What is the scope of the USPTO’s determination in a supplemental examination?
The MPEP 2815 outlines the scope of the USPTO’s determination in a supplemental examination: “The determination will generally be limited to a review of the item(s) of information identified in the request as applied to the identified claim(s) of the patent. The determination will be based on the claims in effect at the time of…
Read MoreHow does the USPTO explain the basis for each determination in supplemental examination?
The USPTO explains the basis for each determination in supplemental examination by providing a clear rationale for the findings. According to MPEP 2816.03: “The determination should explain the basis for the determination of each issue with respect to each item of information. For example, the determination should explain why each item of information does or…
Read MoreWhere does the USPTO send correspondence regarding supplemental examination?
The USPTO sends correspondence regarding supplemental examination to the official correspondence address of the patent. MPEP 2804 states: “Any correspondence from the Office will be directed to the patent owner at the address indicated in the file of the patent for which supplemental examination is requested, pursuant to 37 CFR 1.33(c), regardless of the address…
Read MoreHow does the USPTO assess the materiality of information in supplemental examination?
The USPTO’s assessment of the materiality of information in supplemental examination is guided by the principles outlined in MPEP 2816.02. Key aspects of this assessment include: Materiality is evaluated in the context of patentability Information is material if it creates a substantial new question of patentability (SNQ) The standard is whether a reasonable examiner would…
Read MoreWhat happens if all required fees are not paid when filing a supplemental examination request?
If all required fees for supplemental examination are not paid at the time of filing the request, the following consequences will occur: The request will be considered defective A filing date will not be granted The processing of the request will be terminated A refund of any fees paid will be made to the patent…
Read MoreWhat happens to unauthorized or improper papers filed in a supplemental examination proceeding?
According to MPEP 2813, unauthorized or improper papers filed in a supplemental examination proceeding are not entered into the official file or considered. If such papers are inadvertently entered, they will be expunged. Specifically, 37 CFR 1.620(c) states: “if an unauthorized or otherwise improper paper is filed in a supplemental examination proceeding, it will not…
Read MoreWhat types of post-patent proceedings should be reported during supplemental examination?
According to MPEP 2820, patent owners should report various types of post-patent proceedings during supplemental examination. These include: Ex parte reexamination Inter partes reexamination Reissue Supplemental examination Post-grant review Inter partes review Covered business method patent review The MPEP states: “The notice is limited to an identification of the post-patent Office proceeding, including the type…
Read MoreWhat types of items can be submitted for supplemental examination?
According to MPEP 2809, a wide range of items can be submitted for supplemental examination, including: Patents Published patent applications Non-patent literature Office actions or other documents from a foreign or domestic application Affidavits or declarations Sales receipts Copies of websites Office actions or official documents from the USPTO The MPEP states: “An “item of…
Read MoreWhat types of information can be considered in a supplemental examination?
Supplemental examination is not limited to patents and printed publications. The MPEP states: “The information presented in a request for supplemental examination is not limited to patents and printed publications, and may include, for example, issues of patentability under 35 U.S.C. 101 and 112.” This means that patent owners can request consideration of a wide…
Read MoreWhat types of information can be submitted for supplemental examination?
In supplemental examination, patent owners can submit a wide range of information for consideration. The MPEP states: “The ‘information’ may include any information that the patent owner believes to be relevant to the patent. For example, the information may include not only a patent or a journal article, but also a sales invoice, or a…
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