Can the examiner consider information beyond what the patent owner specified for each claim?
Yes, the examiner has discretion to consider information beyond what the patent owner specified for each claim in a supplemental examination request. According to MPEP 2816.01: “The examiner, however, has the discretion to determine whether any of the items of information properly submitted with the request raises a SNQ affecting any of the claims for…
Read MoreHow does ex parte reexamination differ when ordered after supplemental examination?
Ex parte reexamination ordered after supplemental examination follows most existing rules for ex parte reexamination, but with two key differences. As outlined in MPEP 2818: “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…
Read MoreWhat are the key differences between ex parte reexamination ordered under 35 U.S.C. 257 and 35 U.S.C. 302?
There are several key differences between ex parte reexamination ordered under 35 U.S.C. 257 (as a result of supplemental examination) and 35 U.S.C. 302: Patent owner’s statement rights Timing of patent amendments Basis for reexamination Scope of issues considered Definition of material information According to MPEP 2823: “Ex parte reexamination ordered under 35 U.S.C. 257,…
Read MoreWhen is an ex parte reexamination ordered after supplemental examination?
An ex parte reexamination is ordered after supplemental examination when the supplemental examination certificate indicates that a Substantial New Question of patentability (SNQ) is raised. According to MPEP 2818: “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.” This reexamination…
Read MoreCan a supplemental examination request be submitted electronically?
Yes, a supplemental examination request can be submitted electronically. The MPEP 2812 states: “A request for supplemental examination may be submitted via the USPTO’s electronic filing system (EFS-Web).” Electronic submission offers several advantages: Faster processing Immediate confirmation of receipt Reduced risk of physical document loss However, it’s important to note that all requirements for the…
Read MoreCan I file papers for a supplemental examination proceeding electronically?
Yes, patent owners can submit papers in a supplemental examination proceeding electronically via the USPTO’s Web-based electronic filing system (EFS-Web). The MPEP encourages electronic submission of requests for supplemental examination and subsequent correspondence. To file electronically: For a new supplemental examination request, select “New application/proceeding” in EFS-Web, then choose “Supplemental Examination.” For papers in an…
Read MoreCan supplemental examination papers be filed electronically?
Yes, supplemental examination papers can be filed electronically. According to MPEP 2807: “Papers filed in a supplemental examination proceeding may be filed electronically via EFS-Web. See MPEP § 2806, subsection I.” This means that the USPTO allows for electronic submission of supplemental examination papers through their Electronic Filing System-Web (EFS-Web). For more detailed information on…
Read MoreHow does the duty of disclosure differ in supplemental examination?
The duty of disclosure in supplemental examination is similar to reexamination proceedings, but with some key differences. According to MPEP 2014: “In supplemental examination, the duty of disclosure applies to the patent owner and individuals associated with the patent owner as defined in 37 CFR 1.555. However, as provided by 37 CFR 1.625(d)(4), information material…
Read MoreWhat types of documents are processed during supplemental examination?
The MPEP 2812 provides information on the types of documents processed during supplemental examination: “All processing of requests for supplemental examination and of other papers filed in a supplemental examination proceeding and in any resulting ex parte reexamination proceeding will be performed by the staff of the Central Reexamination Unit.” Based on this statement, the…
Read MoreWhat is the purpose of the document size fees in supplemental examination?
Document size fees are part of the required fees for filing a supplemental examination request. These fees are set forth in 37 CFR 1.20(k)(3) and are applicable based on the size of the documents submitted with the request. The purpose of document size fees is to compensate for the additional resources required to process and…
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