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2813 Handling of Papers, Other Than a Request, in a Supplemental Examination Proceeding [R-11.2013]

37 CFR 1.620 Conduct of supplemental examination proceeding.

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  • (b) The Office may hold in abeyance action on any petition or other paper filed in a supplemental examination proceeding until after the proceeding is concluded by the electronic issuance of the supplemental examination certificate as set forth in § 1.625.
  • (c) If an unauthorized or otherwise improper paper is filed in a supplemental examination proceeding, it will not be entered into the official file or considered, or if inadvertently entered, it will be expunged.

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I.ACTIONS ON PETITIONS OR PAPERS, OTHER THAN THE REQUEST, MAY BE HELD IN ABEYANCE

37 CFR 1.620(b) provides that the Office may hold in abeyance an action on any petition or other paper filed in a supplemental examination proceeding until after the proceeding is concluded by the electronic issuance of the supplemental examination certificate as set forth in 37 CFR 1.625. The only actions by the Office on the request for supplemental examination are:

  • (1) a determination of whether the request is entitled to a filing date; and
  • (2) a determination of whether any of the items of information submitted with the request raises a SNQ.

The only relevant type of petition that the Office anticipates will be filed in a supplemental examination proceeding would involve the filing date of the request, which is not relevant to the determination of whether any of the items of information submitted with the request raises a SNQ. Holding in abeyance a decision on such a petition will assist the Office in making the determination regarding a SNQ within the three-month statutory period.

II.UNAUTHORIZED OR IMPROPER PAPERS

37 CFR 1.620(c) provides that if an unauthorized or otherwise improper paper is filed in a supplemental examination proceeding, it will not be entered into the official file or considered, or if inadvertently entered, it will be expunged.

After filing a request for supplemental examination, no papers other than: (1) a corrected request filed in response to a notice of noncompliant supplemental examination request, or (2) a notice of a prior or concurrent post-patent Office proceeding pursuant to 37 CFR 1.620(d), should be filed with the Office prior to the conclusion of the supplemental examination proceeding. Any papers directed to the merits of the supplemental examination proceeding other than (1) or (2) set forth above, will not be entered into the file, and may be discarded by the CRU without consideration. If such a paper is entered prior to its discovery, it may be expunged from the record.

Where an unauthorized or otherwise improper paper has already been scanned into the Image File Wrapper (IFW) of the supplemental examination proceeding before recognizing the nature of the paper, the paper cannot be physically returned to the party that submitted it. Instead, the paper will be expunged, i.e., by marking the paper "non-public" and "closed" so it does not appear in the public record of the supplemental examination proceeding. A copy of the Office communication notifying the patent owner of the return of the paper (or its expungement) will be made of record in the patent file. However, no copy of the returned/expunged paper will be retained by the Office. If a later submission of the returned/expunged paper is appropriate, such as during any resulting ex parte reexamination proceeding, then the paper may be filed and entered by the Office at that time. The date of the later submission will be the filing date of the paper.

A.Third Party Papers

In accordance with 35 U.S.C. 257(a), any party other than the patent owner is prohibited from filing papers or otherwise participating in any manner in the supplemental examination proceeding. See 37 CFR 1.601(b). If a third party files any petition or other paper in a supplemental examination proceeding, it will not be entered into the official file or considered. If such papers are inadvertently entered, they will be expunged. See 37 CFR 1.620(c).

B.Authorized but Defective Papers

Where papers filed in a supplemental examination proceeding are defective (e.g., are not signed or fail to meet the filing date requirements), such papers may be expunged from the official file of the supplemental examination proceeding by marking the paper as "non-public" and "closed" so that it does not appear in the public record of the supplemental examination proceeding.

C.Application Data Sheet (ADS)

An application data sheet (ADS) under 37 CFR 1.76 cannot be submitted in a supplemental examination proceeding since a supplemental examination proceeding is not an "application."

2813.01 Amendments [R-11.2013]

37 CFR 1.620 Conduct of supplemental examination proceeding.

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  • (f) No amendment may be filed in a supplemental examination proceeding.

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37 CFR 1.620(f) provides that no amendment may be filed in a supplemental examination proceeding. Amendments are not “information believed to be relevant to the patent” under 35 U.S.C. 257(a) and a patent owner cannot file an amendment as part of a statement under 35 U.S.C. 304 because 35 U.S.C. 257(b) expressly excludes the filing of a statement pursuant to 35 U.S.C. 304 in a supplemental examination proceeding.

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. Amendments are not items of information, and are not appropriate in a supplemental examination proceeding.

An amendment may be submitted in an ex parte reexamination proceeding ordered under 35 U.S.C. 257. Patent owners, however, are reminded that 35 U.S.C. 257(b) expressly removes the right of the patent owner to file a statement under 35 U.S.C. 304, which includes any amendment that the patent owner may wish to file prior to an initial Office action on the merits. Because the ex parte reexamination proceeding does not exist prior to the order under 35 U.S.C. 257, and because the patent owner is precluded from filing a statement under 35 U.S.C. 304, no amendment may be filed from the time the request for supplemental examination is filed, until after the issuance of an initial Office action on the merits in any ex parte reexamination proceeding ordered under 35 U.S.C. 257.

Patent owners are reminded that a statutory disclaimer under 35 U.S.C. 253 and 37 CFR 1.321(a) may be submitted in the file of the patent prior to filing any request for supplemental examination. See MPEP § 1490. Moreover, if the patent owner merely wishes to amend the patent claims, the patent owner may file a reissue application instead of a request for supplemental examination.

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Last Modified: 01/24/2018 17:19:02