2818 Procedure after Conclusion of Supplemental Examination [R-11.2013]

Created On
byChhabra Law Firm

37 CFR 1.625 Conclusion of supplemental examination; publication of supplemental examination certificate; procedure after conclusion.

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  • (b) If the supplemental examination certificate states that a substantial new question of patentability is raised by one or more items of information in the request, ex parte reexamination of the patent will be ordered under 35 U.S.C. 257. Upon the conclusion of the ex parte reexamination proceeding, an ex parte reexamination certificate, which will include a statement specifying that ex parte reexamination was ordered under 35 U.S.C. 257, will be published. The electronically issued supplemental examination certificate will remain as part of the public record of the patent.
  • (c) If the supplemental examination certificate indicates that no substantial new question of patentability is raised by any of the items of information in the request, and ex parte reexamination is not ordered under 35 U.S.C. 257, the electronically issued supplemental examination certificate will be published in due course. The fee for reexamination ordered as a result of supplemental examination, as set forth in § 1.20(k)(2), will be refunded in accordance with 1.26(c).
  • (d) Any ex parte reexamination ordered under 35 U.S.C. 257 will be conducted in accordance with §§ 1.530 through 1.570, which govern ex parte reexamination, except that:
    • (1) The patent owner will not have the right to file a statement pursuant to § 1.530, and the order will not set a time period within which to file such a statement;
    • (2) Reexamination of any claim of the patent may be conducted on the basis of any item of information as set forth in § 1.605, and is not limited to patents and printed publications or to subject matter that has been added or deleted during the reexamination proceeding, notwithstanding § 1.552(a);
    • (3) Issues in addition to those raised by patents and printed publications, and by subject matter added or deleted during a reexamination proceeding, may be considered and resolved, notwithstanding § 1.552(c); and
    • (4) Information material to patentability will be defined by § 1.56(b), notwithstanding § 1.555(b).

Supplemental examination is concluded by the electronic publication of the certificate. The Office procedure after publication of the certificate depends on whether the Office determines that a SNQ affecting at least one claim of the patent is raised in the request.

If the supplemental examination certificate indicates that a SNQ is raised, ex parte reexamination of the patent will be ordered under 35 U.S.C. 257. See 37 CFR 1.625(b). An ex parte reexamination ordered as a result of a supplemental examination proceeding will be conducted in accordance with the existing rules governing ex parte reexamination, except that: (i) the patent owner will not have the right to file a patent owner statement; and (ii) the Office will address each SNQ without regard to whether it is raised by a patent or printed publication. See 37 CFR 1.625(d) and MPEP § 2818.01.

If the supplemental examination certificate indicates that no SNQ is raised, ex parte reexamination will not be ordered under 35 U.S.C. 257. In this case, the electronically issued supplemental examination certificate will be published in due course by the Office’s patent publication process as an attachment to the patent. The fee for reexamination ordered as a result of supplemental examination, as set forth in 37 CFR 1.20(k)(2), will be refunded in accordance with 37 CFR 1.610(d). See MPEP § 2818.02.