2816 Determination on the Request
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Within three months after the filing date of a request for supplemental examination, the Office will determine whether a substantial new question of patentability affecting any claim of the patent is raised by any of the items of information presented in the request. The determination will generally be limited to a review of the item(s) of information identified in the request as applied to the identified claim(s) of the patent. The determination will be based on the claims in effect at the time of the determination and will become a part of the official record of the patent.
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The patent owner must promptly notify the Office of any federal court decision involving the patent.
A non-final federal court decision concerning a patent under supplemental examination will have no binding effect on the Office’s determination whether a substantial new question of patentability has been raised in a supplemental examination proceeding.
If it is brought to the Office’s attention that a federal court has issued a final holding of invalidity or unenforceability, any claims which are finally held invalid or unenforceable, and for which supplemental examination has been requested, will not be examined.
2816.01 Claims Considered in Making the Determination
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2816.02 Criteria for Making the Determination
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An item of information raises a SNQ where there is a substantial likelihood that a reasonable examiner would consider the item of information important in deciding whether or not the claim is patentable unless the same question was previously raised in another Office proceeding or has already been decided by a final holding of invalidity by a federal court.
The meaning and scope of SNQ is not defined by statute and is determined on a case-by-case basis with reference to earlier court decisions involving ex parte reexaminations.
An item of information limited to a correction of factual information, alone, may not raise a SNQ.
For the correction of a foreign priority or domestic benefit claim to raise a SNQ, the request for supplemental examination should also include one or more additional item(s) of information.
2816.03 Content of the Determination
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(a) REQUEST FOR SUPPLEMENTAL EXAMINATION.—A patent owner may request supplemental examination of a patent in the Office to consider, reconsider, or correct information believed to be relevant to the patent, in accordance with such requirements as the Director may establish. Within 3 months after the date a request for supplemental examination meeting the requirements of this section is received, the Director shall conduct the supplemental examination and shall conclude such examination by issuing a certificate indicating whether the information presented in the request raises a substantial new question of patentability.
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(a) Within three months after the filing date of a request for supplemental examination, the Office will determine whether a substantial new question of patentability affecting any claim of the patent is raised by any of the items of information presented in the request. The determination will generally be limited to a review of the item(s) of information identified in the request as applied to the identified claim(s) of the patent. The determination will be based on the claims in effect at the time of the determination and will become a part of the official record of the patent.
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A supplemental examination certificate is prepared and lists all of the items of information properly submitted as part of the request and whether a substantial new question of patentability is raised.
- The reasons document explains why each item of information does or does not raise a SNQ.
The reasons document should include:
- a statement that the item of information raises a SNQ and identify the claims for which the SNQ is raised;
- where appropriate, a statement that the item of information does not raise a SNQ and identify the claims for which a SNQ is not raised; and
- a brief statement of the basis for the determination. Describes what the reasons document should point out if the examiner determines that a SNQ is raised, and if the examiner determines that a SNQ is not raised.
The reasons document should explain why each item did not raise a SNQ for each claim to which that item of information was applied in the request.
- The item of information may raise a SNQ depending upon whether the foreign priority or domestic benefit claim is or is not corrected.
After an examiner has made a preliminary determination and formulated a draft certificate, the examiner will inform the CRU SPRS and a panel review conference will be convened.
- The conference members will review the preliminary determination.
- If confirmed, the certificate and reasons document are prepared for mailing.
2816.04 Effect of the Determination
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