MPEP Chapter 2800: Supplemental Examination

Question 1

Who can request/initiate supplemental examination?

Answer 1

Patent owner ONLY

NOT THIRD PARTIES

Question 2

Supplemental Examination

Answer 2

Patent owner requests an additional examination of an already issued patent

Useful in situations where inequitable conduct occurred during initial examination

Introduced by AIA

Can be used for ANY patent

Question 3

Inequitable Conduct

Answer 3

37 CFR 1.56

Details duty of candor placed upon any individual substantively involved in prep + pros to disclose all info that is MATERIAL to examination

Failure to do so can lead to inequitable conduct whereby the entire patent is unenforceable and all claims are lost

Question 4

Contents of a Request for Supplemental Examination

Answer 4

-Patent number
-List of “items of information”
-List of PTO proceedings
-Identification of each claim requested
-Detailed explanations
-Copy of patent
-Copy of each “item of information”
-Summary of relevant portions of docs over 50 pgs
-Identification of owner of entire right

Question 5

Timeline for Supplemental Examination

Answer 5

Supplemental Examination MUST CONCLUDE within 3 months of the RECEIPT OF REQUEST (a compliant request, non-compliant requests not given a filing date)

Question 6

Number of “Items of Information” Allowed in a Supplemental Examination

Answer 6

12

If 12 is not enough, file more than 1 request for supplemental examination

Question 7

Information Allowed in Supplemental Examination

Answer 7

NOT restricted to patents and printed publications
Can include much more

Question 8

Conclusion of Supplemental Examination

Answer 8

If certificate is issued that indicates SNQ, an ex parte re-examination will be ordered by PTO

This re-exam, which matured from a supplemental examination, is NOT LIMITED to patents and printed publications

Question 9

Normal Re-exam

Answer 9

Limited to patents and printed publications
Patent Owner Statement allowed after SNQ

Question 10

Re-exam that matures from a supplemental examination

Answer 10

NOT limited to patents and printed publications
NO patent owner statement allowed

Question 11

Risks Involved in Supplemental Examination

Answer 11

Potential loss of patent rights upon SNQ + maturing re-exam that leads to subsequent loss

“Material Fraud” found by UPSTO, referred to Attorney General

Question 12

Supplemental Examination Fees

Answer 12

1. Processing fee
2. Fee for resulting ex parte re-examination (refunded if no SNQ found)
3. Fee for non-patent docs over 20 pages in length

Question 13

Discounts on Supplemental Examination Fees

Answer 13

There are small and micro entity discounts for supplemental examination