Can a supplemental examination be requested at any time during a patent’s life?
The MPEP 2815 addresses the timing of supplemental examination requests: “A determination on the supplemental examination request may be made at any time during the period of enforceability of a patent.” This statement indicates that a supplemental examination can be requested as long as the patent is enforceable. The period of enforceability typically extends throughout…
Read MoreWhat are the content requirements for a request for supplemental examination?
According to MPEP 2811, the content requirements for a request for supplemental examination are set forth in 37 CFR 1.610(b). The key elements include: Identification of the patent number A list of items of information to be considered, reconsidered, or corrected A list of any other prior or concurrent post-patent Office proceedings Identification of each…
Read MoreWhat are the formatting requirements for papers filed in a supplemental examination proceeding?
According to MPEP 2807, all papers submitted in a supplemental examination proceeding must be formatted in accordance with 37 CFR 1.52. The MPEP states: “37 CFR 1.615(a) requires that all papers submitted in a supplemental examination proceeding must be formatted in accordance with 37 CFR 1.52.” This means that documents must follow specific guidelines for…
Read MoreHow does supplemental examination affect patent enforceability?
Supplemental examination can have a significant impact on patent enforceability. According to the MPEP: “35 U.S.C. 257(c) specifies the effect of a supplemental examination under 35 U.S.C. 257(a) and any resulting ex parte reexamination under 35 U.S.C. 257(b) on the enforceability of the patent.” Generally, if information is considered, reconsidered, or corrected during supplemental examination,…
Read MoreWhat happens if the three-month period for deciding a supplemental examination request ends on a weekend or holiday?
The MPEP 2815 addresses the situation where the three-month period for deciding a supplemental examination request ends on a non-business day: “If the three-month period ends on a Saturday, Sunday, or federal holiday within the District of Columbia, then the certificate should issue by the preceding business day.” This provision ensures that the USPTO meets…
Read MoreWhat 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 is the difference between a “substantial new question of patentability” and a “prima facie case of unpatentability”?
The concepts of a “substantial new question of patentability” (SNQ) and a “prima facie case of unpatentability” are distinct in patent law, particularly in the context of reexamination proceedings. According to MPEP 2242: It is not necessary that a ‘prima facie’ case of unpatentability exist as to the claim in order for ‘a substantial new…
Read MoreWhat is a “substantial new question of patentability” in ex parte reexamination?
A “substantial new question of patentability” is a key requirement for initiating an ex parte reexamination. As stated in MPEP 2209: “The Office initially determines if ‘a substantial new question of patentability’ (35 U.S.C. 303(a)) is presented. If such a new question has been presented, reexamination will be ordered.“ This requirement ensures that the USPTO…
Read MoreHow can I submit a “Sequence Listing XML” file to the USPTO?
There are two methods for submitting a “Sequence Listing XML” file to the USPTO: Via the USPTO patent electronic filing system (currently, XML files can only be submitted via Patent Center) On a read-only optical disc, in compliance with 37 CFR 1.52(e) It’s important to note that if the size of the “Sequence Listing XML”…
Read More