MPEP § 211.04.

The patent owner may also restore the benefit of a provisional application where the filing of the application which matured into the patent to be reexamined (i.e., the subsequent nonprovisional application) was unintentionally delayed, in accordance with 37 CFR 1.78(b). The patent owner must file a grantable petition to restore the benefit of a provisional application under 37 CFR 1.78(b), and any required attachments, including an application data sheet meeting the requirements set forth in 37 CFR 1.78(b), in the file of the application which matured into the patent to be reexamined (i.e., the subsequent application as specified in 37 CFR 1.78(b)). A letter must be filed in the reexamination proceeding as a separate paper notifying the Office that the petition and accompanying attachments was or is concurrently being filed in the application (identifying the application number) which matured into the patent to be reexamined. Note that a design application cannot claim the benefit of a provisional application.

When a decision on the petition to restore the benefit of a provisional application is rendered in the file of the application which matured into the patent to be reexamined, a copy of the decision will also be placed in the file of the reexamination proceeding. In addition, if the petition is granted, a copy of the application data sheet which was determined by the Office in its decision to meet the requirements of 37 CFR 1.78(b) (and all other applicable requirements), will also be placed in the file of the reexamination proceeding.

For further guidance on the requirements for a grantable petition to restore the benefit of a provisional application under 37 CFR 1.78(b), see MPEP § 211.01(a), subsection II.