How does the USPTO handle supplemental examination requests involving domestic benefit claims?

The USPTO has specific procedures for handling supplemental examination requests involving domestic benefit claims. These procedures depend on whether the request is solely for correcting a benefit claim or includes additional items of information.

For requests solely correcting a benefit claim, the MPEP states: If the only information provided with the request is solely directed to the correction of factual information, such as the correction of a missing or erroneous foreign priority or domestic benefit claim, […] which does not, itself, raise a substantial new question of patentability (SNQ), then (1) the supplemental examination certificate will state that no SNQ is raised in the request for supplemental examination; and (2) the reasons for SNQ determination will indicate that the information regarding the correction of factual information did not raise a SNQ because the patent owner did not include with the request any additional items of information that caused the patentability of the claim(s) to depend upon the corrected factual information.

However, if the request includes additional items of information that raise an SNQ, the examiner may make a preliminary determination on the benefit claim’s validity. The final determination would typically be made during any resulting reexamination proceeding.

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Topics: MPEP 2800 - Supplemental Examination, MPEP 2816.02 - Criteria For Making The Determination, Patent Law, Patent Procedure
Tags: Domestic Benefit Claims, patent examination, supplemental examination, USPTO procedures