Can the examiner consider information beyond what the patent owner specified for each claim?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-29 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. Yes, the examiner has discretion to consider information beyond what the patent owner specified for each claim in a supplemental examination request. According to MPEP 2816.01 : “The examiner, however, has the discretion to determine whether any of the items of information properly submitted with the request raises a SNQ affecting any of the claims for which supplemental examination is requested.” This means that while the patent owner may request examination of specific claims in light of certain items of information, the examiner can analyze any of the submitted items of information with respect to any of the claims for which supplemental examination is requested. However, the examiner cannot consider claims for which the required explanation under 37 CFR 1.610(b)(5) has not been provided by the patent owner. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Examiner Has Discretion to Analyze SNQ-Related Information MPEP 2816.01 Notice of Noncompliant Supplemental Examination Request MPEP 2816.01 Recommended Requirement for Claim Explanation Under 37 CFR 1.610(b)(5) MPEP 2816.01 Required Supplemental Examination Request Must Raise SNQ MPEP 2816.01 Substantial New Question Not Controlled by Non-Final Court Decision MPEP 2816 Examiner May Analyze Any Provided Information Across Claims MPEP 2816.01 Office Independently Determines Substantial New Question of Patentability MPEP 2816 Permitted Request for Consideration of Item with Respect to Claim MPEP 2816 Supplemental Examination Only on Identified Information MPEP 2816.01 Explanation Required for Supplemental Examination MPEP 2816.01 Permitted Other Related FAQs 5 FAQs Collapse Are amendments or new claims conside...