How does the USPTO determine the basis for each issue in supplemental examination?

The USPTO determines the basis for each issue in supplemental examination by carefully analyzing the submitted information and its relevance to the patent. According to MPEP 2816.03:

“The determination should provide an explanation of the basis for the determination for each issue identified as raising a substantial new question of patentability.”

The process typically involves:

• Reviewing each item of information submitted
• Identifying specific issues raised by the information
• Analyzing how the information relates to the patent claims
• Determining if the information presents a new, non-cumulative technological teaching
• Explaining the rationale for whether each issue raises a substantial new question of patentability

This thorough analysis ensures that the determination provides a clear and comprehensive explanation of why each identified issue does or does not raise a substantial new question of patentability, helping patent owners understand the potential implications for their patent’s validity.

To learn more:

• basis determination
• supplemental examination issues
• USPTO procedure