What claims are considered in a supplemental examination determination?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 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. 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, it’s important to note that “the determination will be limited to a review of the claim(s) for which supplemental examination is requested.” The Office generally does not initiate supplemental examination for claims not specified by the patent owner. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Claims of Patent Determine SNQ MPEP 2816.01 Supplemental Examination Limited to Requested Claims MPEP 2816.01 Claims Not Under Supplemental Examination Due to Invalidity MPEP 2816 Consider Supplemental Examination for Pending Litigation MPEP 2816 Permitted Substantial New Question Not Controlled by Non-Final Court Decision MPEP 2816 Supplemental Examination Not Initiated Without Owner Request MPEP 2816.01 Office Independently Determines Substantial New Question of Patentability MPEP 2816 Permitted Supplemental Examination Only on Identified Information MPEP 2816.01 Supplemental Examination Certificate Becomes Official Record MPEP 2816 No Supplemental Exam If All Claims Invalid MPEP 2816 Other Related FAQs 5 FAQs Collapse Are amendments or new claims considered during supplemental examination? What happens if a patent owner doesn&#8217;t provide explanations for all requested claims? Can the examiner consider information beyond what the patent owner specified for each claim? What happens if a substantial new question of patentability...