MPEP § 2811.02 — Optional Content (Annotated Rules)
§2811.02 Optional Content
This page consolidates and annotates all enforceable requirements under MPEP § 2811.02, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Optional Content
This section addresses Optional Content. Primary authority: 37 CFR 1.610(c), 37 CFR 1.610, and 37 CFR 1.610(c)(1). Contains: 4 requirements, 1 prohibition, 1 guidance statement, 4 permissions, and 5 other statements.
Key Rules
Supplemental Examination
37 CFR 1.610(c) provides that the request may optionally include the following enumerated elements:
37 CFR 1.610(c)(1) permits the request to include a cover sheet itemizing each component submitted as part of the request. A "component" may be a certificate of mailing, the request, the patent to be examined, an item of information, and any other separate document that is deposited with or as part of the request. Submission of a cover sheet will assist the Office in the review of the request for compliance with the filing date requirements. For example, the Office may readily recognize that certain components listed as submitted on the cover sheet may be missing from the file and quickly contact the patent owner for correction. The Office encourages patent owners to submit a cover sheet with a request for supplemental examination. Use of the form PTO/SB/59 as the cover sheet is particularly encouraged.
37 CFR 1.610(c)(1) permits the request to include a cover sheet itemizing each component submitted as part of the request. A "component" may be a certificate of mailing, the request, the patent to be examined, an item of information, and any other separate document that is deposited with or as part of the request. Submission of a cover sheet will assist the Office in the review of the request for compliance with the filing date requirements. For example, the Office may readily recognize that certain components listed as submitted on the cover sheet may be missing from the file and quickly contact the patent owner for correction. The Office encourages patent owners to submit a cover sheet with a request for supplemental examination. Use of the form PTO/SB/59 as the cover sheet is particularly encouraged.
37 CFR 1.610(c)(2) permits the request to include a table of contents for the request. Submission of a table of contents will provide clarity to the record and also help ensure that the request includes all of the required elements in accordance with 37 CFR 1.610(a) and 37 CFR 1.610(b). In addition, a table of contents will also assist in the initial review of the request to determine if the filing date requirements are met and in the examiner’s analysis of the request during the supplemental examination proceeding.
37 CFR 1.610(c)(2) permits the request to include a table of contents for the request. Submission of a table of contents will provide clarity to the record and also help ensure that the request includes all of the required elements in accordance with 37 CFR 1.610(a) and 37 CFR 1.610(b). In addition, a table of contents will also assist in the initial review of the request to determine if the filing date requirements are met and in the examiner’s analysis of the request during the supplemental examination proceeding.
37 CFR 1.610(c)(2) permits the request to include a table of contents for the request. Submission of a table of contents will provide clarity to the record and also help ensure that the request includes all of the required elements in accordance with 37 CFR 1.610(a) and 37 CFR 1.610(b). In addition, a table of contents will also assist in the initial review of the request to determine if the filing date requirements are met and in the examiner’s analysis of the request during the supplemental examination proceeding.
37 CFR 1.610(c)(3) provides that the request may include an explanation of how the claims patentably distinguish over the items of information. This optional discussion should be separately made under a separate subheading such as "Optional Explanation under 37 CFR 1.610(c)(3)." The Office has found that requests that combine the detailed explanation under 37 CFR 1.610(b)(5) with the optional discussion under 37 CFR 1.610(c)(3) typically have a lengthy discussion of why the claims are patentable over the items of information with little to no explanation as to how the item of information is applicable to the claim limitations as required by 37 CFR 1.610(b)(5). By combining the optional discussion with the required detailed explanation, the patent owner runs the risk that the Office will find that the required explanation was not provided, causing the request to be noncompliant, and the loss of the date of the original deposit of the request as the filing date. See MPEP § 2812.02.
37 CFR 1.610(c)(3) provides that the request may include an explanation of how the claims patentably distinguish over the items of information. This optional discussion should be separately made under a separate subheading such as "Optional Explanation under 37 CFR 1.610(c)(3)." The Office has found that requests that combine the detailed explanation under 37 CFR 1.610(b)(5) with the optional discussion under 37 CFR 1.610(c)(3) typically have a lengthy discussion of why the claims are patentable over the items of information with little to no explanation as to how the item of information is applicable to the claim limitations as required by 37 CFR 1.610(b)(5). By combining the optional discussion with the required detailed explanation, the patent owner runs the risk that the Office will find that the required explanation was not provided, causing the request to be noncompliant, and the loss of the date of the original deposit of the request as the filing date. See MPEP § 2812.02.
An application data sheet (ADS) under 37 CFR 1.76 cannot be submitted in a supplemental examination proceeding since a supplemental examination proceeding is not an "application."
Certificate of Mailing
37 CFR 1.610(c)(1) permits the request to include a cover sheet itemizing each component submitted as part of the request. A "component" may be a certificate of mailing, the request, the patent to be examined, an item of information, and any other separate document that is deposited with or as part of the request. Submission of a cover sheet will assist the Office in the review of the request for compliance with the filing date requirements. For example, the Office may readily recognize that certain components listed as submitted on the cover sheet may be missing from the file and quickly contact the patent owner for correction. The Office encourages patent owners to submit a cover sheet with a request for supplemental examination. Use of the form PTO/SB/59 as the cover sheet is particularly encouraged.
37 CFR 1.610(c)(1) permits the request to include a cover sheet itemizing each component submitted as part of the request. A "component" may be a certificate of mailing, the request, the patent to be examined, an item of information, and any other separate document that is deposited with or as part of the request. Submission of a cover sheet will assist the Office in the review of the request for compliance with the filing date requirements. For example, the Office may readily recognize that certain components listed as submitted on the cover sheet may be missing from the file and quickly contact the patent owner for correction. The Office encourages patent owners to submit a cover sheet with a request for supplemental examination. Use of the form PTO/SB/59 as the cover sheet is particularly encouraged.
37 CFR 1.610(c)(1) permits the request to include a cover sheet itemizing each component submitted as part of the request. A "component" may be a certificate of mailing, the request, the patent to be examined, an item of information, and any other separate document that is deposited with or as part of the request. Submission of a cover sheet will assist the Office in the review of the request for compliance with the filing date requirements. For example, the Office may readily recognize that certain components listed as submitted on the cover sheet may be missing from the file and quickly contact the patent owner for correction. The Office encourages patent owners to submit a cover sheet with a request for supplemental examination. Use of the form PTO/SB/59 as the cover sheet is particularly encouraged.
Denial – No SNQ Raised
37 CFR 1.610(c)(4) provides that the request may include an explanation why each item of information does or does not raise a SNQ. Patent owners are encouraged to submit this explanation, which will assist the Office in analyzing the request. If the patent owner does submit this optional content, particularly where the patent owner explains why each item of information does not raise a SNQ, the Office strongly recommends that this optional discussion be separately presented, in the request, from the explanation required by 37 CFR 1.610(b)(5), under a subheading such as "Optional Explanation under 37 CFR 1.610(c)(4) ". See MPEP §§ 2811.01 and 2812.02.
37 CFR 1.610(c)(4) provides that the request may include an explanation why each item of information does or does not raise a SNQ. Patent owners are encouraged to submit this explanation, which will assist the Office in analyzing the request. If the patent owner does submit this optional content, particularly where the patent owner explains why each item of information does not raise a SNQ, the Office strongly recommends that this optional discussion be separately presented, in the request, from the explanation required by 37 CFR 1.610(b)(5), under a subheading such as "Optional Explanation under 37 CFR 1.610(c)(4) ". See MPEP §§ 2811.01 and 2812.02.
37 CFR 1.610(c)(4) provides that the request may include an explanation why each item of information does or does not raise a SNQ. Patent owners are encouraged to submit this explanation, which will assist the Office in analyzing the request. If the patent owner does submit this optional content, particularly where the patent owner explains why each item of information does not raise a SNQ, the Office strongly recommends that this optional discussion be separately presented, in the request, from the explanation required by 37 CFR 1.610(b)(5), under a subheading such as "Optional Explanation under 37 CFR 1.610(c)(4) ". See MPEP §§ 2811.01 and 2812.02.
Types of Forms
37 CFR 1.610(c)(1) permits the request to include a cover sheet itemizing each component submitted as part of the request. A "component" may be a certificate of mailing, the request, the patent to be examined, an item of information, and any other separate document that is deposited with or as part of the request. Submission of a cover sheet will assist the Office in the review of the request for compliance with the filing date requirements. For example, the Office may readily recognize that certain components listed as submitted on the cover sheet may be missing from the file and quickly contact the patent owner for correction. The Office encourages patent owners to submit a cover sheet with a request for supplemental examination. Use of the form PTO/SB/59 as the cover sheet is particularly encouraged.
Supplemental Examination Request
37 CFR 1.610(c)(3) provides that the request may include an explanation of how the claims patentably distinguish over the items of information. This optional discussion should be separately made under a separate subheading such as "Optional Explanation under 37 CFR 1.610(c)(3)." The Office has found that requests that combine the detailed explanation under 37 CFR 1.610(b)(5) with the optional discussion under 37 CFR 1.610(c)(3) typically have a lengthy discussion of why the claims are patentable over the items of information with little to no explanation as to how the item of information is applicable to the claim limitations as required by 37 CFR 1.610(b)(5). By combining the optional discussion with the required detailed explanation, the patent owner runs the risk that the Office will find that the required explanation was not provided, causing the request to be noncompliant, and the loss of the date of the original deposit of the request as the filing date. See MPEP § 2812.02.
Request Content Requirements
37 CFR 1.610(c)(3) provides that the request may include an explanation of how the claims patentably distinguish over the items of information. This optional discussion should be separately made under a separate subheading such as "Optional Explanation under 37 CFR 1.610(c)(3)." The Office has found that requests that combine the detailed explanation under 37 CFR 1.610(b)(5) with the optional discussion under 37 CFR 1.610(c)(3) typically have a lengthy discussion of why the claims are patentable over the items of information with little to no explanation as to how the item of information is applicable to the claim limitations as required by 37 CFR 1.610(b)(5). By combining the optional discussion with the required detailed explanation, the patent owner runs the risk that the Office will find that the required explanation was not provided, causing the request to be noncompliant, and the loss of the date of the original deposit of the request as the filing date. See MPEP § 2812.02.
Citations
| Primary topic | Citation |
|---|---|
| Supplemental Examination | 37 CFR § 1.610(a) |
| Supplemental Examination | 37 CFR § 1.610(b) |
| Denial – No SNQ Raised Request Content Requirements Supplemental Examination Supplemental Examination Request | 37 CFR § 1.610(b)(5) |
| Supplemental Examination | 37 CFR § 1.610(c) |
| Certificate of Mailing Supplemental Examination Types of Forms | 37 CFR § 1.610(c)(1) |
| Supplemental Examination | 37 CFR § 1.610(c)(2) |
| Request Content Requirements Supplemental Examination Supplemental Examination Request | 37 CFR § 1.610(c)(3) |
| Denial – No SNQ Raised | 37 CFR § 1.610(c)(4) |
| Supplemental Examination | 37 CFR § 1.76 |
| Denial – No SNQ Raised | MPEP § 2811.01 |
| Request Content Requirements Supplemental Examination Supplemental Examination Request | MPEP § 2812.02 |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2811.02 — Optional Content
Source: USPTO2811.02 Optional Content [R-11.2013]
37 CFR 1.610 Content of request for supplemental examination.
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- (c) The request may also include:
- (1) A cover sheet itemizing each component submitted as part of the request;
- (2) A table of contents for the request;
- (3) An explanation of how the claims patentably distinguish over the items of information; and
- (4) An explanation of why each item of information submitted with the request does or does not raise a substantial new question of patentability.
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37 CFR 1.610(c) provides that the request may optionally include the following enumerated elements:
I. A COVER SHEET37 CFR 1.610(c)(1) permits the request to include a cover sheet itemizing each component submitted as part of the request. A “component” may be a certificate of mailing, the request, the patent to be examined, an item of information, and any other separate document that is deposited with or as part of the request. Submission of a cover sheet will assist the Office in the review of the request for compliance with the filing date requirements. For example, the Office may readily recognize that certain components listed as submitted on the cover sheet may be missing from the file and quickly contact the patent owner for correction. The Office encourages patent owners to submit a cover sheet with a request for supplemental examination. Use of the form PTO/SB/59 as the cover sheet is particularly encouraged.
II. A TABLE OF CONTENTS37 CFR 1.610(c)(2) permits the request to include a table of contents for the request. Submission of a table of contents will provide clarity to the record and also help ensure that the request includes all of the required elements in accordance with 37 CFR 1.610(a) and 37 CFR 1.610(b). In addition, a table of contents will also assist in the initial review of the request to determine if the filing date requirements are met and in the examiner’s analysis of the request during the supplemental examination proceeding.
III. AN EXPLANATION OF HOW THE CLAIMS PATENTABLY DISTINGUISH OVER THE ITEMS OF INFORMATION37 CFR 1.610(c)(3) provides that the request may include an explanation of how the claims patentably distinguish over the items of information. This optional discussion should be separately made under a separate subheading such as “Optional Explanation under 37 CFR 1.610(c)(3).” The Office has found that requests that combine the detailed explanation under 37 CFR 1.610(b)(5) with the optional discussion under 37 CFR 1.610(c)(3) typically have a lengthy discussion of why the claims are patentable over the items of information with little to no explanation as to how the item of information is applicable to the claim limitations as required by 37 CFR 1.610(b)(5). By combining the optional discussion with the required detailed explanation, the patent owner runs the risk that the Office will find that the required explanation was not provided, causing the request to be noncompliant, and the loss of the date of the original deposit of the request as the filing date. See MPEP § 2812.02.
IV. AN EXPLANATION OF WHY EACH ITEM OF INFORMATION SUBMITTED WITH THE REQUEST DOES OR DOES NOT RAISE A SUBSTANTIAL NEW QUESTION OF PATENTABILITY37 CFR 1.610(c)(4) provides that the request may include an explanation why each item of information does or does not raise a SNQ. Patent owners are encouraged to submit this explanation, which will assist the Office in analyzing the request. If the patent owner does submit this optional content, particularly where the patent owner explains why each item of information does not raise a SNQ, the Office strongly recommends that this optional discussion be separately presented, in the request, from the explanation required by 37 CFR 1.610(b)(5), under a subheading such as “Optional Explanation under 37 CFR 1.610(c)(4)” . See MPEP §§ 2811.01 and 2812.02.
An application data sheet (ADS) under 37 CFR 1.76 cannot be submitted in a supplemental examination proceeding since a supplemental examination proceeding is not an “application.”