What is the scope of the USPTO’s determination in a supplemental examination request?
The scope of the USPTO’s determination in a supplemental examination request is generally limited to the specific items of information and claims identified in the request. According to MPEP 2816:
“The determination of whether such an item of information raises a SNQ will generally be limited to a review of the item(s) of information identified in the request with respect to the identified claim(s) of the patent.“
For example, the MPEP states: “[A] determination on a request that includes three items of information, where each item is requested to be considered with regard to claim 1, will generally be limited to whether any of the three items of information raise a SNQ with respect to claim 1.”
It’s important for patent owners to clearly identify which claims they want considered in view of each item of information. The MPEP notes: “If the patent owner wishes to request consideration of an item of information with respect to multiple claims of the patent, the request for supplemental examination must include an identification of each claim in view of which the item of information is to be considered, and the required detailed explanation with respect to each claim.”
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