2803 Persons Who May File a Request for Supplemental Examination [R-11.2013]

Only a patent owner may file a request for supplemental examination of a patent. See 35 U.S.C. 257(a) and 37 CFR 1.601(a). The statute does not authorize the Office to accept a request for supplemental examination from a party who is not the patent owner. For example, a party who merely states that it is an exclusive licensee or that it is a person with sufficient proprietary interest under 35 U.S.C. 118 is not eligible to file a request for supplemental examination.

The request must be filed by the owner(s) of the entire right, title, and interest in the patent. A request for supplemental examination must include an identification of the owner(s) of the entire right, title, and interest in the patent requested to be examined, and a submission by the patent owner in compliance with 37 CFR 3.73(c) establishing the entirety of the ownership in the patent requested to be examined. See 37 CFR 1.610(b)(9). This is because the terms of a patent may be changed (e.g., by cancellation or amendment of the claims) during any ex parte reexamination proceeding that may be ordered as a result of the supplemental examination proceeding, and this change must be binding on all parties having an ownership interest in the patent. Furthermore, the Office has consistently required that all parties having an interest in a patent are deemed “a patent owner” as a composite entity and must act together in proceedings before the Office. See MPEP §§ 301 and 324. This is also consistent with ex parte reexamination practice, which requires a patent owner requester of an ex parte reexamination to comply with the provisions of 37 CFR 3.71 and 37 CFR 3.73 for establishing an assignee’s right to take action when submitting a power of attorney. See MPEP § 2222.

The Office may, under rare circumstances, permit less than all of the owners to file a request for supplemental examination if a grantable petition under 37 CFR 1.183 requesting waiver of the provisions of 37 CFR 3.71 and 37 CFR 3.73(c) is filed. For example, such a petition may be filed in the case of a deceased or legally incapacitated joint owner, or where the joint owner refuses to join or cannot be found after diligent effort. See MPEP § 409et seq. In the case of a deceased joint owner, the heirs, administrators, or executors of the joint owner may be permitted to join in filing the request for supplemental examination. If one of the owners is legally incapacitated, the legal representative of the joint owner may be permitted to join in filing the request for supplemental examination. If a joint owner refuses to sign or cannot be found or reached after diligent effort, the remaining owners must include, in the petition, proof of the pertinent facts, a showing that such action is necessary to preserve the rights of the parties or to prevent irreparable damage, and the last known address of all of the joint owners. Finally, if an owner of all or a portion of the entire right, title, and interest of the patent is an organization that is dissolved, the Office may require that a determination of the ownership of the patent be obtained from a court of competent jurisdiction prior to accepting and according a filing date to a request for supplemental examination.

A legal representative of the patent owner may file a request for supplemental examination on behalf of the patent owner. See MPEP § 2804.