2809 Items of Information
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(a) Each request for supplemental examination may include no more than twelve items of information believed to be relevant to the patent. More than one request for supplemental examination of the same patent may be filed at any time during the period of enforceability of the patent.
(b) An item of information includes a document submitted as part of the request that contains information, believed to be relevant to the patent, that the patent owner requests the Office to consider, reconsider, or correct. If the information to be considered, reconsidered, or corrected is not, at least in part, contained within or based on any document submitted as part of the request, the discussion within the body of the request relative to the information will be considered as an item of information.
(c) An item of information must be in writing in accordance with § 1.2. To be considered, any audio or video recording must be submitted in the form of a written transcript.
(d) If one item of information is combined in the request with one or more additional items of information, each item of information of the combination may be separately counted. Exceptions include the combination of a non-English language document and its translation, and the combination of a document that is over 50 pages in length and its summary pursuant to § 1.610(b)(8).
An item of information is a document that contains information believed to be relevant to the patent.
Each request for supplemental examination may include no more than twelve items of information, but more than one request for supplemental examination may be filed.
- An item of information must be in writing.
- Any audio or video recording must be submitted in the form of a written transcript.
- An item of information is usually a separate document from the request.
- An item of information may be part of the request if the information to be considered is not contained within or based on a supporting document.
- In this case, the discussion within the body of the request relative to the information will be considered as the item of information.
A single reference that raises multiple issues will be counted as a single item of information.
- Each of the references cited in a combination of references under 35 U.S.C. 103 will be separately counted as items of information.
- Cumulative items of information will be separately counted.
- A declaration or affidavit is usually counted as one item but if it presents two distinct items of information, then each item of information will be counted separately.
- A non-English language document and its translation are counted as a single item of information.
A patent owner cannot group multiple items of information together in a declaration or other document and have it counted as one item of information.
Certain papers should not be submitted with a request, such as petitions and amendments.
2809.01 Information Relating to the Correction of Factual Information
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If the patent owner merely wishes to amend the patent file or correct inventorship, the owner should file a reissue application or a request for certificate of correction, where appropriate.
Supplemental examination is limited to a determination of whether the request raises a SNQ.
If the Office determines that no SNQ is raised by the request, the proceeding concludes with the issuance of a supplemental examination certificate indicating no SNQ is raised.
- In this case, there will be no opportunity to make changes (e.g., correct a priority or benefit claim) to the patent.
If the Office determines that the request raises a SNQ, reexamination will be ordered and correction of factual information could be made during the reexamination.
The Office recommends that any request that includes an item of information limited to the correction of factual information should also include one or more additional items of information that potentially provides evidence that the patentability of the claims depends upon the factual information to be corrected.
- The patent owner may include in the request one or more additional items of information, which are unrelated to the factual information to be corrected, and these unrelated items may raise a SNQ.
» 2810 Fees Due on Filing a Supplemental Examination Request
