What ownership documentation is required for a supplemental examination request?
When filing a request for supplemental examination, the patent owner must provide specific ownership documentation. According to MPEP 2803: “A request for supplemental examination must include an identification of the owner(s) of the entire right, title, and interest in the patent requested to be examined, and a submission by the patent owner in compliance with…
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 MoreHow is an ex parte reexamination ordered under 35 U.S.C. 257?
An ex parte reexamination under 35 U.S.C. 257 is ordered following a supplemental examination proceeding that finds a substantial new question of patentability. The process is as follows: A supplemental examination certificate is issued with reasons for the substantial new question of patentability. The examiner prepares an order for ex parte reexamination. The order may…
Read MoreWhat happens if a request for supplemental examination is found noncompliant?
What happens if a request for supplemental examination is found noncompliant? If a request for supplemental examination is found to be noncompliant, the following process occurs: The Office will notify the patent owner of the reasons for noncompliance. The patent owner is given a single opportunity to correct the noncompliance. A corrected request must be…
Read MoreHow are non-English documents handled in supplemental examination?
Non-English documents can be submitted for supplemental examination, but they must be accompanied by an English language translation. The MPEP 2809 provides specific guidance on this matter: “If an item of information is not in the English language, both the item and a translation of the item must be submitted. The translation may be a…
Read MoreWhat happens if no substantial new question of patentability is found in a supplemental examination?
If the USPTO determines that no substantial new question of patentability (SNQ) is raised by the items of information in a supplemental examination request, the following occurs: The Office will issue a supplemental examination certificate stating that no SNQ is raised. No ex parte reexamination will be ordered. The supplemental examination proceeding will be concluded.…
Read MoreWhat happens if no Substantial New Question of patentability is raised in supplemental examination?
If the supplemental examination certificate indicates that no Substantial New Question of patentability (SNQ) is raised, the procedure is as follows: Ex parte reexamination will not be ordered under 35 U.S.C. 257. The supplemental examination certificate will be published as an attachment to the patent. The fee for reexamination will be refunded. As stated in…
Read MoreHow are supplemental examination requests processed if multiple requests are filed for the same patent?
When multiple requests for supplemental examination are filed for the same patent, the USPTO follows a specific procedure: Requests are processed in the order they are received. Each request must be complete and comply with 37 CFR 1.610 to be accorded a filing date. The Office will generally process, examine, and conclude a given supplemental…
Read MoreCan supplemental examination proceedings be merged with other proceedings?
Generally, the USPTO does not merge supplemental examination proceedings with other proceedings. The MPEP 2821 states: “As a general rule, the Office will not merge a supplemental examination proceeding with any other supplemental examination proceeding.“ However, the Office reserves the right to merge or consolidate proceedings as circumstances warrant. The decision to merge is typically…
Read MoreHow is the material to patentability standard applied in reexamination under 35 U.S.C. 257?
In reexamination ordered under 35 U.S.C. 257, the material to patentability standard is defined by 37 CFR 1.56, which is the same standard used in patent application examination. This differs from standard ex parte reexamination under 35 U.S.C. 302, which uses the standard in 37 CFR 1.555(b). As stated in MPEP 2818.01: “The material to…
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