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2809    Items of Information [R-11.2013]

37 CFR 1.605 Items of information.

  • (a) Each request for supplemental examination may include no more than twelve items of information believed to be relevant to the patent. More than one request for supplemental examination of the same patent may be filed at any time during the period of enforceability of the patent.
  • (b) An item of information includes a document submitted as part of the request that contains information, believed to be relevant to the patent, that the patent owner requests the Office to consider, reconsider, or correct. If the information to be considered, reconsidered, or corrected is not, at least in part, contained within or based on any document submitted as part of the request, the discussion within the body of the request relative to the information will be considered as an item of information.
  • (c) An item of information must be in writing in accordance with § 1.2. To be considered, any audio or video recording must be submitted in the form of a written transcript.
  • (d) If one item of information is combined in the request with one or more additional items of information, each item of information of the combination may be separately counted. Exceptions include the combination of a non-English language document and its translation, and the combination of a document that is over 50 pages in length and its summary pursuant to § 1.610(b)(8).

An "item of information" includes a document submitted as part of a supplemental examination request that contains information believed to be relevant to the patent, that the patent owner is requesting the Office to consider, reconsider, or correct. See 37 CFR 1.605(b). Patent owners are encouraged to draft the supplemental examination request to clearly and consistently set forth the items of information the patent owner wishes the Office to consider, reconsider, or correct.

I.LIMIT ON THE NUMBER OF ITEMS OF INFORMATION SUBMITTED AS PART OF A SINGLE REQUEST

Each request for supplemental examination may include no more than twelve items of information believed to be relevant to the patent. See 37 CFR 1.605(a). 37 CFR 1.605(a) also permits the filing of more than one request for supplemental examination of the same patent at any time during the period of enforceability of the patent. Therefore, patent owner is not precluded from obtaining review of any item of information despite the twelve-item limit, because the patent owner may file one or more additional requests for supplemental examination of the same patent sequentially or at the same time, each of which may include up to twelve additional items of information.

II.REQUIREMENTS FOR AN ITEM OF INFORMATION

An item of information must be in writing. In most cases, an "item of information" is a separate document submitted as part of the request. Under certain conditions, however, an “item of information” may be contained within the body of the request.

A.An Item of Information Must Be in Writing

37 CFR 1.605(c) requires that an item of information must be in writing in accordance with 37 CFR 1.2. The Office does not currently 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. See also MPEP § 2807 regarding the format requirements for papers submitted in a supplemental examination proceeding.

B.An Item of Information Must Be Submitted as a Separate Document, Where Applicable

In most cases, an item of information is a separate document submitted with the request which contains information relevant to the patent that the patent owner wants the Office to consider, reconsider, or correct. Examples of an item of information that must be submitted as a separate document include a journal article, a patent, an affidavit or declaration, a sales receipt, a foreign search report, a copy of a page of a dictionary containing a definition, a court document, and a transcript of an audio or video recording. However, if the item of information is a U.S. patent or a U.S. patent application publication, a copy is not required, but may be submitted. See 37 CFR 1.610(b)(7).

C.When an Item of Information May be Contained within the Body of the Request

If the information to be considered, reconsidered, or corrected is not, at least in part, contained within or based on a supporting document submitted as part of the request, the discussion within the body of the request relative to that information will be considered as the item of information. For example, if the patent owner requests the Office to consider claim 1 of the patent on the basis of 35 U.S.C. 101, and the discussion of any potential application of 35 U.S.C. 101 to claim 1 is wholly contained within the body of the request and is not based, at least in part, on any supporting document, the discussion in the request will be considered as the item of information. Another example of an item of information that may be contained within the request is an admission by patent owner that certain facts or claim limitations were known at the time of the invention.

The patent owner may not avoid counting an item of information by inserting the content of the supporting document within the body of the request. For example, 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 will be considered as the item of information.

III.HOW ITEMS OF INFORMATION ARE COUNTED

When counting the number of items of information submitted with a request for supplemental examination, the Office will tally the number of items of information, such as documents, presented.

The Office will not count the number of issues raised by, or the number of grounds which the patent owner requests the Office to consider, when determining the number of items of information. A single reference that raises multiple issues under multiple grounds, for example, under 35 U.S.C. 102, 35 U.S.C. 103, and 35 U.S.C. 112, will be counted as a single item of information. However, if the patent owner cites a combination of multiple references under 35 U.S.C. 103, then each reference of the combination will be separately counted as an item of information.

For example, if the patent owner states that the claims are patentable under 35 U.S.C. 103 over the combination of reference A in view of reference B, then references A and B must be separately listed as items of information, and will be counted as two items. If, however, a single item of information, such as a reference patent, raises a potential issue under 35 U.S.C. 102 as to claim 1 and another potential issue under 35 U.S.C. 103 as to claim 2, the reference patent will nevertheless be counted as a single item of information. The Office will count the number of items of information, but will not count the number of issues potentially raised by each item.

As another example, if the patent owner relies upon different abstracts bound together in a book of meeting abstracts, it is likely that the Office will treat each abstract as a separate item of information. In this example, the Office suggests that the patent owner cite and rely upon only the particular abstracts that are relevant to the patent and not cite an entire book of meeting abstracts.

Cumulative items of information will each be separately counted. For example, if the patent owner indicates that reference A is cumulative to reference B, references A and B will be counted as two items of information. If the patent owner believes that multiple items of information are cumulative to each other, the patent owner is encouraged to select one or two documents as the items of information that will be submitted with the request.

If a 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 counted 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, such as a sales invoice, with the request as possible evidence of a public use or sale, or the lack thereof, then the supporting document (e.g., the sales invoice), and not the discussion within the body of the request, will be considered as an item of information.

A declaration or affidavit submitted as part of a request would be considered an item of information. However, if the declaration presents two distinct items of information, such as information relating to a potential ground under 35 U.S.C. 101 as to patent claim 1 that was not considered during the prior examination of the patent, and information relating to erroneous facts or data presented during the prior examination of the patent with respect to an issue under 35 U.S.C. 103 as to patent claim 10, then each item of information contained within the declaration will be counted separately, resulting in two items of information.

The patent owner may not avoid the counting of multiple items of information by inserting the multiple items within the body of a declaration or by presenting them as exhibits accompanying the declaration. If the declaration presents one item of information, such as information regarding erroneous data presented during the prior examination of the patent with respect to an issue under 35 U.S.C. 103 as to a particular patent claim (such as, e.g., claim 10), and relies upon a single exhibit, such as a new table of data, to support facts presented in the declaration, the Office is likely to count the declaration, including the supporting exhibit, as a single item of information. If, however, the declaration relies upon two separate and distinct exhibits, then each exhibit may be counted separately. For example, if the declaration relies upon two separate and distinct sales receipts as evidence of a potential sale of the invention (e.g., a sales receipt dated March 2011, and a second, separate sales receipt dated October 2011, which provides evidence of a second, separate sale of the invention), then each additional sales receipt will be counted separately, resulting in two items of information (one item consisting of the declaration and one sales receipt, and the second item consisting of the second sales receipt). As another example, if the declaration relies not only upon a sales receipt (e.g., exhibit 1) as evidence of a sale of the invention under 35 U.S.C. 102, but also upon a reference patent (e.g., exhibit 2) as evidence of a potential ground under 35 U.S.C. 103, then each additional exhibit will be counted separately. In this example, the declaration and the sales receipt will be counted as a first item of information and the reference patent will be counted as a second item of information.

37 CFR 1.605(d) provides that if an item of information is combined in the request with one or more additional items of information, each item of information of the combination may be separately counted. If it is necessary to combine items of information in order to raise an issue, or to explain the relevance of the items of information to be considered, reconsidered, or corrected with respect to the identified claims, each item of information may be separately counted. For example, if the patent owner requests consideration of claim 1 of a patent in light of references A and B, and explains that it is the combination of references A and B that is relevant to claim 1, reference A and reference B must be separately listed as items of information, and will be counted as two items of information.

Exceptions to this provision include the combination of a non-English language document and its translation, and the combination of a document that is over 50 pages in length and its summary pursuant to 37 CFR 1.610(b)(8).

IV.INFORMATION THAT SHOULD NOT BE SUBMITTED WITH THE REQUEST

Petitions should not be submitted with the request. Petitions including, for example, petitions for unintentionally delayed foreign priority or domestic benefit claims (see MPEP § 2809.01), should only be filed after reexamination is ordered. If a petition is filed in a supplemental examination proceeding, it will generally be held in abeyance until after the issuance of the supplemental examination certificate. See 37 CFR 1.620(b) and MPEP § 2813. If the Office determines that a substantial new question of patentability is raised by the request, any petition held in abeyance will be addressed in due course after reexamination is ordered. If, however, the Office determines that no substantial new question of patentability is raised by the request, any petition held in abeyance will be dismissed as moot.

In addition, amendments to the patent may not be submitted with the request. No amendment may be filed in a supplemental examination proceeding. 37 CFR 1.620(f). Any paper containing an amendment that is filed in a supplemental examination proceeding is an unauthorized paper, and will be expunged from the file if inadvertently entered. If reexamination is ordered, amendments may be filed after an initial Office action on the merits in the resulting reexamination proceeding. See MPEP § 2813.01.

2809.01   Information Relating to the Correction of Factual Information [R-11.2013]

In a request for supplemental examination, the patent owner may inform the Office of factual information believed to be relevant to the patent, which the patent owner wishes to correct. The factual information to be corrected may include, for example, a missing or erroneous foreign priority or benefit claim, or missing or erroneous information relating to the common ownership of the claimed invention. The item of information may be, for example, a patent document relating to the factual information, such as a priority document or parent patent in the case of a missing or erroneous foreign priority or domestic benefit claim, a declaration under 37 CFR 1.132 limited to a discussion of the factual information to be corrected, or, if no supporting document is submitted with the request, a discussion within the body of the request relating to the correction of the factual information.

However, if the patent owner merely wishes to amend the patent file in order to correct factual information, the patent owner should file a reissue application or a request for certificate of correction, where appropriate. See MPEP §§ 1402 and 1405. If the patent owner only desires to correct the inventorship, the patent owner should file a request for a certificate of correction under the provisions of 35 U.S.C. 256 and 37 CFR 1.324, or, alternatively, the patent owner may file a reissue application. See MPEP §§ 1402, 1412.04, and 1481.02. Correction of inventorship may also be made, if desired, in an ex parte reexamination proceeding. See MPEP § 2258, subsection IV.F. If the information that the patent owner wishes to correct is only of a clerical or typographical nature, or of a minor character within the meaning of 35 U.S.C. 255 and 37 CFR 1.323, the patent owner should file a request for certificate of correction rather than a supplemental examination request. See, e.g.,MPEP § 1481.

A deletion of an earlier-obtained domestic benefit claim in a supplemental examination proceeding or any resulting reexamination proceeding (or, for that matter, in any post-patent Office proceeding) will not operate to extend the term of the patent.

I.SUPPLEMENTAL EXAMINATION IS LIMITED TO A DETERMINATION OF WHETHER THE REQUEST RAISES A SUBSTANTIAL NEW QUESTION OF PATENTABILITY

A supplemental examination proceeding is limited to a determination of whether the information properly submitted as part of the request raises a substantial new question of patentability (SNQ). See 35 U.S.C. 257(a).

However, an item of information limited to a correction of factual information, alone, may not raise a substantial new question of patentability. For example, an item of information limited to the correction of a missing or erroneous foreign priority or domestic benefit claim, alone, generally will not raise an issue of patentability. In order for the correction of a foreign priority or domestic benefit claim to raise a substantial new question of patentability, the request for supplemental examination should also include one or more additional item(s) of information, such as one or more intervening reference(s), that would cause the patentability of the claims under, e.g.,35 U.S.C. 102 or 103, to depend upon the foreign priority or domestic benefit claim. In such an instance, the item of information may raise a SNQ, depending upon whether the foreign priority or domestic benefit claim is or is not corrected. See MPEP § 2816.02 for a further discussion of whether a document raises a SNQ depending upon the correction of a foreign priority or domestic benefit claim. Similarly, information limited to the correction of other factual information, such as the common ownership of the claims, alone, may not raise a SNQ, in the absence of one or more additional item(s) of information that would cause the patentability of the claims to depend upon the issue of common ownership.

If the Office determines that no SNQ is raised by the request, the supplemental examination proceeding concludes with the issuance of a supplemental examination certificate, indicating that no SNQ is raised. See 35 U.S.C. 257(a), 37 CFR 1.620(a), and 37 CFR 1.625(a). Because no SNQ is raised by the request, ex parte reexamination is not ordered. In such an instance, the factual information cannot be corrected because the procedure for making the correction of the factual information is the reexamination that would have been ordered, had the Office determined that a SNQ was raised in the request. In other words, the patent owner may inform the Office of factual information to be corrected during the supplemental examination proceeding, and thus request supplemental examination "to correct information believed to be relevant to the patent" in accordance with 35 U.S.C. 257(a). However, in the absence of information in the request that raises a SNQ, there is no opportunity to make the correction. Thus, the supplemental examination proceeding will not result in any correction to the patent. In such cases, the patent owner may wish to file a reissue application, a certificate of correction, or other proceeding, as applicable, in order to have the information corrected. See, e.g.,MPEP §§ 1402, 1405 and 1481.

If, however, the Office determines that the request raises a SNQ, reexamination will be ordered. See 35 U.S.C. 257(b) and 37 CFR 1.625(b). The factual information may be corrected during the resulting reexamination proceeding in accordance with ex parte reexamination practice. For example, corrections may be made during the resulting reexamination proceeding by filing, where appropriate, an amendment after the initial Office action on the merits (see MPEP § 2813.01 ), or a petition for an unintentionally delayed foreign priority or domestic benefit claim (see MPEP § 2258, subsection IV.E.).

When analyzing a request for supplemental examination, the Office will only consider the item(s) of information provided by the patent owner. The Office will not initiate supplemental examination of the patent in view of any item of information that was not requested by the patent owner to be considered, reconsidered or corrected. For example, any prior art of record in the patent file, that is not properly submitted as one or more additional item(s) of information in the request, will not, in general, be considered during the supplemental examination proceeding, except to determine whether the item(s) of information properly submitted with the request are cumulative to the prior art of record. Furthermore, a request for supplemental examination "of all of the patent claims" solely in view of the "the factual information to be corrected" , without more, is improper. The patent owner is effectively requesting reconsideration of all of the patent claims in view of all prior art in existence (or, at a minimum, all of the prior art of record). Each prior art document, however, would be considered as a separate item of information. Such a request would be improper because it would not comply with the requirements of, for example, 37 CFR 1.610(b). It would fail to include, e.g., (a) a separate list of each prior art document as an item of information; (b) a copy of each item of information, where appropriate; c) a separate, detailed explanation of the relevance and manner of applying each prior art document to every claim for which supplemental examination is requested, etc. In addition, "all prior art in existence" is likely to include more than twelve items of information. See MPEP § 2811 for discussion of the required elements of a supplemental examination request as set forth in 37 CFR 1.610(b).

In summary, the patent owner may inform the Office of factual information to be corrected during the supplemental examination proceeding, and thus request supplemental examination "to correct information believed to be relevant to the patent" in accordance with 35 U.S.C. 257(a). However, in the absence of information in the request that raises a SNQ, the supplemental examination proceeding will not result in a corrected patent. Any correction may only be made during a resulting reexamination proceeding, which is only initiated if the supplemental examination proceeding concludes with a determination that a SNQ was raised. For these reasons, the patent owner should include with the request, as one or more additional items of information, evidence that the patentability of the claims depends upon the factual information to be corrected. Such evidence may include, for example, one or more intervening references.

II.RECOMMENDED INFORMATION TO BE SUBMITTED WITH THE REQUEST

The Office recommends that any request for supplemental examination, that includes an item of information limited to the correction of factual information, should also include one or more additional item(s) of information that potentially provide evidence that the patentability of the claims depends upon the factual information to be corrected.

For example, where the information to be corrected is a foreign priority or domestic benefit claim, the Office recommends that the patent owner include in the request, as one or more additional item(s) of information, any documents or other information, such as an intervening patent or printed publication, that caused the patent owner to reconsider the effective filing date of the claims. The effective date of some of the claims in a patent which resulted from a continuing application under 35 U.S.C. 120, for example, could be the filing date of the continuing application since those claims were not supported in the parent application. Therefore, intervening patents or printed publications may be available as prior art. See, e.g., In re Ruscetta, 255 F.2d 687, 118 USPQ 101 (CCPA 1958), In re van Langenhoven, 458 F.2d 132, 173 USPQ 426 (CCPA 1972). See also MPEP § 211.05. Similarly, where the information to be corrected involves, for example, the common ownership of the claims, the patent owner should include with the request one or more additional items of information that cause(s) the patentability of the claims to depend upon the common ownership issue, such any prior art or other documents or information that caused the patent owner to reconsider the common ownership of the claims.

Alternatively, the patent owner may include in the request one or more additional items of information which are unrelated to the factual information to be corrected, but which raise a SNQ. For example, the patent owner may include, in addition to information limited to the correction of a domestic benefit claim, an item of information such as a reference patent that would qualify as prior art under 35 U.S.C. 102 even if the domestic benefit claim is corrected.

III.INFORMATION THAT SHOULD NOT BE SUBMITTED WITH THE REQUEST

See MPEP § 2809, subsection IV. Petitions should not be submitted with the request. Petitions including, for example, petitions for unintentionally delayed foreign priority or domestic benefit claims, should only be filed after reexamination is ordered. See MPEP § 2809.01. In addition, amendments to the patent may not be submitted with the request. No amendment may be filed in a supplemental examination proceeding. 37 CFR 1.620(f). If reexamination is ordered, amendments may be filed after an initial Office action on the merits in the resulting reexamination proceeding. See MPEP § 2813.01.

See MPEP § 2816.02, subsection II, for a further discussion of situations where a SNQ is or is not raised, when the request includes information limited to the correction of factual information.

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Last Modified: 11/04/2015 11:01:48