What is the correct address for correspondence in supplemental examination proceedings?
The correct address for correspondence in supplemental examination proceedings is the correspondence address of record for the patent for which supplemental examination is requested. This is consistent with reexamination practice. As stated in the MPEP: “The correspondence address of record for the patent for which supplemental examination is requested is the correct address for all…
Read MoreWhat is the control number format for supplemental examination proceedings?
Supplemental examination proceedings are assigned a “series 96” control number. The format for these control numbers is 96/999,999. This unique numbering system helps distinguish supplemental examination proceedings from other types of patent-related proceedings. The MPEP states: “Supplemental examination proceedings will be assigned a “series 96” control number, such as, for example, 96/999,999.” (MPEP 2806) It’s…
Read MoreWhat claims are considered in a supplemental examination determination?
In a supplemental examination, the Office considers the claims of the patent that are in effect at the time of the determination. Specifically, “The claims of the patent in effect at the time of the determination will be the basis for deciding whether ‘a substantial new question of patentability’ (SNQ) is present.” (MPEP 2816.01) However,…
Read MoreWhat is the significance of a “substantial new question of patentability” in supplemental examination?
A “substantial new question of patentability” (SNQ) is crucial in supplemental examination as it determines whether further action is necessary. The MPEP 2816.03 states: “The determination must identify each item of information that raises a substantial new question of patentability.” The significance of an SNQ in supplemental examination includes: It indicates that the submitted information…
Read MoreHow should a corrected request for supplemental examination be submitted to the USPTO?
A corrected request for supplemental examination can be submitted electronically or in paper form. The MPEP states, “The corrected request may be submitted using the Office’s Web-based electronic filing system (EFS-Web) at www.uspto.gov, or, if filed in paper form, may be addressed to the Central Reexamination Unit (CRU), Attn: ‘Mail Stop Supplemental Examination’.” It’s important…
Read MoreWhat happens if a substantial new question of patentability (SNQ) is found during supplemental examination?
If a substantial new question of patentability (SNQ) is found during supplemental examination, the following occurs: Reexamination will be ordered under 35 U.S.C. 257. The Office may, at its discretion, reexamine claims other than those for which supplemental examination was originally requested. As stated in MPEP 2816.01: “If the examiner determines that a SNQ affecting…
Read MoreWhat is the scope of the USPTO’s determination in a supplemental examination request?
The scope of the USPTO’s determination in a supplemental examination request is generally limited to the specific items of information and claims identified in the request. According to MPEP 2816: “The determination of whether such an item of information raises a SNQ will generally be limited to a review of the item(s) of information identified…
Read MoreWhat information should be included in the notification of other post-patent proceedings?
The notification of other post-patent proceedings during supplemental examination should include specific information as outlined in MPEP 2820: The type of proceeding (e.g., ex parte or inter partes reexamination, reissue, supplemental examination, post-grant review, inter partes review, or covered business method patent review) An identifying number, such as a control number or reissue application number…
Read MoreWhat documents must be included with a supplemental examination request?
According to MPEP 2811, the following documents must be included with a supplemental examination request: A copy of the patent for which supplemental examination is requested, including the specification and claims in double column format A copy of any disclaimer or certificate issued for the patent Copies of each item of information listed in the…
Read MoreWhat is the “Reasons Document” in Supplemental Examination?
The “Reasons Document,” officially called the “Reasons for Substantial New Question of Patentability Determination,” is a document that accompanies the Supplemental Examination Certificate. It provides a detailed explanation of why each item of information submitted in a supplemental examination request does or does not raise a substantial new question of patentability (SNQ). The MPEP states:…
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