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2803    Persons Who May File a Request for Supplemental Examination [R-11.2013]

37 C.F.R. 1.601  Filing of papers in supplemental examination.

  • (a) A request for supplemental examination of a patent must be filed by the owner(s) of the entire right, title, and interest in the patent.

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Only a patent owner may file a request for supplemental examination of a patent. See 35 U.S.C. 257(a) and 37 CFR 1.601(a). The statute does not authorize the Office to accept a request for supplemental examination from a party who is not the patent owner. For example, a party who merely states that it is an exclusive licensee or that it is a person with sufficient proprietary interest under 35 U.S.C. 118 is not eligible to file a request for supplemental examination.

The request must be filed by the owner(s) of the entire right, title, and interest in the patent. A request for supplemental examination must include an identification of the owner(s) of the entire right, title, and interest in the patent requested to be examined, and a submission by the patent owner in compliance with 37 CFR 3.73(c) establishing the entirety of the ownership in the patent requested to be examined. See 37 CFR 1.610(b)(9). This is because the terms of a patent may be changed (e.g., by cancellation or amendment of the claims) during any ex parte reexamination proceeding that may be ordered as a result of the supplemental examination proceeding, and this change must be binding on all parties having an ownership interest in the patent. Furthermore, the Office has consistently required that all parties having an interest in a patent are deemed “a patent owner” as a composite entity and must act together in proceedings before the Office. See MPEP §§ 301 and 324. This is also consistent with ex parte reexamination practice, which requires a patent owner requester of an ex parte reexamination to comply with the provisions of 37 CFR 3.71 and 37 CFR 3.73 for establishing an assignee’s right to take action when submitting a power of attorney. See MPEP § 2222.

The Office may, under rare circumstances, permit less than all of the owners to file a request for supplemental examination if a grantable petition under 37 CFR 1.183 requesting waiver of the provisions of 37 CFR 3.71 and 37 CFR 3.73(c) is filed. For example, such a petition may be filed in the case of a deceased or legally incapacitated joint owner, or where the joint owner refuses to join or cannot be found after diligent effort. See MPEP § 409et seq. In the case of a deceased joint owner, the heirs, administrators, or executors of the joint owner may be permitted to join in filing the request for supplemental examination. If one of the owners is legally incapacitated, the legal representative of the joint owner may be permitted to join in filing the request for supplemental examination. If a joint owner refuses to sign or cannot be found or reached after diligent effort, the remaining owners must include, in the petition, proof of the pertinent facts, a showing that such action is necessary to preserve the rights of the parties or to prevent irreparable damage, and the last known address of all of the joint owners. Finally, if an owner of all or a portion of the entire right, title, and interest of 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 prior to accepting and according a filing date to a request for supplemental examination.

A legal representative of the patent owner may file a request for supplemental examination on behalf of the patent owner. See MPEP § 2804.

2803.01   Inquiries from Persons Other Than the Patent Owner [R-11.2013]

37 C.F.R. 1.601  Filing of papers in supplemental examination.

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  • (b) Any party other than the patent owner (i.e., any third party) is prohibited from filing papers or otherwise participating in any manner in a supplemental examination proceeding.

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37 CFR 1.601(b) prohibits third parties from filing papers or otherwise participating in any manner in a supplemental examination proceeding. In addition, because only the patent owner can file the request for supplemental examination, third party participation is prohibited in any ex parte reexamination ordered under 35 U.S.C. 257 and 37 CFR 1.625, pursuant to ex parte reexamination practice.

Office personnel, including both the examining and the technical support staff, should not enter into a discussion with, or answer inquiries from, third parties (i.e., parties who are not the patent owner) regarding a supplemental examination proceeding. A party who is not the patent owner should be referred to the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) in the art unit of the assigned examiner . Only questions on strictly general procedural matters regarding supplemental examination, i.e., not directed to any specific supplemental examination proceeding, may be discussed by the CRU SPRS with that party.

Employees of the Office, particularly CRU examiners who have conducted a supplemental examination proceeding that has been concluded, should not discuss or answer inquiries from any person outside the Office as to whether a certain reference or other particular evidence was considered during the proceeding, and whether that reference, or other evidence, would have been determined to raise a substantial new question of patentability, had it been considered during the proceeding. Patent practitioners (or other members of the public) must not address improper inquiries to members of the patent examining corps and to the Office as a whole. Inquiries from members of the public relating to the matters discussed above must, of necessity, be refused and this refusal should not be considered discourteous or an expression of opinion by the Office as to the validity, patentability, or enforceability of the patent.

The definitions set forth in 37 CFR 104.1 and the exceptions in 37 CFR 104.21 are applicable to this section.

2803.02   Public Access [R-11.2013]

The Office does not intend to provide the public with access, by Public PAIR or otherwise, to a request for supplemental examination, or to any papers or information submitted as part of or accompanying the request, until the request is granted a filing date by the Office.

After a filing date has been accorded the request, supplemental examination files are open to inspection by the general public by way of Public PAIR which is available on the USPTO's Internet site, www.uspto.gov. See MPEP § 2232 (access guidance for PAIR). Copies of non-patent literature (NPL) cited in the proceeding, however, will not be available via Public PAIR and must be ordered as set forth below.

If a copy of the supplemental examination file or NPL cited in the proceeding is desired, it may be ordered from the Document Services Division of the Office of Public Records (OPR) upon payment of the applicable fee after the request for supplemental examination has been granted a filing date.

Orders for such copies must indicate the control number of the proceeding and should be addressed as follows:

Mail Stop Document Services

Director of the U.S. Patent and Trademark Office

P.O. Box 1450
Alexandria, VA 22313-1450

In addition, after the request for supplemental examination has been granted a filing date, a request for a copy of the file may also be sent via e-mail to: dsd@uspto.gov, and the fee for the copy may be charged to a credit card or deposit account.

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Last Modified: 03/27/2014 10:10:35