Can a patent owner incorporate by reference a paper from another proceeding in a supplemental examination request?
No, a patent owner cannot incorporate by reference a paper from another proceeding to satisfy the detailed explanation requirement in a supplemental examination request. The MPEP clearly states:
“A request for supplemental examination must stand on its own. A request for supplemental examination cannot be made, and the requirements for a detailed explanation pursuant to 37 CFR 1.610(b)(5) cannot be satisfied, by incorporating by reference a paper from another proceeding.”
This is because papers from other proceedings may not address the specific issues relevant to supplemental examination and could hinder the Office’s ability to conclude the examination within the required three-month period.
To learn more:
Topics:
MPEP 2800 - Supplemental Examination,
MPEP 2811.01 - Detailed Explanation Of The Relevance And Manner Of Applying Each Item Of Information,
Patent Law,
Patent Procedure