Chapter 2800: Supplemental Examination
Chapter 2800 is newly added to the MPEP and provides guidance on Supplemental Examination, which was created by the Leahy-Smith America Invents Act (AIA) effective September 16, 2012. Supplemental examination provides a patent owner with a mechanism to request that the Office consider, reconsider, or correct information believed to be relevant to the patent.
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The Executive Summaries from the main chapter sections have been copied here for your convenience (subsections are not included here). They will help you remember what each main section of the Guidebook (MPEP) covers as you answer the questions from the quizzes above.
Supplemental examination provides a patent owner with a mechanism to request that the Office consider, reconsider, or correct information believed to be relevant to the patent. Supplemental examination became available on September 16, 2012 as a result of AIA.
Information submitted in a supplemental examination is not limited to patents and printed publications like ex parte reexamination; request may involve any grounds of patentability. Unlike ex parte reexamination practice, the information that the patent owner may request to be considered, reconsidered, or corrected in a supplemental examination proceeding is not limited to patents and printed publications.
This section provides a brief overview of the process of supplemental examination. For instance, supplemental examination may be requested by the patent owner to consider, reconsider, or correct information believed to be relevant to the patent in accordance with requirements established by the Office.
Only a patent owner may file a request for supplemental examination. The request must be filed by the owner(s) of the entire right, title, and interest in the patent unless one of the described rare exceptions apply.
An attorney or agent, who files a request on behalf of a patent owner, may act under a power of attorney under 37 CFR 1.32 or under a representative capacity under 37 CFR 1.34. Correspondence from the Office will be directed to the patent owner at the address indicated in the patent file.
The correspondence address will be the address in the file of the patent for which supplemental examination is requested. If the patent owner desires the Office to send correspondence to a different address, then a new power of attorney must be filed in the patent for which supplemental examination is requested and in the supplemental examination proceeding, or in the resulting ex parte reexamination proceeding, if ordered.
This section covers the filing of papers in a supplemental examination proceeding. Essentially, a request for supplemental examination should be deposited as a new, separate, and independent submission.
All papers submitted in a supplemental examination proceeding must be formatted in accordance with 37 CFR 1.52. Court documents and non-patent literature may be redacted, but must otherwise be identical both in content and in format to the original documents, and if a court document, to the document submitted in court, and must not otherwise be reduced in size or modified, particularly in terms of font type, font size, line spacing, and margins.
A patent owner may, at any time during the period of enforceability of a patent, file a request for supplemental examination.
This section outlines the items of information included in a request for supplemental examination. Each request for a supplemental examination may contain a maximum of no more than 12 items of information. However, more than one request for supplemental examination may be filed.
The filing fee, the ex parte reexamination fee, and any applicable document size fees must accompany the request for supplemental examination.
37 CFR 1.610(b)(1) requires identification of the number of the patent for which supplemental examination is requested. Each claim for which supplemental examination is requested must be identified. The request must include 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.
All processing for the supplemental examination and any resulting reexamination will be performed by the Central Reexamination Unit (CRU).
This section covers how the papers other than the request are handled in a supplemental examination procedure. For instance, the Office may hold in abeyance an action on any petition or other papers until after the proceeding is concluded.
Interviews are prohibited in a supplemental examination proceeding. A telephone call to confirm receipt or to ask purely procedural questions is not deemed an interview.
Within 3 months of the filing date, the Office must issue a determination on whether a SNQ is raised by the request.
The standard used in evaluating the request is whether a SNQ is raised by any of the items of information properly presented in the request. The SNQ standard is the same as used in ex parte reexamination determinations.
A supplemental examination proceeding concludes with the issuance of the certificate indicating whether the request raised a SNQ.
The Office procedure after publication of the certificate depends on whether the Office determines that a SNQ affecting at least one claim of the patent is raised in the request. If a SNQ is found, reexamination is order. If a SNQ is not found, reexamination is not ordered and the reexamination fee is refunded.
Addresses discovery of possible material fraud on the Office in connection with the patent. Supplemental examination or any ex parte reexamination proceeding will continue and the matter will be referred to the U.S. Attorney General.
The patent owner must, as soon as possible after discovery of any other prior or concurrent post-patent Office proceeding involving the patent, file a paper limited to notifying the Office of the post-patent Office proceeding.
Generally, supplemental examination proceedings will not be merged, however, the Office reserves its option to merge proceedings as circumstances arise. If multiple post-patent proceedings are simultaneously filed any determination of which proceedings to initiate, and when, will be made on a case-by-case basis.
Supplemental examination requests will be assigned to the CRU in the same manner in which reexamination requests are assigned.
This section outlines the differences in an ex parte reexamination that is ordered as a result of a supplemental examination as an ex parte reexamination ordered through 35 U.S.C. 302. For instance, in an ex parte reexamination ordered as a result of supplemental examination, 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. This section explains further differences.
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