How does the USPTO handle supplemental examination requests involving domestic benefit claims?
The USPTO has specific procedures for handling supplemental examination requests involving domestic benefit claims. These procedures depend on whether the request is solely for correcting a benefit claim or includes additional items of information. For requests solely correcting a benefit claim, the MPEP states: If the only information provided with the request is solely directed…
Read MoreWhat must be included in a supplemental examination determination?
According to MPEP 2816.03, a supplemental examination determination must include: An identification of each item of information An identification of each issue raised by each item of information A statement of the basis for the determination for each issue identified The MPEP states: “The determination must identify each item of information that raises a substantial…
Read MoreWhat should be included in the determination for a supplemental examination request?
The determination for a supplemental examination request should include: An identification of each item of information A statement of each issue raised by each item of information The basis for the determination of each issue A finding for each issue as to whether the item of information raises a substantial new question of patentability (SNQ)…
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 happens after a supplemental examination is concluded?
After a supplemental examination is concluded, the Office electronically publishes a supplemental examination certificate. As stated in MPEP 2818, “Supplemental examination is concluded by the electronic publication of the certificate.” The subsequent procedure depends on whether a Substantial New Question of patentability (SNQ) is raised: If an SNQ is raised, an ex parte reexamination is…
Read MoreWhat claims are considered in a supplemental examination determination?
In a supplemental examination, the Office considers the claims of the patent that are in effect at the time of the determination. Specifically, “The claims of the patent in effect at the time of the determination will be the basis for deciding whether ‘a substantial new question of patentability’ (SNQ) is present.” (MPEP 2816.01) However,…
Read MoreWhat are the requirements for a supplemental deposit in patent applications?
Supplemental deposits in patent applications must meet specific requirements as outlined in MPEP 2407. These include: The supplemental deposit must be made before the patent issues. It must be of a biological material specifically identified in the application as filed. The applicant must provide a statement that the deposit meets the requirements of 37 CFR…
Read MoreHow does “supplement” differ from “replacement” in biological deposits?
While “replacement” involves substituting one deposit for another, “supplement” refers to situations where the original deposit is still viable but has lost certain qualities. The MPEP explains: “The term ‘supplement’ is directed to those situations where the earlier deposit is still viable in the sense that it is alive and capable of replication either directly…
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