2811 Content of Request for Supplemental Examination [R-11.2013]

37 CFR 1.610(a) requires payment of the fee specified in 37 CFR 1.20(k)(1), the fee for reexamination ordered as a result of a supplemental examination proceeding as set forth in 37 CFR 1.20(k)(2), and any applicable document size fees as set forth in 37 CFR 1.20(k)(3). See MPEP § 2810.

37 CFR 1.610(b) sets forth content requirements for a request for supplemental examination. The elements are as follows:

I. AN IDENTIFICATION OF THE PATENT FOR WHICH SUPPLEMENTAL EXAMINATION IS REQUESTED

37 CFR 1.610(b)(1) requires that the request include an identification of the number of the patent for which supplemental examination is requested.

II. A LIST OF ALL ITEMS OF INFORMATION SUBMITTED WITH OR AS PART OF THE REQUEST

37 CFR 1.610(b)(2) requires that the request include a list of the items of information that are requested to be considered, reconsidered, or corrected. Where appropriate, the list must meet the requirements of 37 CFR 1.98(b). For example, the list must include a publication date for each item of information, if applicable. If the item of information is a U.S. patent, it must be identified by inventor, patent number, and issue date, as required by 37 CFR 1.98(b)(1).

This list must include each of the items of information submitted with or as part of the request. See MPEP § 2809 for more information about requirements for items of information. If the item of information is a discussion contained within the body of the request, the pages of the request on which the discussion appears, and a brief description of the item of information, such as “discussion in request of why the claims are patentable under 35 U.S.C. 101, pages 7 – 11,” must be listed. Patent owners are strongly encouraged to use Part B of Office Form PTO/SB/59 to provide the list.

The list must be limited to the items of information for which a separate, detailed explanation is provided in the request, as required by 37 CFR 1.610(b)(5), and, of which a copy is provided with the request, when required by 37 CFR 1.610(b)(7). If the list contains an item of information for which the required detailed explanation and required copy (if applicable) are not provided with the request, the request may not be granted a filing date, and a notice of noncompliant supplemental examination request, informing the patent owner of the defects, may be mailed by the Office.

The list should identify each item of the information in a manner that clearly corresponds to any copy of the item of information provided with the request and to the detailed explanation of the manner of applying the item of information, pursuant to 37 CFR 1.610(b)(5), provided in the request.

The request must include a separate, detailed explanation of the relevance and manner of applying each item of information listed pursuant to 37 CFR 1.610(b)(2) to each claim of the patent for which supplemental examination is requested. See 37 CFR 1.610(b)(5). See also subsection V below, and MPEP § 2811.01.

III. A LIST OF PRIOR OR CONCURRENT POST-PATENT OFFICE PROCEEDINGS

37 CFR 1.610(b)(3) requires that the request include a list identifying any other prior or concurrent post-patent Office proceedings involving the patent for which the current supplemental examination is requested, including: an identification of the type of proceeding, the identification of Office serial number of any such proceeding (e.g., a control number or a reissue application number), and the filing date of any such proceeding. The type of proceeding may be, for example, an ex parte or inter partes reexamination proceeding, a reissue application, an interference, another supplemental examination proceeding, a post-grant review proceeding, an inter partes review proceeding, or a covered business method review proceeding. Patent owners are strongly encouraged to use Office Form PTO/SB/59 to provide a list with a request.

If such notice has not been previously provided with the request, 37 CFR 1.620(d) requires that the patent owner must, as soon as possible upon the discovery of any other prior or concurrent post-patent Office proceeding involving the patent for which the supplemental examination is requested, file a paper limited to notifying the Office of the post-patent Office proceeding. See MPEP § 2820.

IV. IDENTIFICATION OF EACH CLAIM OF THE PATENT FOR WHICH SUPPLEMENTAL EXAMINATION IS REQUESTED

37 CFR 1.610(b)(4) requires that the request include an identification of each claim of the patent for which supplemental examination is requested. The result of a supplemental examination is a determination whether any of the items of information raises a SNQ. Because patentability relates to the claims of the patent, the patent owner must identify the patent claims to be examined in order for the Office to determine whether a SNQ affecting those claims has been raised by an item of information.

For example, if the information raises a question as to the adequacy of the written description portion of the specification, the SNQ pertains to the question of whether the specification provides adequate support under 35 U.S.C. 112 for the identified claim. If the information raises a question regarding whether the claimed invention may be anticipated or may be obvious, the SNQ pertains to the question of whether the identified claim is patentable under 35 U.S.C. 102 or 35 U.S.C. 103 in view of the item of information.

V. A SEPARATE, DETAILED EXPLANATION OF RELEVANCE AND MANNER OF APPLYING EACH ITEM OF INFORMATION TO EACH PATENT CLAIM FOR WHICH SUPPLEMENTAL EXAMINATION IS REQUESTED

37 CFR 1.610(b)(5) requires that the request include a separate, detailed explanation of the relevance and manner of applying each item of information to each claim of the patent for which supplemental examination is requested. See MPEP § 2811.01 for a detailed discussion of this requirement. In addition, patent owners may also consider the guidance set forth in MPEP §§ 2214 and 2217, which govern the content of a request for ex parte reexamination.

VI. A COPY OF THE PATENT FOR WHICH SUPPLEMENTAL EXAMINATION IS REQUESTED, AND A COPY OF ANY DISCLAIMER OR CERTIFICATE ISSUED FOR THE PATENT

37 CFR 1.610(b)(6) requires that the request include a copy of the patent for which supplemental examination is requested, and a copy of any disclaimer or certificate issued for the patent. A copy of the patent, for which supplemental examination is requested, should be provided with the specification and claims submitted in a double column format. The drawing pages of the printed patent are presented as they appear in the printed patent; the same is true for the front page of the patent. Thus, a full copy of the printed patent (including the front page) can be used to provide the abstract, drawings, specification, and claims of the patent for the request for supplemental examination. The printed patent is to be reproduced on only one side of the paper; submission of a two-sided copy of the patent is not proper.

A “certificate issued for the patent” includes, for example, a certificate of correction, a certificate of extension, a supplemental examination certificate, a post-grant review certificate, an inter partes review certificate, an ex parte reexamination certificate, and/or an inter partes reexamination certificate issued for the patent. Any disclaimer or certificate issued in the patent generally becomes a part of the patent. Thus, a copy of each must be supplied in order to provide the complete patent. The copy must have each page plainly written on only one side of a sheet of paper.

VII. A COPY OF EACH ITEM OF INFORMATION

37 CFR 1.610(b)(7) requires that the request include a copy of each item of information listed in 37 CFR 1.610(b)(2), accompanied by a written English translation of all of the necessary and pertinent parts of any non-English language document. See MPEP § 609.04(a), subsection III, for more information regarding translations of non-English language documents. The requirement of 37 CFR 1.610(b)(7) is important because it allows for all materials to be available to the examiner for full consideration within the three-month statutory time period for supplemental examination. The copy of each item of information listed under 37 CFR 1.610(b)(2) must be legible, and must be otherwise in full compliance with 37 CFR 1.52. See 37 CFR 1.615 and MPEP § 2807. The request must not include a copy of any item of information that is not listed under 37 CFR 1.610(b)(2).

Items of information that form part of the discussion within the body of the request as specified in 37 CFR 1.605(b) are not required to be submitted. As discussed previously, if the information to be considered, reconsidered, or corrected is not, at least in part, contained within or based on any supporting document submitted as part of the request, the discussion within the body of the request relative to the information will be considered as the item of information, a copy of which is not required under 37 CFR 1.610(b)(7) to be separately submitted. SeeMPEP § 2809, subsection II.C.

Copies of U.S. patents and U.S. patent application publications are not required, but may be submitted.

VIII. A SUMMARY OF THE RELEVANT PORTIONS OF ANY DOCUMENT, OTHER THAN THE REQUEST, WHICH IS OVER FIFTY PAGES IN LENGTH

37 CFR 1.610(b)(8) requires that the request include a summary of the relevant portions of any submitted document (including patent documents), other than the request, that is over fifty (50) pages in length. The summary must include citations to the particular pages containing the relevant portions. This summary may be similar to the requirement for information disclosure statements of a discussion of the relevant and pertinent parts of a non-English language document. See MPEP § 609.04(a), subsection III. This requirement will assist the Office in treating information presented in lengthy documents within the statutory three-month time period. Patent owners are encouraged to redact lengthy documents to include only the relevant portions, unless the redaction would remove context such that the examiner would not be provided with a full indication of the teachings of the item of information with respect to the claimed invention.

IX. AN IDENTIFICATION OF THE OWNER(S) OF THE ENTIRE RIGHT, TITLE, AND INTEREST IN THE PATENT REQUESTED TO BE EXAMINED, AND A SUBMISSION UNDER 37 CFR 3.73(c)

37 CFR 1.610(b) requires that the request 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. A request for supplemental examination of a patent must be filed by the owner(s) of the entire right, title, and interest. See 37 CFR 1.601(a). This is because the scope 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 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 3.73(c) is filed. See MPEP § 2803.

An application data sheet (ADS) under 37 CFR 1.76 cannot be submitted in a supplemental examination proceeding since a supplemental examination proceeding is not an “application.”

Form PTO/SB/59 should be helpful to persons filing requests for supplemental examination. The use of this form as, for example, the transmittal form, list of items of information, list of prior or concurrent post-patent Office proceedings, and cover sheet for a request for supplemental examination is encouraged. The following is a copy of form PTO/SB/59.