Can a patent owner rely on a third party’s paper for the detailed explanation in a supplemental examination request?
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).”…
Read MoreWhat are the recommended practices for organizing a detailed explanation in a supplemental examination request?
The MPEP recommends the following practices for organizing a detailed explanation in a supplemental examination request: Use headings and subheadings to ensure clarity. Identify each item of information and which claims are being discussed under separate headings. Use subheadings for each independent claim and its associated dependent claims. Provide clear statements indicating which claims are…
Read MoreWhat is required in a detailed explanation for a supplemental examination request?
A detailed explanation for a supplemental examination request must include: An explanation of how each item of information may be applied to the claims for which supplemental examination is requested. For each claim, either what the item of information teaches or which teachings may be important for determining patentability. Citations to specific portions or figures…
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