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

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. 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 Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Detailed Explanation of Relevance and Application Required for Supplemental Examination MPEP 2811.01 Required Requirement for Detailed Explanation of Information Application MPEP 2811.01 Required Detailed Explanation for Each Item of Information Must Be Provided MPEP 2811.01 Required Detailed Explanation Required for Supplemental Examination MPEP 2811.01 Required Detailed Explanation of Relevance and Application Required for Supplemental Examination MPEP 2811.01 Required Requirement for Detailed Explanation of Information MPEP 2811.01 Required Patent Owner Must Provide Detailed Explanation for Supplemental Examination MPEP 2811.01 Permitted Patent Owner Must Draft Detailed Explanation MPEP 2811.01 Prohibited Patent Owner Must Draft Detailed Explanation for Supplemental Exa...