Can amendments be submitted with a supplemental examination request?
No, amendments cannot be submitted with a supplemental examination request. MPEP 2809 clearly states:
“No amendment may be filed in a supplemental examination proceeding. 37 CFR 1.620(f). Any paper containing an amendment that is filed in a supplemental examination proceeding is an unauthorized paper, and will be expunged from the file if inadvertently entered.”
However, the MPEP does provide guidance on when amendments can be filed if reexamination is ordered:
“If reexamination is ordered, amendments may be filed after an initial Office action on the merits in the resulting reexamination proceeding.”
This means that patent owners must wait until after the supplemental examination is completed and reexamination is ordered before they can submit any amendments to the patent. For more information on filing amendments in reexamination proceedings, refer to MPEP § 2813.01.
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