What happens if a patent owner doesn’t provide explanations for all requested claims?

If a patent owner fails to provide the required explanations for all requested claims in a supplemental examination, the following consequences apply:

• The patent owner is not entitled to supplemental examination of claims for which the required explanation was not provided.
• The Office will typically issue a notice of noncompliant supplemental examination request.

As stated in MPEP 2816.01: “If the patent owner does not provide an explanation of how an item of information may be applied to every claim requested to be examined in view of that item, the patent owner is not entitled to a determination on claims for which the required explanation was not provided.”

For example, if a patent owner requests examination of claims 1-10 but only provides explanations for claims 1-5, they will not be entitled to a determination on claims 6-10.

To learn more:

• incomplete supplemental examination request
• noncompliant request
• claim explanation requirements