Brief Summary:
Chapter 2800 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.
Key Terms:
| Ex Parte Reexamination | Ex Parte Reexamination is a process where the patent office re-evaluates the validity of an existing patent based on new evidence or prior art submitted by a third party or the patent owner, without involving the third party in the proceedings. |
| Representative of Patent Owner | A representative of patent owner is an attorney or agent authorized to act on behalf of a patent owner, either under a power of attorney or in a representative capacity, typically requiring registration as a patent practitioner. |
| Supplemental Examination | Supplemental Examination is a process that allows a patent owner to request the patent office to reconsider or correct information in a patent to address potential issues of enforceability, thereby strengthening the patent’s validity. |
37 CFR (Code of Federal Regulations):
| 37 CFR 1.605 – Items of information. |
| 37 CFR 1.605 defines “items of information” as documents or written information submitted by a third party to aid in the examination of a patent application or reexamination proceeding. |
| 37 CFR 1.610 – Content of request for supplemental examination. |
| 37 CFR 1.610 specifies that a request for supplemental examination must include a detailed explanation of each item of information, its relevance, and how it raises a substantial new question of patentability, along with the required fee and a copy of each item. |
35 USC (United States Code):
| 35 USC 257 – Supplemental examinations to consider, reconsider, or correct information. |
| 35 USC 257 allows patent owners to request supplemental examinations to consider, reconsider, or correct information believed to be relevant to the patent, potentially protecting the patent from being held unenforceable due to issues like inequitable conduct. |
Quick Statistics:
Number of Pages: 65 pgs
Sections: 2801 – 2823
List of Sections:
| 2801 | Introduction |
| 2802 | Supplemental Examination |
| 2803 | Persons Who May File a Request for Supplemental Examination |
| • 2803.01 Inquiries from Persons Other Than the Patent Owner • 2803.02 Public Access | |
| 2804 | Representative of Patent Owner |
| • 2804.01 Withdrawal of Attorney or Agent | |
| 2805 | Correspondence with Patent Owner; Patent Owner Address |
| 2806 | How to File Papers in a Supplemental Examination Proceeding and in Any Resulting Ex Parte Reexamination Proceeding |
| 2807 | Format of Papers Filed in a Supplemental Examination Proceeding |
| 2808 | Time for Requesting Supplemental Examination |
| 2809 | Items of Information |
| • 2809.01 Information Relating to the Correction of Factual Information | |
| 2810 | Fees Due on Filing a Supplemental Examination Request |
| • 2810.01 Document Size Fees | |
| 2811 | Content of Request for Supplemental Examination |
| • 2811.01 Detailed Explanation of the Relevance and Manner of Applying Each Item of Information • 2811.02 Optional Content | |
| 2812 | Initial Processing of a Request for Supplemental Examination |
| • 2812.01 Filing Date of the Request • 2812.02Noncompliant Request for Supplemental Examination • 2812.03 Corrected Request • 2812.04 Termination Due to Defective/Improper Request or Corrected Request | |
| 2813 | Handling of Papers, Other Than a Request, in a Supplemental Examination Proceeding |
| • 2813.01 Amendments | |
| 2814 | Interviews Are Prohibited |
| 2815 | Time for Deciding Request |
| 2816 | Determination on the Request |
| • 2816.01 Claims Considered in Making the Determination • 2816.02 Criteria for Making the Determination • 2816.03 Content of the Determination • 2816.04 Effect of the Determination | |
| 2817 | Conclusion of Supplemental Examination |
| • 2817.01 Processing and Electronic Issuance of Supplemental Examination Certificate | |
| 2818 | Procedure after Conclusion of Supplemental Examination |
| • 2818.01 After Determination Finding a Substantial New Question of Patentability • 2818.02 After Determination Finding No Substantial New Question of Patentability | |
| 2819 | Discovery of Possible Material Fraud |
| 2820 | Submission of Notification of Other Prior or Concurrent Post-Patent Office Proceedings |
| 2821 | Multiple Post-Patent Office Proceedings |
| 2822 | Assignment of the Supplemental Examination Proceeding |
| 2823 | Differences Between an Ex Parte Reexamination Proceeding Ordered Pursuant to 35 U.S.C. 257 and an Ex Parte Reexamination Proceeding Ordered Pursuant to 35 U.S.C. 302 |