How should long documents be handled in a supplemental examination request?
When submitting documents as part of a supplemental examination request, special handling is required for lengthy documents. According to MPEP 2811: “For any document submitted as part of the request having a length in excess of 50 pages, a summary of the relevant portions of the document with citations to the particular pages containing the…
Read MoreWhat form is recommended for changing power of attorney or correspondence address in supplemental examination proceedings?
The USPTO strongly recommends using Form PTO/AIA/81B for changing power of attorney or correspondence address in supplemental examination proceedings. The MPEP states: “Patent owners are strongly encouraged to use form PTO/AIA/81B when submitting a power of attorney and/or change of correspondence address in a supplemental examination proceeding or a reexamination proceeding.” This form is specifically…
Read MoreHow does a final federal court decision affect a supplemental examination proceeding?
The effect of a final federal court decision on a supplemental examination proceeding depends on the nature of the decision. According to MPEP 2816: Upholding validity: “A final federal court decision, i.e., after all appeals, which upholds the validity of one or more of the patent claims also has no binding effect on the supplemental…
Read MoreHow do I file papers in an ex parte reexamination resulting from a supplemental examination?
When filing papers in an ex parte reexamination resulting from a supplemental examination, follow these guidelines as per MPEP 2806: Use the USPTO’s Patent Electronic Filing System-Web (EFS-Web) or Patent Center for electronic filing. For paper filings, send documents to: Mail Stop Ex Parte Reexam, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450. Include…
Read MoreWhat fees are associated with supplemental examination?
The USPTO charges fees for supplemental examination, as authorized by statute. The MPEP states: “35 U.S.C. 257(d)(1) provides the Director with authority to establish fees for filing a request for supplemental examination and for considering each item of information submitted with the request.” Additionally, if an ex parte reexamination is ordered as a result of…
Read MoreCan I use facsimile transmission to file a request for supplemental examination?
No, requests for supplemental examination cannot be facsimile-transmitted. This prohibition also applies to corrected requests filed in response to a Notice of Noncompliant Supplemental Examination Request. The MPEP clearly states: “Requests for supplemental examination may not be facsimile-transmitted. This is also true for a corrected request that is filed in response to a Notice ofNoncompliant…
Read MoreWhat is the requirement for explaining the relevance of items of information in a supplemental examination request?
According to MPEP 2811, a supplemental examination request must include a detailed explanation of the relevance and manner of applying each item of information to each claim for which supplemental examination is requested. This requirement is specified in 37 CFR 1.610(b)(5). The MPEP states: “The request must include a separate, detailed explanation of the relevance…
Read MoreCan an exclusive licensee file a request for supplemental examination?
No, an exclusive licensee cannot file a request for supplemental examination. The MPEP 2803 clearly states: “The statute does not authorize the Office to accept a request for supplemental examination from a party who is not the patent owner. For example, a party who merely states that it is an exclusive licensee or that it…
Read MoreWhat role does the examiner’s perspective play in determining a substantial new question of patentability?
The examiner’s perspective plays a crucial role in determining a substantial new question of patentability (SNQ) during supplemental examination. According to MPEP 2816.02: “A substantial new question of patentability is present when it is shown that there is a substantial likelihood that a reasonable examiner would consider the item of information important in deciding whether…
Read MoreWhen should an examiner typically begin reviewing a supplemental examination request?
The MPEP 2815 provides guidance on when an examiner should typically start reviewing a supplemental examination request: “The examiner should take up a request about 6 weeks after the request’s filing date.” This timing allows for initial processing of the request while still providing sufficient time for the examiner to complete the review within the…
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