How should patent owners handle confidential information in supplemental examination?
When dealing with confidential information in supplemental examination, patent owners must balance the need for disclosure with protecting sensitive data. The MPEP 2809 does not specifically address confidentiality in the context of items of information. However, general USPTO practices for handling confidential information apply: Avoid submitting unnecessary confidential information If confidential information is crucial, consider…
Read MoreWhat is the conclusion of a supplemental examination?
According to MPEP 2817, the conclusion of a supplemental examination is marked by the issuance of a certificate. As stated in the MPEP: “35 U.S.C. 257(a) requires that supplemental examination ‘shall conclude with the issuance of a certificate indicating whether the information presented in the request raises a substantial new question of patentability.’” This certificate…
Read MoreHow can a patent owner change the correspondence address for supplemental examination?
To change the correspondence address for a supplemental examination proceeding, the patent owner must take two steps, as outlined in MPEP 2804: File a change of correspondence address in the file of the patent for which supplemental examination is requested. File a change of correspondence address in the supplemental examination proceeding itself. The MPEP states:…
Read MoreHow can a patent owner change the attorney or agent for correspondence in a supplemental examination?
To change the attorney or agent for correspondence in a supplemental examination, a new power of attorney must be filed in two places: The file of the patent for which supplemental examination is requested The file of the supplemental examination proceeding, or if reexamination is ordered, in the resulting ex parte reexamination proceeding The MPEP…
Read MoreWhat is the role of the Central Reexamination Unit (CRU) in supplemental examination?
The Central Reexamination Unit (CRU) plays a crucial role in the supplemental examination process: The CRU is responsible for determining whether the request for supplemental examination is complete. It reviews the request to ensure compliance with 37 CFR 1.610. The CRU assigns a filing date to compliant requests. For incomplete requests, the CRU issues notices…
Read MoreCan the original examiner of a patent application be assigned to its supplemental examination?
No, the original examiner of a patent application cannot be assigned to its supplemental examination. The MPEP explicitly states that the Supervisory Patent Examiner (SPE) will assign the request to a primary examiner, other than the examiner who originally examined the patent application. This policy ensures a fresh perspective and helps maintain the integrity of…
Read MoreCan I call the USPTO about my supplemental examination request?
Yes, you can call the USPTO about your supplemental examination request, but with limitations. The MPEP clarifies: “A telephone call to the Office to confirm receipt of a request for supplemental examination, or to discuss general procedural questions, is not considered to be an interview for the purposes of this provision.” This means you can…
Read MoreWhat is the basis for ex parte reexamination under 35 U.S.C. 257?
The basis for ex parte reexamination under 35 U.S.C. 257 is broader than that of standard ex parte reexaminations. According to MPEP 2823: “ex parte reexamination of any claim of the patent may be conducted on the basis of any item of information as set forth in 37 CFR 1.605, and is not limited to…
Read MoreWho can sign a submission requesting a change of correspondence address in a supplemental examination?
A submission requesting a change of correspondence address in a supplemental examination can be signed by: All of the patent owners (see MPEP § 2803) The registered attorney or agent of record in the file of the patent under supplemental examination Additionally, for applications filed on or after September 12, 2012, the MPEP states: “If…
Read MoreCan audio or video recordings be submitted as items of information in supplemental examination?
According to MPEP 2809, audio or video recordings cannot be directly submitted as items of information in supplemental examination. The MPEP states: “The Office does not currently have the capability of retaining records in unwritten form. For this reason, any audio or video recording must be submitted in the form of a written transcript in…
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