What is the purpose of supplemental examination?

Supplemental examination is a process in patent law that allows patent owners to request the United States Patent and Trademark Office (USPTO) to consider, reconsider, or correct information believed to be relevant to their patent. This process is primarily used to address potential issues of inequitable conduct or other patentability concerns that may have arisen…

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What happens if a proper corrected request is timely filed for supplemental examination?

When a proper corrected request is timely filed for supplemental examination, it establishes the filing date for the supplemental examination request. The MPEP states, “If a proper corrected request is timely filed, the filing date of the supplemental examination request will be the receipt date of the corrected request. The Office will mail a Notice…

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What procedures are followed when transferring supplemental examination proceedings?

When transferring supplemental examination proceedings, the USPTO generally follows the same procedures established for transferring reexamination proceedings. The MPEP states, Although the number of supplemental examination requests which must be transferred to another examiner should be very small, the procedures established for transferring reexamination proceedings will be generally followed when transferring supplemental examination proceedings. For…

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How are petitions handled in a supplemental examination proceeding?

MPEP 2813 addresses the handling of petitions in supplemental examination proceedings. According to the guidelines: “37 CFR 1.620(b) provides that the Office may hold in abeyance an action on any petition or other paper filed in a supplemental examination proceeding until after the proceeding is concluded by the electronic issuance of the supplemental examination certificate…

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How does pending litigation affect the USPTO’s determination in a supplemental examination proceeding?

According to MPEP 2816, pending litigation does not directly affect the USPTO’s determination in a supplemental examination proceeding. The MPEP states: “In view of the statutory mandate to make the determination on the request within three months, the determination on the request based on the record before the examiner will be made without awaiting a…

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What are the potential grounds for patentability in supplemental examination?

Supplemental examination can involve a wide range of patentability grounds. According to the MPEP: “[T]he information submitted as part of a request for supplemental examination may involve any ground of patentability, such as, for example, patent eligible subject matter, anticipation, public use or sale, obviousness, written description, enablement, indefiniteness, and double-patenting.” This comprehensive approach allows…

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What should patent practitioners avoid when inquiring about supplemental examinations?

Patent practitioners should avoid making improper inquiries to USPTO personnel regarding specific supplemental examination proceedings. The MPEP 2803.01 advises: “Patent practitioners (or other members of the public) must not address improper inquiries to members of the patent examining corps and to the Office as a whole.” Improper inquiries include questions about whether certain evidence was…

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What documentation is required to prove ownership when filing a supplemental examination request?

When filing a request for supplemental examination, the patent owner must provide documentation to prove ownership. According to MPEP 2803: “The patent owner must establish its ownership of the patent in the request for supplemental examination, unless the ownership has already been established in the patent file and there has been no change in ownership.”…

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