How does the USPTO count items of information in a supplemental examination request?

The USPTO has specific guidelines for counting items of information in a supplemental examination request, as outlined in MPEP 2809:

• The Office counts the number of items presented, not the number of issues raised or grounds for consideration.
• A single reference raising multiple issues under different statutes (e.g., 35 U.S.C. 102, 103, and 112) is counted as one item.
• For combinations of references under 35 U.S.C. 103, each reference is counted separately.
• Cumulative items are counted separately.
• Supporting documents, not discussions within the request, are counted as items of information.
• Declarations or affidavits are typically counted as one item, but may be counted as multiple items if they present distinct information.

The MPEP states:

“When counting the number of items of information submitted with a request for supplemental examination, the Office will tally the number of items of information, such as documents, presented. The Office will not count the number of issues raised by, or the number of grounds which the patent owner requests the Office to consider, when determining the number of items of information.”

This approach ensures a consistent method for determining compliance with the twelve-item limit while allowing for comprehensive review of the submitted information.

To learn more:

• supplemental examination
• item counting
• USPTO
• patent review