2811 Content of Request for Supplemental Examination
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(a) A request for supplemental examination must be accompanied by the fee for filing a request for supplemental examination as set forth in § 1.20(k)(1), the fee for reexamination ordered as a result of a supplemental examination proceeding as set forth in § 1.20(k)(2), and any applicable document size fees as set forth in § 1.20(k)(3).
(b) A request for supplemental examination must include:
(1) An identification of the number of the patent for which supplemental examination is requested.
(2) A list of the items of information that are requested to be considered, reconsidered, or corrected. Where appropriate, the list must meet the requirements of § 1.98(b).
(3) A list identifying any other prior or concurrent post-patent Office proceedings involving the patent for which supplemental examination is being requested, including an identification of the type of proceeding, the identifying number of any such proceeding (e.g., a control number or reissue application number), and the filing date of any such proceeding.
(4) An identification of each claim of the patent for which supplemental examination is requested.
(5) A separate, detailed explanation of the relevance and manner of applying each item of information to each claim of the patent for which supplemental examination is requested.
(6) A copy of the patent for which supplemental examination is requested and a copy of any disclaimer or certificate issued for the patent.
(7) A copy of each item of information listed in paragraph (b)(2) of this section, accompanied by a written English translation of all of the necessary and pertinent parts of any non-English language item of information. The patent owner is not required to submit copies of items of information that form part of the discussion within the body of the request as specified in § 1.605(b), or copies of U.S. patents and U.S. patent application publications.
(8) A summary of the relevant portions of any submitted document, other than the request, that is over 50 pages in length. The summary must include citations to the particular pages containing the relevant portions.
(9) An identification of the owner(s) of the entire right, title, and interest in the patent requested to be examined, and a submission by the patent owner in compliance with § 3.73(c) establishing the entirety of the ownership in the patent requested to be examined.
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2811.01 Detailed Explanation of the Relevance and Manner of Applying Each Item of Information
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(b) A request for supplemental examination must include:
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(5) A separate, detailed explanation of the relevance and manner of applying each item of information to each claim of the patent for which supplemental examination is requested.
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A separate, detailed explanation must include, for each item of information listed pursuant to 37 CFR 1.610(b)(2), an explanation of how the item of information may be applied to the claims for which supplemental examination is requested.
- A separate, detailed explanation is also required for each dependent claim for which supplemental examination is requested.
The use of chart claims to supply the explanation is encouraged.
- Failure to provide the required explanation will result in the request not receiving a filing date.
- In that case, patent owner will be notified and be given a time period to correct the request.
- The requirement for a detailed explanation may not be met by incorporating by reference a paper from another proceeding, or by relying on a paper of a third party.
If the request includes an item of information limited to a correction of factual information, the request should also include one or more additional item(s) of information that potentially provide evidence that the patentability of the claims depends upon the factual information to be corrected.
A cover sheet may be included.
- The cover sheet should itemize each component submitted as part of the request.
A table of contents may be submitted.
2811.02 Optional Content
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(c) The request may also include:
(1) A cover sheet itemizing each component submitted as part of the request;
(2) A table of contents for the request;
(3) An explanation of how the claims patentably distinguish over the items of information; and
(4) An explanation of why each item of information submitted with the request does or does not raise a substantial new question of patentability.
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» 2812 Initial Processing of a Request for Supplemental Examination
