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Wednesday Dec 19, 2012

From Janet Gongola, Patent Reform Coordinator: Tips for Filing a Compliant Supplemental Examination Request

Since September 16, 2012, the agency has received six requests for supplemental examination.  (Please note that the first several control numbers (96/000,001 to 96/000,003) were used by the Office to test the filing system.)  We thought you may be interested in more details about these filings, especially in case you are thinking about filing one in the future.

Upon receipt of a request for supplemental examination, the request is reviewed in the Central Reexamination Unit (CRU) for compliance with filing date requirements (e.g., 37 CFR 1.610).  If a request is not compliant with filing date requirements, it is not made public; rather, the patent owner is alerted about the non-compliance and has an opportunity to correct the defect.  If a request is compliant, then it is assigned a filing date and is available to the public.  At the same time, the request is sent to an examiner who performs the supplemental examination and decides if reexamination should be ordered. 

In reviewing the supplemental examination requests received so far, the Office has found that some were non-compliant with the filing date requirements.  The most common reason for non-compliance was the failure to provide a separate, detailed explanation of the relevance and manner of applying each item of information to each claim identified in the request (37 CFR 1.610(b)(5)).  For this reason, we wanted to provide additional guidance to assist patent owners in meeting the requirement for a separate, detailed explanation requirement.

A separate, detailed explanation required by 37 CFR 1.610(b)(5) must state how each item of information is applicable to each claim limitation.  A general statement of relevance that is not tied to any particular claim limitation is not sufficient to meet the requirement.  The explanation, however, does not need to positively state that an item of information “teaches” a limitation, but instead that it has teachings that a reasonable examiner might view as important to that limitation.  The explanation should include citations to particular portions or figures in the item of information in which the relevant teachings are located.  Patent owners are encouraged to be as comprehensive as possible in the explanation.  This allows for the patent owner to frame the issues and assists the examiner in focusing on the pertinent issues to better determine whether a substantial new question of patentability (SNQ) is raised. Generally, the guidance provided in MPEP 2214 for the content of a request for ex parte reexamination is a good resource.

The Office will assume that each item of information is applied to each claim requested, unless otherwise specified.  For instance, a request, which asks for supplemental examination of claims 1-10 and cites to 5 items of information, must provide separate, detailed explanations of how each of the five items of information applies to claims 1-10.  If, on the other hand, the patent owner wishes supplemental examination for claims 1-5 based on the first two items of information and supplemental examination for claims 1-10 based on the next three items of information, the patent owner must clearly indicate which items of information are to be applied to which claims.  The patent owner can provide such an indication through use of (i) headings, as discussed below;  (ii) the listing provided in fulfillment of the requirements of 37 CFR 1.610(b)(4); or (iii) a table of contents.  

Additionally, a separate, detailed explanation is required for each dependent claim for which supplemental examination is requested, unless the request explicitly states that the application of the item of information to the independent claim is being relied upon as the explanation for the dependent claim(s).  For example, the request may state: “Patent owner relies upon the explanation for claim 1 as the explanation for dependent claims 2-5.”  If the patent owner relies on a proper, detailed explanation of an independent claim as the detailed explanation for the dependent claims, then the Office may limit its review of the dependent claims to the detailed explanation of the independent claim provided by the patent owner.  If the request does not make an explicit statement incorporating the explanation for the independent claim or fails to provide separate explanations for the dependent claims, the Office will mail a filing date notice to inform patent owner of the deficiency.

Further, the Office recommends that a patent owner consider using headings and subheadings in the explanation section of the supplemental examination request.  Headings that identify each item of information and what claims are being discussed are excellent tools to ensure clarity in the explanations.  In addition, under each heading, the Office recommends using separate subheadings for each independent claim and its associated dependent claims, if applicable.

The detailed explanation should NOT state what the item of information does NOT teach.  Although the rules provide for the patent owner to make such statements, the Office recommends that this optional discussion be made under a separate subheading (e.g., “Explanation under 37 CFR 1.610(c)(3)”).  The review process has revealed that combining a detailed explanation with an optional discussion typically results in a lengthy discussion on why the claims are patentable over the items of information with little to no explanation as to how the item of information is applicable to the claim limitations as required by 37 CFR 1.610(b)(5).  In other words, by combining the optional discussion with the required detailed explanation, the patent owner runs the risk that the Office will find that the required explanation was not provided, which will result in receiving a filing date notice of non-compliance.

Finally, the explanation requirement is NOT met by incorporating by reference a paper in another proceeding or relying on a third party’s paper submitted with the request.  The explanation must be presented as the patent owner’s position.  The detailed explanation in the request must stand on its own, and must reflect the opinion of the patent owner, and not that of a third party.

To assist patent owners in filing requests for supplemental examination in compliant form, the Office has compiled a “best practices” guide: 

Best Practices to Meet Certain Supplemental Examination Filing Requirements (December 19, 2012)

The guide walks through the various requirements to be included in a supplemental examination request and offers tips for how to meet them.  Besides this guide, information on supplemental examination requests can be found in the listing of Frequently Asked Questions.

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