Can a patent owner submit audio or video files for supplemental examination?
While the MPEP 2809 does not explicitly mention audio or video files as items of information for supplemental examination, it does provide a broad definition that could potentially include such media. The MPEP states: “An “item of information” includes any information which the patent owner believes to be relevant to the patent.” However, submitting audio…
Read MoreHow can an attorney or agent act on behalf of a patent owner in supplemental examination?
An attorney or agent can act on behalf of a patent owner in supplemental examination in two ways: Under a power of attorney: According to MPEP 2804, “In order to act under a power of attorney from a patent owner, an attorney or agent must be provided with a power of attorney by the patent…
Read MoreCan an Application Data Sheet (ADS) be submitted in a supplemental examination proceeding?
No, an Application Data Sheet (ADS) cannot be submitted in a supplemental examination proceeding. MPEP 2813 explicitly states: “An application data sheet (ADS) under 37 CFR 1.76 cannot be submitted in a supplemental examination proceeding since a supplemental examination proceeding is not an ‘application.’“ This clarification is important because while ADSs are commonly used in…
Read MoreHow does the term “applicant” apply in reexamination under 35 U.S.C. 257?
In ex parte reexamination ordered under 35 U.S.C. 257, the term “applicant” is interpreted differently than in standard patent applications. According to MPEP 2818.01: “Any reference to ‘applicant’ in 37 CFR 1.56(b) will be read as ‘patent owner’ in the context of a supplemental examination proceeding and any resulting ex parte reexamination proceeding under 35…
Read MoreCan a supplemental examination request be made anonymously?
No, a supplemental examination request cannot be made anonymously. The MPEP 2816 clearly states: “A request for supplemental examination may be filed by the patent owner. A supplemental examination request may not be filed by a third party.” This means that only the patent owner can file a request for supplemental examination, and they must…
Read MoreCan amendments be submitted with a supplemental examination request?
No, amendments cannot be submitted with a supplemental examination request. MPEP 2809 clearly states: “No amendment may be filed in a supplemental examination proceeding. 37 CFR 1.620(f). Any paper containing an amendment that is filed in a supplemental examination proceeding is an unauthorized paper, and will be expunged from the file if inadvertently entered.” However,…
Read MoreWhen can amendments be filed in ex parte reexamination under 35 U.S.C. 257?
In ex parte reexamination ordered under 35 U.S.C. 257, amendments cannot be filed immediately. According to MPEP 2818.01: “No amendment in an ex parte reexamination proceeding ordered under 35 U.S.C. 257 may be filed until after the mailing of a first Office action on the merits.“ This restriction ensures that the initial examination is based…
Read MoreAre amendments or new claims considered during supplemental examination?
No, amendments and new claims presented in copending post-patent Office proceedings are not considered during the supplemental examination process. According to MPEP 2816.01: “Amendments and/or new claims presented in any copending post-patent Office proceeding for the patent to be examined will not be considered nor commented upon when deciding a request for supplemental examination.” However,…
Read MoreWhat papers are allowed to be filed after a request for supplemental examination?
According to MPEP 2813, after filing a request for supplemental examination, only two types of papers are generally allowed: A corrected request filed in response to a notice of noncompliant supplemental examination request A notice of a prior or concurrent post-patent Office proceeding pursuant to 37 CFR 1.620(d) The MPEP states: “After filing a request…
Read MoreHow do I address paper submissions for supplemental examination proceedings?
Paper submissions for supplemental examination proceedings should be addressed differently depending on the delivery method: For mail delivered by the United States Postal Service (USPS):Mail Stop Supplemental ExaminationCentral Reexamination UnitCommissioner for PatentsP.O. Box 1450Alexandria, VA 22313-1450 For hand-carried or other delivery services (e.g., FedEx, UPS, DHL):United States Patent and Trademark OfficeCustomer Service WindowMail Stop Supplemental…
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