How does supplemental examination differ from ex parte reexamination?

Supplemental examination differs from ex parte reexamination in several key aspects: Information scope: Supplemental examination allows consideration of any information relevant to the patent, while ex parte reexamination is limited to patents and printed publications. Grounds of patentability: Supplemental examination can involve any ground of patentability, including subject matter eligibility, novelty, obviousness, written description, enablement,…

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What is supplemental examination and how does it relate to ex parte reexamination?

Supplemental examination is a proceeding introduced by the America Invents Act (AIA) that allows patent owners to request the USPTO to consider, reconsider, or correct information relevant to their patent. If a substantial new question of patentability is raised, an ex parte reexamination will be ordered. The MPEP explains: “Section 12 of the AIA added…

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What is the relationship between supplemental examination and ex parte reexamination?

Supplemental examination and ex parte reexamination are closely linked processes. The MPEP 2816.03 states: “If the determination concludes 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.” This means: Supplemental examination is…

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What is the correct address for correspondence in supplemental examination proceedings?

The correct address for correspondence in supplemental examination proceedings is the correspondence address of record for the patent for which supplemental examination is requested. This is consistent with reexamination practice. As stated in the MPEP: “The correspondence address of record for the patent for which supplemental examination is requested is the correct address for all…

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What is the control number format for supplemental examination proceedings?

Supplemental examination proceedings are assigned a “series 96” control number. The format for these control numbers is 96/999,999. This unique numbering system helps distinguish supplemental examination proceedings from other types of patent-related proceedings. The MPEP states: “Supplemental examination proceedings will be assigned a “series 96” control number, such as, for example, 96/999,999.” (MPEP 2806) It’s…

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What happens after a supplemental examination is concluded?

After a supplemental examination is concluded, the Office electronically publishes a supplemental examination certificate. As stated in MPEP 2818, “Supplemental examination is concluded by the electronic publication of the certificate.” The subsequent procedure depends on whether a Substantial New Question of patentability (SNQ) is raised: If an SNQ is raised, an ex parte reexamination is…

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