2813 Handling of Papers, Other Than a Request, in a Supplemental Examination Proceeding [R-11.2013]

I. ACTIONS ON PETITIONS OR PAPERS, OTHER THAN THE REQUEST, MAY BE HELD IN ABEYANCE

37 CFR 1.620(b) provides that the Office may hold in abeyance an action on any petition or other paper filed in a supplemental examination proceeding until after the proceeding is concluded by the electronic issuance of the supplemental examination certificate as set forth in 37 CFR 1.625. The only actions by the Office on the request for supplemental examination are:

• (1) a determination of whether the request is entitled to a filing date; and
• (2) a determination of whether any of the items of information submitted with the request raises a SNQ.

The only relevant type of petition that the Office anticipates will be filed in a supplemental examination proceeding would involve the filing date of the request, which is not relevant to the determination of whether any of the items of information submitted with the request raises a SNQ. Holding in abeyance a decision on such a petition will assist the Office in making the determination regarding a SNQ within the three-month statutory period.

II. UNAUTHORIZED OR IMPROPER PAPERS

37 CFR 1.620(c) provides that if an unauthorized or otherwise improper paper is filed in a supplemental examination proceeding, it will not be entered into the official file or considered, or if inadvertently entered, it will be expunged.

After filing a request for supplemental examination, no papers other than: (1) a corrected request filed in response to a notice of noncompliant supplemental examination request, or (2) a notice of a prior or concurrent post-patent Office proceeding pursuant to 37 CFR 1.620(d), should be filed with the Office prior to the conclusion of the supplemental examination proceeding. Any papers directed to the merits of the supplemental examination proceeding other than (1) or (2) set forth above, will not be entered into the file, and may be discarded by the CRU without consideration. If such a paper is entered prior to its discovery, it may be expunged from the record.

Where an unauthorized or otherwise improper paper has already been scanned into the Image File Wrapper (IFW) of the supplemental examination proceeding before recognizing the nature of the paper, the paper cannot be physically returned to the party that submitted it. Instead, the paper will be expunged, i.e., by marking the paper “non-public” and “closed” so it does not appear in the public record of the supplemental examination proceeding. A copy of the Office communication notifying the patent owner of the return of the paper (or its expungement) will be made of record in the patent file. However, no copy of the returned/expunged paper will be retained by the Office. If a later submission of the returned/expunged paper is appropriate, such as during any resulting ex parte reexamination proceeding, then the paper may be filed and entered by the Office at that time. The date of the later submission will be the filing date of the paper.

A.Third-Party Papers

In accordance with 35 U.S.C. 257(a), any party other than the patent owner is prohibited from filing papers or otherwise participating in any manner in the supplemental examination proceeding. See 37 CFR 1.601(b). If a third party files any petition or other paper in a supplemental examination proceeding, it will not be entered into the official file or considered. If such papers are inadvertently entered, they will be expunged. See 37 CFR 1.620(c).

B.Authorized but Defective Papers

Where papers filed in a supplemental examination proceeding are defective (e.g., are not signed or fail to meet the filing date requirements), such papers may be expunged from the official file of the supplemental examination proceeding by marking the paper as “non-public” and “closed” so that it does not appear in the public record of the supplemental examination proceeding.

C.Application Data Sheet (ADS)

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.”