MPEP § 2818 — Procedure after Conclusion of Supplemental Examination (Annotated Rules)
§2818 Procedure after Conclusion of Supplemental Examination
This page consolidates and annotates all enforceable requirements under MPEP § 2818, 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.
Procedure after Conclusion of Supplemental Examination
This section addresses Procedure after Conclusion of Supplemental Examination.
Key Rules
Reexamination Certificate
If the supplemental examination certificate indicates that a SNQ is raised, ex parte reexamination of the patent will be ordered under 35 U.S.C. 257. See 37 CFR 1.625(b). An ex parte reexamination ordered as a result of a supplemental examination proceeding will be conducted in accordance with the existing rules governing ex parte reexamination, except that: (i) the patent owner will not have the right to file a patent owner statement; and (ii) the Office will address each SNQ without regard to whether it is raised by a patent or printed publication. See 37 CFR 1.625(d) and MPEP § 2818.01.
If the supplemental examination certificate indicates that no SNQ is raised, ex parte reexamination will not be ordered under 35 U.S.C. 257. In this case, the electronically issued supplemental examination certificate will be published in due course by the Office’s patent publication process as an attachment to the patent. The fee for reexamination ordered as a result of supplemental examination, as set forth in 37 CFR 1.20(k)(2), will be refunded in accordance with 37 CFR 1.610(d). See MPEP § 2818.02.
If the supplemental examination certificate indicates that no SNQ is raised, ex parte reexamination will not be ordered under 35 U.S.C. 257. In this case, the electronically issued supplemental examination certificate will be published in due course by the Office’s patent publication process as an attachment to the patent. The fee for reexamination ordered as a result of supplemental examination, as set forth in 37 CFR 1.20(k)(2), will be refunded in accordance with 37 CFR 1.610(d). See MPEP § 2818.02.
Reexamination Order
If the supplemental examination certificate indicates that a SNQ is raised, ex parte reexamination of the patent will be ordered under 35 U.S.C. 257. See 37 CFR 1.625(b). An ex parte reexamination ordered as a result of a supplemental examination proceeding will be conducted in accordance with the existing rules governing ex parte reexamination, except that: (i) the patent owner will not have the right to file a patent owner statement; and (ii) the Office will address each SNQ without regard to whether it is raised by a patent or printed publication. See 37 CFR 1.625(d) and MPEP § 2818.01.
If the supplemental examination certificate indicates that no SNQ is raised, ex parte reexamination will not be ordered under 35 U.S.C. 257. In this case, the electronically issued supplemental examination certificate will be published in due course by the Office’s patent publication process as an attachment to the patent. The fee for reexamination ordered as a result of supplemental examination, as set forth in 37 CFR 1.20(k)(2), will be refunded in accordance with 37 CFR 1.610(d). See MPEP § 2818.02.
Citations
| Primary topic | Citation |
|---|---|
| Reexamination Certificate Reexamination Order | 35 U.S.C. § 257 |
| Reexamination Certificate Reexamination Order | 37 CFR § 1.20(k)(2) |
| Reexamination Certificate Reexamination Order | 37 CFR § 1.610(d) |
| Reexamination Certificate Reexamination Order | 37 CFR § 1.625(b) |
| Reexamination Certificate Reexamination Order | 37 CFR § 1.625(d) |
| Reexamination Certificate Reexamination Order | MPEP § 2818.01 |
| Reexamination Certificate Reexamination Order | MPEP § 2818.02 |
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 § 2818 — Procedure after Conclusion of Supplemental Examination
Source: USPTO2818 Procedure after Conclusion of Supplemental Examination [R-11.2013]
37 CFR 1.625 Conclusion of supplemental examination; publication of supplemental examination certificate; procedure after conclusion.
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- (b) If the supplemental examination certificate states that a substantial new question of patentability is raised by one or more items of information in the request, ex parte reexamination of the patent will be ordered under 35 U.S.C. 257. Upon the conclusion of the ex parte reexamination proceeding, an ex parte reexamination certificate, which will include a statement specifying that ex parte reexamination was ordered under 35 U.S.C. 257, will be published. The electronically issued supplemental examination certificate will remain as part of the public record of the patent.
- (c) If the supplemental examination certificate indicates that no substantial new question of patentability is raised by any of the items of information in the request, and ex parte reexamination is not ordered under 35 U.S.C. 257, the electronically issued supplemental examination certificate will be published in due course. The fee for reexamination ordered as a result of supplemental examination, as set forth in § 1.20(k)(2), will be refunded in accordance with 1.26(c).
- (d) Any ex parte reexamination
ordered under 35 U.S.C. 257 will be
conducted in accordance with §§ 1.530 through
1.570, which govern ex parte
reexamination, except that:
- (1) The patent owner will not have the right to file a statement pursuant to § 1.530, and the order will not set a time period within which to file such a statement;
- (2) Reexamination of any claim of the patent may be conducted on the basis of any item of information as set forth in § 1.605, and is not limited to patents and printed publications or to subject matter that has been added or deleted during the reexamination proceeding, notwithstanding § 1.552(a);
- (3) Issues in addition to those raised by patents and printed publications, and by subject matter added or deleted during a reexamination proceeding, may be considered and resolved, notwithstanding § 1.552(c); and
- (4) Information material to patentability will be defined by § 1.56(b), notwithstanding § 1.555(b).
Supplemental examination is concluded by the electronic publication of the certificate. The Office procedure after publication of the certificate depends on whether the Office determines that a SNQ affecting at least one claim of the patent is raised in the request.
If the supplemental examination certificate indicates that a SNQ is raised, ex parte reexamination of the patent will be ordered under 35 U.S.C. 257. See 37 CFR 1.625(b). An ex parte reexamination ordered as a result of a supplemental examination proceeding will be conducted in accordance with the existing rules governing ex parte reexamination, except that: (i) the patent owner will not have the right to file a patent owner statement; and (ii) the Office will address each SNQ without regard to whether it is raised by a patent or printed publication. See 37 CFR 1.625(d) and MPEP § 2818.01.
If the supplemental examination certificate indicates that no SNQ is raised, ex parte reexamination will not be ordered under 35 U.S.C. 257. In this case, the electronically issued supplemental examination certificate will be published in due course by the Office’s patent publication process as an attachment to the patent. The fee for reexamination ordered as a result of supplemental examination, as set forth in 37 CFR 1.20(k)(2), will be refunded in accordance with 37 CFR 1.610(d). See MPEP § 2818.02.