How can a patent owner correct a noncompliant supplemental examination request?
If a patent owner receives a Notice of Noncompliant Supplemental Examination Request, they have the opportunity to correct the request. The MPEP outlines the process: If the patent owner timely files a corrected request in response to the notice that properly addresses all of the defects set forth in the notice and that otherwise complies…
Read MoreHow should a patent owner handle corrections of factual information in a supplemental examination request?
When a patent owner wishes to correct factual information in a supplemental examination request, such as foreign priority or domestic benefit claims, they should: Include the item of information related to the correction of factual information. Provide one or more additional items of information that show how the patentability of the claims depends on the…
Read MoreWhat is a corrected request in supplemental examination?
A corrected request in supplemental examination is the patent owner’s one opportunity to address defects in their original supplemental examination request. As stated in the MPEP, “The patent owner has one opportunity to file a corrected request in response to a Notice of Noncompliant Supplemental Examination Request (37 CFR 1.610(d)).” This corrected request must address…
Read MoreWhat should be included in a corrected request for supplemental examination?
A corrected request for supplemental examination must be comprehensive and include all necessary components. The MPEP states, “The corrected request must include all of the components that the patent owner intends to include as part of the request, such as, for example, the request itself, copies of each of the items of information, a copy…
Read MoreWhat are the restrictions on the content of the notification for other post-patent proceedings?
The MPEP 2820 outlines specific restrictions on the content of notifications for other post-patent proceedings during supplemental examination: The notice must be limited to identification of the post-patent Office proceeding. It must not include any discussion of the issues in the current supplemental examination or the identified post-patent Office proceeding(s). The notice must not include…
Read MoreWhat information is included in a Notice of Noncompliant Supplemental Examination Request?
A Notice of Noncompliant Supplemental Examination Request contains specific information to help the patent owner understand and address the issues. According to the MPEP: The notice will specify the defects found in the request, and provide a specified time, generally 15 days, within which a corrected request may be timely filed. If further explanation is…
Read MoreWhat happens if a patent owner doesn’t respond to a Notice of Noncompliant Supplemental Examination Request?
If a patent owner fails to respond to a Notice of Noncompliant Supplemental Examination Request within the specified time, there are consequences. The MPEP states: If the patent owner does not timely comply with the notice, the request for supplemental examination will not be granted a filing date and the fee for reexamination as set…
Read MoreWhat happens if the formatting requirements for supplemental examination are not met?
If the formatting requirements for supplemental examination are not met, the request will be considered defective. According to MPEP 2807: “If the requirements of 37 CFR 1.615 are not satisfied, the request will be considered to be defective. See 37 CFR 1.610(d) and MPEP § 2812.01.” This means that failure to comply with the formatting…
Read MoreWhat happens if a corrected supplemental examination request is not filed in time?
What happens if a corrected supplemental examination request is not filed in time? If a corrected supplemental examination request is not filed within the specified time period, several consequences follow: The request will not be granted a filing date. The request may be treated as a nonconforming request. The fee for reexamination may be refunded.…
Read MoreWhat happens if a patent owner submits an improper notification during supplemental examination?
If a patent owner submits an improper notification during supplemental examination, the USPTO will treat it as an unauthorized paper. According to MPEP 2820: “If the paper containing the notice is not so limited, the paper will be held to be improper, and will be processed as an unauthorized paper pursuant to 37 CFR 1.620(c).“…
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