Can a patent owner rely on a third party’s paper for the detailed explanation in a supplemental examination request?

No, a patent owner cannot rely on a paper drafted by a third party, including a patent examiner, to provide the detailed explanation required in a supplemental examination request. The MPEP clearly states:

“The detailed explanation must reflect the opinion of the patent owner, and not that of a third party (including a patent examiner).”

This is because the statute specifies that only a patent owner may request supplemental examination, and the detailed explanation must reflect the patent owner’s opinion on the relevance of each item of information and how it applies to the claims. If a patent owner wishes to have the examiner consider information from another proceeding, they must:

• Separately list the document as an item of information
• Provide copies when required
• Supply their own detailed explanation of how the information applies to the claims

To learn more:

• Supplemental Examination
• Third Party Papers
• Detailed Explanation
• Patent Owner