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Supplemental Examination

General

Question SE1010:  What is the effective date for the supplemental examination provision in the AIA?

The effective date for the supplemental examination provision in the AIA is September 16, 2012. 

Question SE1020:  What is the purpose for a supplemental examination?

The patent owner may request a supplemental examination for a patent so that the Office can consider, reconsider, or correct information believed to be relevant to the patent.

Question SE1030:  What type of information can a patent owner present to the Office in a supplemental examination?

The patent owner may present any information believed to be relevant to the patent.  The information is not limited to patents or printed publications, but instead may include information concerning any ground of patentability, i.e., patent eligible subject matter, anticipation, obviousness, written description, enablement, best mode, and indefiniteness.

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Filing a Request for Supplemental Examination

Question SE2010:  Who may file a supplemental examination?

The patent owner may file a supplemental examination; a third party is not permitted to seek a supplemental examination.

Question SE2020:  Which patents are eligible for supplemental examination?

A patent owner may request supplemental examination of any patent during the period of enforceability of the patent. 

Question SE2030:  May a request for supplemental examination be filed by fewer than all of the joint owners of the patent, if the patent for which supplemental examination is requested is jointly owned by more than one party?

No, all parties having an ownership interest in the patent must act together as a composite entity in proceedings before the Office.  This policy is consistent with ex parte reexamination practice.  Under rare circumstances, such as in the case of a deceased or legally incapacitated joint owner, the Office may permit less than all of the joint owners to file a request if a grantable petition under 37 C.F.R. § 1.183 requesting waiver of the provisions of 37 C.F.R. §§ 3.71 and 3.73(c) is filed.  If the owner of all or a portion of the entire right, title, and interest in the patent is an organization that is dissolved, the Office may require that a determination of the ownership of the patent be obtained from a court of competent jurisdiction.

Question SE2040:  May a supplemental examination request be filed by a licensee or other party that is not the owner of the patent?

No, only a patent owner may file a request for supplemental examination.  The Office is not authorized to permit a party who is not a patent owner, or a party who merely states that it is, for example, an exclusive licensee or a person with sufficient proprietary interest under 35 U.S.C. 118, to file a request for supplemental examination.

Question SE2050:  Is the request for supplemental examination subject to a page limit?

No, there are no page limits applicable to a request for supplemental examination.  However, if any document, other than the request, is over 50 pages in length, then the patent owner must provide a summary of the relevant portions of the document with citations to the particular pages containing the relevant portions.  In addition, any non-patent document over 20 pages in length that is submitted as part of the request is subject to the document size fees.

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Items of Information

Question SE3010:  What is an “item of information”? 

An item of information includes a document containing information, believed to be relevant to the patent, that the patent owner requests the Office to consider, reconsider, or correct.  An item of information is not limited to patents and printed publications, and may include, for example, a sales receipt or invoice.  If the information is not, at least in part, contained within or based on any document filed as part of the request, the discussion within the body of the request relative to the information will be considered to be an “item of information.”  For example, if a discussion of a potential application of 35 U.S.C. 101 to patent claim 1 is wholly contained within the body of the request and is not based, at least in part, on any supporting document, then the discussion in the request will be considered to be an item of information.

Question SE30200:  How many items of information may a patent owner submit in a request for supplemental examination?

A request for supplemental examination may include up to twelve items of information.

Question SE3030:  If the discussion within the body of the request is based, at least in part, on a supporting document, will the discussion in the body of the request be counted as an item of information?

No, if the discussion within the body of the request is based, at least in part, on a supporting document, then the supporting document, and not the discussion within the request, will be considered as the item of information.  For example, if the patent owner discusses a potential public use or sale of the claimed invention, and also submits a supporting document with the request as possible evidence of a public use or sale, or the lack thereof, then the supporting document, and not the discussion within the body of the request, will be considered as an item of information.

Question SE3040:  May an item of information, such as an image of a supporting document, be embedded within the body of the request in lieu of being submitted as a separate copy of the supporting document? 

No, if the patent owner presents an image of a supporting document, such as an image of an electronic mail message or other document, within the body of the request, then a separate copy of the supporting document must be provided.  The separate copy of the item of information will be considered as the item of information.  The counting of an item of information may not be avoided by inserting the content of the supporting document within the body of the request. 

Question SE3050:  Is an item of information required to be in writing?

Yes, an item of information must be in writing.  The Office currently does not have the capability of retaining records in unwritten form.  For this reason, any audio or video recording must be submitted in the form of a written transcript in order to be considered.  A transcript of a video may be submitted together with copies of selected images of the video and a discussion of the correlation between the transcript and the copies of the video images.

Question SE3060:  If one item of information is combined in the request with one or more additional items of information, how will the combination of items of information be counted?

Each item of information of the combination will be separately counted.  For example, if a patent owner requests the Office to consider the patentability of the claims in view of a combination of reference A and reference B, reference A and reference B will be separately counted, resulting in two items of information.

Question SE3070:  If one or more items of information are presented by the patent owner as cumulative, how will these items of information be counted?

Cumulative items of information will be separately counted.  When considering the submission of multiple documents that are believed to be cumulative, the Office recommends the patent owner select one or two of the documents as the items of information that will be submitted with the request.

Question SE3080:  If one item of information is discussed in the request with respect to multiple issues of patentability, will that single item of information be counted more than one time for each patentability issue?

No, the Office will count the number of items of information, not the number of issues discussed in the request with respect to that item.  For example, a document which is discussed in the request as raising an issue under 35 U.S.C. 101 and also under 35 U.S.C. 112 will be counted as one item of information.

Question SE3090:  Will a declaration or affidavit be counted as an item of information?

Yes, a declaration or affidavit may be counted as an item of information.

Question SE3100:  If a declaration or affidavit presents multiple items of information, will the declaration or affidavit be counted as one item of information?

No, if a declaration or affidavit presents one or more separate and distinct items of information, then each item of information presented may be counted separately.  For example, if a declaration presents information relating to an issue under 35 U.S.C. 101 affecting patent claim 1, and also presents information relating to an  issue under 35 U.S.C. 103 affecting patent claim 10, then each item of information within the declaration will be counted separately, resulting in two items of information.

Question SE3110:  If a request for supplemental examination is filed to correct a declaration or affidavit in the prior examination, would a corrected declaration or affidavit and a marked-up copy of the previously-filed declaration or affidavit be counted as one or two items of information?

The corrected declaration would be counted as one item of information and the marked-up copy of the previously-filed declaration would be counted as a second item of information.  This is because the request included two separate documents for the examiner to consider, reconsider, or correct.

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Fees

Question SE4010:  What fees are required to be filed with a request for supplemental examination?

A request for supplemental examination must be accompanied by a total fee of $16,500 for a large entity ($8,250 for small entity or $4,125 for micro entity), broken down as (i) a fee of $4,400 for a large entity ($2,200 for small entity or $1,100 for micro entity) for processing and treating a request for supplemental examination; and (ii) a fee of $12,100 for a large entity ($6,050 for small entity or $3,025 for micro entity) for ex parte reexamination ordered as a result of a supplemental examination proceeding.  In addition, a request for supplemental examination must be accompanied by any applicable document size fees.

Question SE4020: Will the patent owner receive a refund of a portion of the fees if reexamination is not ordered because no substantial new question of patentability was raised by any of the items of information properly submitted as part of the request?

Yes, the fee of $12,100 for a large entity ($6,050 for small entity or $3,025 for micro entity) for ex parte reexamination ordered as a result of a supplemental examination proceeding will be refunded if the supplemental examination certificate indicates that no substantial new question of patentability was raised by any of the items of information properly submitted as part of the request and reexamination is not ordered.

Question SE4030:  Which documents are subject to the document size fees? 

The document size fees apply only to non-patent documents that have a length of more than 20 pages. Non-patent documents having a length of 20 pages or less are not subject to the document size fees.  Non-patent documents include, for example, non-patent literature, transcripts of audio or video recordings, and court documents.  Patent documents, such as U.S. patents, U.S. patent application publications, published international patent applications, and foreign patents, are not subject to the document size fees. 

Question SE4040:  Would a translation of a patent document be subject to the document size fees?

No, translations of non-English language patent documents are also not subject to the document size fees.

Question SE4050:  Will blank pages in a non-patent document be counted for the purposes of the document size fee?

Yes, the Office will use an automatic page counter that will not subtract blank pages from the total page count for the non-patent document.  This policy is consistent with the Office policy for application size fees.

Question SE4060:  How are the document size fees calculated?

Non-patent documents having 21 - 50 pages are subject to a fee of $180 for large entity ($90 for small entity or $45 for micro entity), which must be submitted with the request.  Non-patent documents having greater than 50 pages are subject to an additional fee of $280 for large entity ($140 for small entity or $70 for micro entity) for each additional 50-page increment, or a fraction thereof, which must also be paid at the time of filing the request.  For example, for a large entity, if a journal article having a length of 145 pages is submitted as an item of information which forms part of a request for supplemental examination, a document size fee of $740 is due upon the filing of the request.  The $740 document size fee is calculated by adding the $180 fee for 21 – 50 pages, and two additional fees of $280 for each additional 50 pages, or a fraction thereof (i.e., a $280 fee for 51 – 100 pages, and a second $280 fee for the remaining 45 pages, which is a fraction of a 50-page increment).

Question SE4070:  What types of documents are subject to the requirement for a summary of the relevant portions of the documents, including citations to the particular pages containing the relevant portions?

Any document, other than the request, that is over 50 pages in length is subject to the summary requirement.  “Any document” includes both patent and non-patent documents.

Question SE4080:  Did the fees for supplemental examination change due to the “Setting and Adjusting Patent Fees; Final Rule,” 78 FR 4212 (January 18, 2013)?

Yes, the filing fees for a supplemental examination request and any resulting ex parte reexamination were reduced to be about 22% below the Office’s cost for these services.  For example, the total supplemental examination filing fees are $16,500 ($4,400 for the request and $12,100 for the reexamination) for a large entity.  The document size fee for 21-50 pages was increased to $180 for a large entity.   The final rule also applied a 50% small entity discount and a 75% micro entity discount to the fees.  These new service fees became effective on March 19, 2013.  See the fee schedule posted at http://www.uspto.gov/web/offices/ac/qs/ope/fee031913.htm.

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Filing a Request for Supplemental Examination

Question SE5010:  What happens if the Office determines that a request for supplemental examination fails to comply with the filing date requirements?

A request for supplemental examination that fails to satisfy the filing requirements of 37 CFR 1.605, 1.610, and 1.615 will not be granted a filing date.  The Office will not make a request for supplemental examination public until the request is granted a filing date.  The Office has a procedure in which the request, and any other papers or information submitted as part of or accompanying the request, would not be viewable in Public PAIR until a filing date is granted by the Office. 

Additionally, the patent owner identified as requesting supplemental examination will be notified of the defects and will be given an opportunity to complete the requirements of the request within a specified time.  A form “Notice of Noncompliant Supplemental Examination Request (37 CFR 1.610(d)),” is used to provide the notification for supplemental examination.  If further explanation is needed as to a non-compliance item, the box at the bottom of the form will be checked.  An attachment will then be completed to specifically explain why the request does not comply.  If the patent owner timely files a corrected request in response to the notice that properly addresses all of the defects set forth in the notice and that otherwise complies with all of the filing requirements, the filing date of the supplemental examination request will be the receipt date of the corrected request.  If the patent owner does not timely file a corrected, compliant request in response to the Office’s “Notice of Noncompliant Supplemental Examination Request (37 CFR 1.610(d)),” the request for supplemental examination will not be granted a filing date and the fee for reexamination as set forth in 37 CFR 1.20(k)(2) will be refunded.  The supplemental examination proceeding also will be terminated.

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Processing a Request for Supplemental Examination

Question SE6010:  How will the Office treat a request for supplemental examination from a patent owner?

Within 3 months from the filing date of a request for supplemental examination from a patent owner, the Office will determine whether any of the items of information filed with the request raises a substantial new question of patentability.  If a substantial new question of patentability is found for any item of information, then the Office will order an ex parte reexamination of the patent.

Question SE6020:  What standard applies in a supplemental examination?

In a supplemental examination, the Office will determine whether any item of information presented in the request raises a substantial new question of patentability.  The substantial new question of patentability standard is triggered when there is a substantial likelihood that a reasonable examiner would consider an item of information important in determining the patentability of the claimed invention.

Question SE6030:  If the Office determines that an item of information raises a substantial new question of patentability and orders an ex parte reexamination, do the existing rules for an ex parte reexamination apply?

An ex parte reexamination ordered as a result of an ex parte reexamination 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 substantial new question of patentability without regard to whether it is raised by a patent or printed publication.

Question SE6040:  How will a supplemental examination terminate?

The Office will conclude a supplemental examination by issuing a certificate of supplemental examination.  The certificate will indicate the results of the Office’s determination as to whether any item of information filed by the patent owner in the request raised a substantial new question of patentability.

Question SE6050:  What benefit does a patent owner gain by seeking a supplemental examination for a patent?

The patent owner can immunize the patent against allegations of inequitable conduct by completing a supplemental examination.  Specifically, information considered, reconsidered, or corrected during a supplemental examination cannot be the basis for rendering a patent unenforceable for inequitable conduct, so long as the supplemental examination and any resulting ex parte reexamination are completed before the civil action is brought.  The patent owner, however, cannot secure inequitable conduct immunization for information raised in a civil action brought before a supplemental examination.

Question SE6060:  Are there any consequences if the patent owner commits a material fraud on the Office during a supplemental examination?

If a patent owner commits a material fraud on Office during the supplemental examination, then the Office may confidentially refer the matter to the U.S. Attorney General and may take other action.

Question SE6070:  What documents are mailed at the conclusion of supplemental examination?

The Office will mail the following two documents to the patent owner at the conclusion of supplemental examination:  (1) the Supplemental Examination Certificate; and (2) the Reasons for Substantial New Question of Patentability Determination.   The certificate will state whether a substantial new question of patentability was or was not raised by the request for supplemental examination.  The certificate also will list the items of information.  The Reasons for Substantial New Question of Patentability Determination will set forth the examiner’s determination as to whether each item of information raised a substantial new question of patentability.

Question SE6080:  What happens after a supplemental examination concludes?

At the conclusion of a supplemental examination, the Office will issue an electronic supplemental examination certificate as part of the public record for the patent.  If the 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 by a subsequent communication.  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 as an attachment to the patent.  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, ex parte reexamination will not be ordered and 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). In this case, the electronically issued supplemental examination certificate will be published in due course as an attachment to the patent.

Question SE6090:  Assuming at least one substantial new question of patentability was found in the supplemental examination, when will the Office mail the order granting reexamination?

The Office generally expects to mail the communication entitled “Ex Parte Reexamination Ordered Pursuant to 35 U.S.C. 257,” if applicable, shortly after the electronic publication of the supplemental examination certificate.

Question SE6100:  If ex parte reexamination is ordered based on a determination in the supplemental examination that at least one substantial new question of patentability exists, when will the Office generally mail the first Office action on the merits?

The Office generally expects to mail the first Office action with or shortly after the mailing of the communication entitled “Ex Parte Reexamination Ordered Pursuant to 35 U.S.C. 257.”  The patent owner does not have a right to file a patent owner statement after reexamination is ordered.  However, the mailing of a first Office action may be delayed if there are other concurrent Office proceedings for the same patent.

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Last Modified: 5/7/2013 4:59:22 PM