2813.01 Amendments [R-11.2013]

37 CFR 1.620(f) provides that no amendment may be filed in a supplemental examination proceeding. Amendments are not “information believed to be relevant to the patent” under 35 U.S.C. 257(a) and a patent owner cannot file an amendment as part of a statement under 35 U.S.C. 304 because 35 U.S.C. 257(b) expressly excludes the filing of a statement pursuant to 35 U.S.C. 304 in a supplemental examination proceeding.

Any paper containing an amendment that is filed in a supplemental examination proceeding is an unauthorized paper, and will be expunged from the file if inadvertently entered. Amendments are not items of information, and are not appropriate in a supplemental examination proceeding.

An amendment may be submitted in an ex parte reexamination proceeding ordered under 35 U.S.C. 257. Patent owners, however, are reminded that 35 U.S.C. 257(b) expressly removes the right of the patent owner to file a statement under 35 U.S.C. 304, which includes any amendment that the patent owner may wish to file prior to an initial Office action on the merits. Because the ex parte reexamination proceeding does not exist prior to the order under 35 U.S.C. 257, and because the patent owner is precluded from filing a statement under 35 U.S.C. 304, no amendment may be filed from the time the request for supplemental examination is filed, until after the issuance of an initial Office action on the merits in any ex parte reexamination proceeding ordered under 35 U.S.C. 257.

Patent owners are reminded that a statutory disclaimer under 35 U.S.C. 253 and 37 CFR 1.321(a) may be submitted in the file of the patent prior to filing any request for supplemental examination. See MPEP § 1490. Moreover, if the patent owner merely wishes to amend the patent claims, the patent owner may file a reissue application instead of a request for supplemental examination.