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2816 Determination on the Request [R-07.2015]

37 CFR 1.620 Conduct of supplemental examination proceeding.

Within three months after the filing date of a request for supplemental examination, the Office will determine whether a substantial new question of patentability affecting any claim of the patent is raised by any of the items of information presented in the request. The determination will generally be limited to a review of the item(s) of information identified in the request as applied to the identified claim(s) of the patent. The determination will be based on the claims in effect at the time of the determination and will become a part of the official record of the patent.

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I.GENERAL GUIDANCE

35 U.S.C. 257(a) and 37 CFR 1.620(b) require that, within three months following the filing date of a request for supplemental examination, the Office will determine whether a SNQ affecting any claim of the patent is raised by any of the items of information properly presented in the request. The standard for determining whether an item of information properly submitted as part of the request raises a SNQ will be the same as the standard set forth in the MPEP § 2242 for ex parte reexaminations filed under 35 U.S.C. 302: i.e., whether there is a substantial likelihood that a reasonable examiner would consider the item of information important in determining patentability. See MPEP §§ 2816.02 and 2242.

The determination of whether such an item of information raises a SNQ will generally be limited to a review of the item(s) of information identified in the request with respect to the identified claim(s) of the patent. For example, a determination on a request that includes three items of information, where each item is requested to be considered with regard to claim 1, will generally be limited to whether any of the three items of information raise a SNQ with respect to claim 1. If the patent owner wishes to request consideration of an item of information with respect to multiple claims of the patent, the request for supplemental examination must include an identification of each claim in view of which the item of information is to be considered, and the required detailed explanation with respect to each claim. For example, if the patent owner fails to request that the Office consider certain claims in view of an item of information, then the patent owner is not entitled to a determination for that item of information with respect to those claims. The determination will be based on the claims in effect at the time of the determination. See MPEP § 2816.01. The supplemental examination certificate, which contains the results of the determination of whether a SNQ was raised by one or more of the items of information submitted as part of the request, will become a part of the official record of the patent.

II.TREATMENT OF REQUEST WHEN LITIGATION IS COPENDING

The patent owner may wish to consider the provisions of 35 U.S.C. 257(c)(1) and 35 U.S.C. 257(c)(2) on the effectiveness of any supplemental examination on already pending litigation when determining whether and when to file a request for supplemental examination. The Office takes no position on this issue.

The patent owner must promptly notify the Office of any federal court decision involving the patent.

A.Litigation Search

Before making a determination on the request for supplemental examination, a litigation search from the Technical Support Staff (TSS) of the Central Reexamination Unit (CRU) or the Scientific and Technical Information Center (STIC) may be done to check to see if the patent has been, or is, involved in litigation. A copy of the litigation search is scanned into the IFW file history. In the rare instance where the record of the supplemental examination proceeding or the litigation search indicates that additional information is desirable, guidance for making an additional litigation search may be obtained from the library of the Office of the Solicitor.

If litigation has concluded or is taking place in the patent on which a request for supplemental examination has been filed, or if the examiner discovers, at any time during the supplemental examination proceeding, that there is litigation or that there has been a federal court decision on the patent, the request must be promptly brought to the attention of the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) or Technology Center (TC) Quality Assurance Specialist (QAS), who should review the decision on the request and any examiner’s action to ensure that it conforms to current Office policy and guidelines set forth below.

B.Supplemental Examination With Concurrent Litigation Prior to Federal Court Decision

In view of the statutory mandate to make the determination on the request within three months, the determination on the request based on the record before the examiner will be made without awaiting a decision by the federal court. It is not realistic to attempt to determine what issues will be treated, or what issues will be finally decided, by the federal court prior to the court decision. Accordingly, the determination on the request will be made without considering the issues allegedly before the court. If an ex parte reexamination is ordered under 35 U.S.C. 257, the reexamination will continue until the Office becomes aware that a court decision has issued. At such time, the reexamination proceeding ordered under 35 U.S.C. 257 will be reviewed in accordance with the guidelines set forth in MPEP § 2286.

C.Federal Court Decision Issues After Request Filed But Before Supplemental Examination Certificate Issues

A non-final federal court decision concerning a patent under supplemental examination will have no binding effect on the Office’s determination whether a substantial new question of patentability has been raised in a supplemental examination proceeding. A non-final holding of claim invalidity or unenforceability (or, for that matter, a non-final holding of claim validity or enforceability) will not be controlling on the question of whether a substantial new question of patentability is present. A final federal court decision, i.e., after all appeals, which upholds the validity of one or more of the patent claims also has no binding effect on the supplemental examination proceeding. See, e.g., Ethicon v. Quigg, 849 F.2d 1422, 7 USPQ2d 1152 (Fed. Cir. 1988), in which the court states the Office is not bound by a court’s holding of patent validity. While the Office may accord deference to factual findings made by the court, the determination of whether a substantial new question of patentability exists will be made independently of the court’s decision on validity as it is not controlling on the Office. See, e.g., In re Swanson et al., 540 F.3d 1368, 1378 (Fed. Cir. 2008), where the Federal Circuit approved of the Office’s interpretation in MPEP § 2242. See MPEP § 2286 for further guidance.

A final holding of claim invalidity or unenforceability (after all appeals) is controlling on the Office. In such cases, a substantial new question of patentability would not be present as to the claims held invalid or unenforceable. This policy tracks the Office’s policy for ex parte reexamination. See, e.g., MPEP § 2286, citing Ethicon v. Quigg. The Office will not intentionally conduct supplemental examination of patent claims which have been finally held to be invalid or unenforceable by a federal court.

If it is brought to the Office’s attention that a federal court has issued a final holding of invalidity or unenforceability, any claims which are finally held invalid or unenforceable, and for which supplemental examination has been requested, will not be examined. If only some of the claims requested to be examined have been finally held invalid or unenforceable, the examiner will indicate, in the Reasons for Substantial New Question of Patentability Determination which accompanies the supplemental examination certificate (see MPEP § 2816.03, subsection II), which requested claims were not under supplemental examination due to the final holding of invalidity or unenforceability. If all of the claims requested to be examined have been finally held invalid or unenforceable, the Office will not conduct the supplemental examination. If a filing date has been granted, it will be vacated by the Office. If it is brought to the Office’s attention that, prior to the issuance of the supplemental examination certificate, a federal court has rendered a final decision, i.e., after all appeals, holding that all of the patent claims under supplemental examination are invalid or unenforceable, and if a supplemental examination certificate has inadvertently issued, the supplemental examination certificate will be vacated.

If a final federal court holding of invalidity or unenforceability is rendered after the date of electronic issuance of the supplemental examination certificate in the Office’s electronic Image File Wrapper system (IFW) and in Public PAIR (see MPEP § 2817.01), the supplemental examination certificate will not be vacated. If reexamination has been ordered as a result of the supplemental examination proceeding, and if a final holding of invalidity or unenforceability is brought to the Office’s attention, claims which are held invalid or unenforceable will be withdrawn from consideration in the reexamination. If all of the claims being examined in the reexamination proceeding are finally held invalid or unenforceable, the reexamination will be terminated by the CRU or TC Director as no longer containing a substantial new question of patentability. See MPEP § 2286, subsection IV for further guidance.

2816.01 Claims Considered in Making the Determination [R-11.2013]

The claims of the patent in effect at the time of the determination will be the basis for deciding whether “a substantial new question of patentability” (SNQ) is present. See 37 CFR 1.620(a). In a supplemental examination proceeding, the determination will be limited to a review of the claim(s) for which supplemental examination is requested. The Office will generally not initiate supplemental examination of any patent claims for which supplemental examination was not requested by the patent owner.

37 CFR 1.610(b)(5) requires that the request must include "[a] separate, detailed explanation of the relevance and manner of applying each item of information to each claim of the patent for which supplemental examination is requested." If the patent owner fails to explain how any of the items of information may be applied to a patent claim, then the patent owner is not entitled to supplemental examination of that claim. If the patent owner does not provide an explanation of how an item of information may be applied to every claim requested to be examined in view of that item, the patent owner is not entitled to a determination on claims for which the required explanation was not provided. For example, if the patent owner requests supplemental examination of claims 1-10 in view of the Fisher article, but only provides a separate, detailed explanation of the manner of applying the Fisher article to claims 1-5, then the patent owner is not entitled to a determination on claims 6-10, for which the required explanation was not provided. In such instances, a notice of noncompliant supplemental examination request should be mailed by the Office. See MPEP § 2812.02.

If the examiner determines that a SNQ affecting a patent claim has been raised by at least one of the items of information submitted as part of the request, reexamination will be ordered under 35 U.S.C. 257. Once reexamination under 35 U.S.C. 257 is ordered, the Office may, in its sole discretion, reexamine claims other than the claims for which supplemental examination has been requested. See 35 U.S.C. 303(a).

As a general rule, the Office will analyze a claim for which supplemental examination is requested only in light of the item(s) of information identified for that claim. For example, if the patent owner requests supplemental examination of claim 1 in light of three items of information, and requests supplemental examination of claim 5 in light of two other items of information, the Office will analyze, in general, only claim 1 in light of the three items of information identified for claim 1, and only claim 5 in light of the two items of information identified for claim 5. The examiner, however, has the discretion to determine whether any of the items of information properly submitted with the request raises a SNQ affecting any of the claims for which supplemental examination is requested. Based on the facts given in the above example, the examiner has the option to determine whether any of the five items of information provided with the request raises a SNQ affecting either claim 1 or claim 5. In other words, the examiner has the option of analyzing the items of information provided with the request with respect to any of the claims for which supplemental examination is requested, in a manner other than that provided by the patent owner in the request. The patent owner, however, is not entitled to a determination on a claim for which the required explanation under 37 CFR 1.610(b)(5) has not been provided.

Amendments and/or new claims presented in any copending post-patent Office proceeding for the patent to be examined will not be considered nor commented upon when deciding a request for supplemental examination. However, if after reexamination of the patent under 35 U.S.C. 257 has been ordered, a certificate or reissued patent has been issued which amends the claims for which reexamination has been ordered under 35 U.S.C. 257, reexamination should be on the basis of the claims as amended by that certificate or reissued patent, because the certificate becomes part of the patent as of its issue date or the original patent is surrendered and replaced by the reissued patent as of the issue date of the reissued patent.

2816.02 Criteria for Making the Determination [R-07.2015]

The criteria for making the determination on the request for supplemental examination is whether any of the items of information submitted with or as part of the request raise a substantial new question of patentability affecting at least one claim of the patent. See 35 U.S.C. 257(a).

I.SUBSTANTIAL NEW QUESTION OF PATENTABILITY (SNQ)

The examiner will determine if a SNQ is raised by each item of information. The SNQ standard in supplemental examination proceedings is identical to the "substantial new question of patentability" standard in ex parte reexamination proceedings. The meaning and scope of the term "a substantial new question of patentability" is not defined in the statute, and must be developed on a case-by-case basis, with reference to earlier case law involving ex parte reexamination proceedings.

If an item of information raises a substantial new question of patentability (SNQ) for at least one claim of the patent, then a substantial new question of patentability as to the claim is present, unless the same question of patentability has already been: (A) decided in a final holding of invalidity by a federal court in a decision on the merits involving the claim, after all appeals; (B) decided in an earlier concluded examination or review of the patent by the Office; or (C) raised to or by the Office in a pending reexamination or supplemental examination of the patent. Issues involving 35 U.S.C. 325(d) must be referred to the Director of the CRU. An "earlier concluded examination or review" of the patent is: (A) the original examination of the application which matured into the patent; (B) the examination of the patent in a reissue application that has resulted in a reissue of the patent; (C) the examination of the patent in an earlier concluded reexamination or supplemental examination of the patent; (D) the review of the patent in an earlier concluded trial by the Patent Trial and Appeal Board, such as a post-grant review, inter partes review, or covered business method review of the patent; or (E) any other contested proceeding, which has been concluded and which involved the patent.

For example, the same question of patentability may already have been decided if the Office has previously considered, in an earlier concluded examination or review of the patent, the same question of patentability based on the same prior art. See In re Recreative Technologies, 83 F.3d 1394, 38 USPQ2d 1776 (Fed. Cir. 1996). Prior art which has been cited or considered by the Office is referred to, for the sake of expediency, as "old art," as coined by the Federal Circuit in its decision in In re Hiniker, 150 F.3d 1362, 1365-66, 47 USPQ2d 1523, 1526 (Fed. Cir. 1998). Reliance on old art does not necessarily preclude the existence of a substantial new question of patentability (SNQ) that is based exclusively on that old art. See Public Law 107-273, 116 Stat. 1758, 1899-1906 (2002), which expanded the scope of what qualifies for a SNQ. Determinations on whether a SNQ exists in such an instance shall be based upon a fact-specific inquiry done on a case-by-case basis. For example, a SNQ may be based solely on old art where the old art is being presented/viewed in a new light, or in a different way, as compared with its use in the earlier concluded examination(s) or review(s), in view of a material new argument or interpretation presented in the request.

The answer to the question of whether a substantial new question of patentability (SNQ) exists, and therefore whether reexamination may be ordered, is decided by the Central Reexamination Unit (CRU), under the authority delegated by the Director of the USPTO.

An item of information raises a substantial new question of patentability where there is a substantial likelihood that a reasonable examiner would consider the item of information important in deciding whether or not the claim is patentable. For example, if the supplemental examination request states and explains that there may be a potential issue under 35 U.S.C. 101 regarding claim 5, the examiner would review the supplemental examination record to decide whether there is a substantial likelihood that a reasonable examiner would find the item of information (e.g., the discussion in the request regarding claim 5 and the potential issue under 35 U.S.C. 101) important in determining the patentability of claim 5. If the item of information would be considered important, then the examiner should find a substantial new question of patentability unless the same question of patentability has already been decided as to the claim in a final holding of invalidity by a federal court, decided by the Office in an earlier concluded examination or review, or raised to or by the Office in a pending reexamination or supplemental examination of the patent. For example, the same question of patentability may have already been decided by the Office where the examiner finds that the items of information, which are newly provided prior art patents or printed publications, are merely cumulative to prior art already fully considered by the Office in an earlier concluded examination or review of the claim.

For a substantial new question of patentability (SNQ) to be present, it is only necessary that: (A) an item of information raises a SNQ regarding at least one claim, i.e., the teaching of the item of information is such that a reasonable examiner would consider the teaching to be important in deciding whether or not the claim is patentable; and (B) the same question of patentability as to the claim has not been decided by the Office in an earlier concluded examination or review of the patent, decided in a final holding of invalidity (after all appeals) by a federal court in a decision on the merits involving the claim, or raised to or by the Office in a pending reexamination or supplemental examination of the patent. It is not necessary that a "prima facie" case of unpatentability exist as to the claim in order for "a substantial new question of patentability" to be present as to the claim. Thus, a substantial new question of patentability as to a patent claim could be present even if the examiner would not necessarily reject the claim as either fully anticipated by, or obvious in view of, the items of information. As to the importance of the difference between a substantial new question of patentability and a "prima facie" case of unpatentability, see generally In re Etter, 756 F.2d 852, 857 n.5, 225 USPQ 1, 4 n.5 (Fed. Cir. 1985).

Note that the clarification of the legal standard for determining obviousness under 35 U.S.C. 103 in KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007) does not alter the legal standard for determining whether a SNQ exists.

II.POLICY IN SPECIFIC SITUATIONS

An item of information limited to a correction of factual information, alone, may not raise a substantial new question of patentability (SNQ). 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 SNQ, 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. 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. For this reason, 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. See MPEP § 2809.01.

Example of Determination on Information Directed to a Missing Domestic Benefit Claim

The patent owner informs the Office, in a request for supplemental examination, that the effective filing date of the patent to be examined should be corrected to reflect the earlier filing date of a parent patent. The request includes, as an item of information, a copy of the parent patent and a discussion within the body of the request explaining how each claim limitation of the patent to be examined is supported by the disclosure of the parent patent. The request also includes, as a second item of information, a copy of an intervening patent or printed publication that caused the patent owner to reconsider the effective filing date of the claims. In such a case, the examiner will first determine whether the second item of information, i.e., the intervening reference, would raise a substantial new question of patentability (SNQ) if the effective filing date of the patent to be examined remains unchanged and is not corrected.

If the examiner determines that a SNQ would be raised by the intervening reference if the effective filing date of the patent to be examined remains unchanged and is not corrected, the examiner may, at the examiner’s option, then make a preliminary determination of whether the patent owner is entitled to the benefit of the earlier filing date by, for example, analyzing whether the claim limitations of the patent to be examined are supported by the disclosure of the parent patent. A final determination, however, that the patent owner is entitled to the benefit of the earlier filing date will, in general, only be made during any resulting reexamination proceeding, when, for example, any appropriate amendment to the specification, and the required petition for an unintentionally delayed benefit claim under 37 CFR 1.78, may be filed. See MPEP §§ 28132813.01. For a discussion of the explanation under 37 CFR 1.610(b)(5) that must be provided in such a case, see MPEP § 2811.01, subsection III. Where the examiner determines that a substantial new question of patentability is raised, reexamination will be ordered, and the domestic benefit claim may be added during the resulting reexamination proceeding. See MPEP § 2809.01 and MPEP § 2816.03, subsection II.

If the examiner determines that the intervening reference does not raise a substantial new question of patentability even if the effective filing date of the patent to be examined remains unchanged and is not corrected, then the item of information limited to the correction of the missing domestic benefit claim, i.e., the parent patent and the discussion within the body of the request showing how each claim limitation is supported by the disclosure of the parent patent, will not be further considered on the merits. The examiner will issue a supplemental examination certificate indicating that no substantial new question of patentability is raised by the request, and the domestic benefit claim will not be added to the patent. See MPEP § 2816.03, subsection II.

Example of a Determination on Information Directed to the Deletion of an Earlier-Obtained Domestic Benefit Claim

The patent owner, in a request for supplemental examination, requests the deletion of an earlier-obtained domestic benefit claim. The request includes, as an item of information, an intervening reference which caused the patent owner to reconsider the effective filing date of the claims, and which would pre-date the effective filing date of the patent to be examined, if the domestic benefit claim is deleted. The request also includes a detailed explanation of how the intervening reference may be applied to the patent claims if the domestic benefit claim is deleted. See MPEP § 2811.01, subsection III. In this case, the examiner would determine whether the intervening reference would raise a substantial new question of patentability (SNQ) affecting the identified claims of the patent if the domestic benefit claim is deleted and the effective filing date of the patent to be examined is corrected to an appropriate later filing date. If the examiner determines that the intervening reference does not raise a SNQ, then the examiner will issue a supplemental examination certificate indicating that no SNQ is raised by the request. If the examiner determines that the intervening reference raises a SNQ, then the examiner will issue a supplemental examination certificate indicating that a SNQ affecting at least one claim of the patent is raised in the request. Reexamination will be ordered, and the domestic benefit claim may be corrected during the resulting reexamination proceeding. Patent owners are reminded, however, that the deletion of the domestic benefit claim in this example will not operate to extend the term of the patent. See MPEP § 2809.01 and MPEP § 2816.03, subsection II.

Determination Where the Request Only Includes Information Limited to the Correction of Factual Information

If the only information provided with the request is solely directed to the correction of factual information, such as the correction of a missing or erroneous foreign priority or domestic benefit claim, or the correction of the common ownership of the claims, which does not, itself, raise a substantial new question of patentability (SNQ), then (1) the supplemental examination certificate will state that no SNQ is raised in the request for supplemental examination; and (2) the reasons for SNQ determination will indicate that the information regarding the correction of factual information did not raise a SNQ because the patent owner did not include with the request any additional items of information that caused the patentability of the claim(s) to depend upon the corrected factual information.

For example, if the request only includes one item of information, and that item of information is limited to the correction of an erroneous domestic benefit claim, such as, e.g., i.e., a copy of a parent patent and a discussion within the body of the request showing how each claim limitation is supported by the disclosure of the parent patent, then the reasons for SNQ determination should indicate that the information regarding the domestic benefit claim did not raise a SNQ because the patent owner did not include with the request any intervening art or other information that caused the patentability of the claim(s) to depend upon the domestic benefit claim. See MPEP § 2809.01.

Determination Where the Request Includes Information Limited to Correction of Factual Information and Additional Information Unrelated to the Factual Information to be Corrected

Alternatively, the request may include one or more additional items of information which are unrelated to the factual information to be corrected, but which raise a substantial new question of patentability (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. If the examiner determines that a SNQ is raised in the request, the examiner may, at the examiner’s option, make a preliminary determination of whether the patent owner is entitled to the benefit of the corrected benefit claim, as discussed previously. Reexamination will be ordered, and the domestic benefit claim may be corrected during the resulting reexamination proceeding. See MPEP § 2809.01 and MPEP § 2816.03, subsection II. If the examiner determines that no SNQ is raised by the additional item(s) of information, the information limited to a correction of the domestic benefit claim will not be further considered on the merits. A supplemental examination certificate, which indicates that no SNQ is raised by the request, will be issued, and the benefit claim will not be corrected.

See also MPEP § 2242, subsections II and III, for more information on how a substantial new question of patentability may be determined in specific situations.

2816.03 Content of the Determination [R-11.2013]

35 U.S.C. 257  Supplemental examinations to consider, reconsider, or correct information.

  • (a) REQUEST FOR SUPPLEMENTAL EXAMINATION.—A patent owner may request supplemental examination of a patent in the Office to consider, reconsider, or correct information believed to be relevant to the patent, in accordance with such requirements as the Director may establish. Within 3 months after the date a request for supplemental examination meeting the requirements of this section is received, the Director shall conduct the supplemental examination and shall conclude such examination by issuing a certificate indicating whether the information presented in the request raises a substantial new question of patentability.

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37 CFR 1.620 Conduct of supplemental examination proceeding.

  • (a) Within three months after the filing date of a request for supplemental examination, the Office will determine whether a substantial new question of patentability affecting any claim of the patent is raised by any of the items of information presented in the request. The determination will generally be limited to a review of the item(s) of information identified in the request as applied to the identified claim(s) of the patent. The determination will be based on the claims in effect at the time of the determination and will become a part of the official record of the patent.

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Once a determination is made on the request as to whether the items of information raise a substantial new question of patentability (SNQ), the examiner will prepare: (1) the Supplemental Examination Certificate; and (2) the Reasons for Substantial New Question of Patentability Determination (the "reasons document").

I.THE SUPPLEMENTAL EXAMINATION CERTIFICATE

The supplemental examination certificate is prepared by utilizing a form captioned "Supplemental Examination Certificate." The form lists all of the items of information properly submitted as part of the supplemental examination request and states whether a SNQ affecting at least one claim of the patent is raised in the request.

Examiners should not initial, sign and date the listing of the items of information (37 CFR 1.610(b)(2)) submitted with the request. This practice is different from the current practice regarding prior art citations in applications or proceedings involving patents. There is no need to initial, sign, and date the listing submitted under 37 CFR 1.610(b)(2) because the supplemental examination certificate includes a citation to each item of information properly submitted as part of the request.

A copy of a supplemental examination certificate indicating that a SNQ affecting at least one claim of the patent is raised in the request, and a copy of a supplemental examination certificate indicating that no SNQ is raised in the request, appear below.

Supplemental examination certificate - New question of patentability - Page 1 of 1.
Supplemental examination certificate - No new question of patentability - Page 1 of 1.
II.THE REASONS FOR SUBSTANTIAL NEW QUESTION OF PATENTABILITY DETERMINATION (REASONS DOCUMENT)

The Reasons for Substantial New Question of Patentability (SNQ) Determination (or "reasons document" ) will typically accompany the supplemental examination certificate. This document will explain, for each item of information, why each item does or does not raise a SNQ. Form paragraph 28.01 should be used as the heading for the reasons document.

A.Where At Least One Substantial New Question of Patentability is Found

If the request is determined to raise at least one SNQ, the supplemental examination certificate will indicate that a SNQ affecting at least one claim of the patent has been raised, and will refer to the reasons document. For each item of information, the reasons document should include:

  • (1) A statement that the item of information, as presented in the request, raises a SNQ, and an identification of the claims for which a SNQ is raised.
  • (2) Where appropriate, a statement that the item of information, as presented in the request, does not raise a SNQ, and an identification of the claims for which a SNQ is not raised.
  • (3) A brief statement of the basis for the determination that a SNQ affecting the identified claims was raised by the item, or was not raised by the item.

Where an item of information is determined to raise a SNQ, but the SNQ is determined to affect less than all of the claims which were requested to be examined in view of the item, the reasons document may also include, in addition to (1) above, an identification of the claims for which a SNQ was not raised by the item, and a brief statement of the basis for that determination.

For each item of information, the examiner need only identify one SNQ (e.g., a teaching that would be important to a reasonable examiner when determining patentability) for each identified claim. The examiner may rely upon a determination that a SNQ is raised for an independent claim as the basis that a SNQ is raised for each dependent claim that incorporates the subject matter of the independent claim, if the dependent claims were also requested to be examined by the patent owner. For example, if the examiner finds that item of information A raises a SNQ for independent claim 1, the examiner may rely upon the explanation of how item A raises a SNQ for claim 1 as the explanation of how item A raises a SNQ for dependent claims 2-10, which were also requested to be examined by the patent owner. Form paragraph 28.03 should be used to explain why an item of information raises a SNQ.

For each item of information, if the examiner determines that a substantial new question of patentability is raised by the item, the reasons document should point out:

  • (A) That the item of information raises a SNQ affecting specific claims of the patent (where the specific claims are listed);
  • (B) The recitation of the specific claim limitation(s) affected by the teaching(s) of the item of information;
  • (C) What the teaching(s) are, and where in the item of information the teaching(s) are to be found;
  • (D) Why a reasonable examiner would consider the teaching(s) to be important in determining the patentability of the specific claim(s) (where the specific claims are listed) for which supplemental examination is being requested; and
  • (E) Where appropriate, whether the item of information is prior art (e.g., due to its issue date or publication date) to specific patent claims (where the specific claims are listed) and, when applicable, the reasons why the item of information is deemed to be available as prior art against the patent claims.

For each item of information, if the examiner determines that a substantial new question of patentability is not raised by the item, the reasons document should point out:

  • (A) That the item of information does not raise a SNQ affecting specific claims of the patent (where the specific claims are listed);
  • (B) The recitation of the specific claim limitation(s), if any, which were discussed in the request with respect to the teaching(s) of the item of information;
  • (C) What the teaching(s) are, if any, and where in the item of information the teaching(s) are to be found;
  • (D) Why a reasonable examiner would not consider the teaching(s) to be important in determining the patentability of the specific claim(s) (where the specific claims are listed) for which supplemental examination is being requested (e.g., why the teaching(s) are cumulative to the teachings considered in the earlier concluded examination or review of the patent, or are not important even though the teaching(s) are not cumulative and are available against the claim);
  • (E) Where appropriate, whether the item of information is available as prior art (e.g., due to its issue date or publication date) against specific patent claims (where specific claims are listed) and, when applicable, the reasons why the item of information is or is not deemed to be available as prior art against the patent claims; and
  • (F) If the item of information is not deemed to be available as prior art against specific patent claims, a further statement, when applicable, that the item does not contain information that raises any other issues of patentability with respect to the specific claims (where the specific claims are listed). For example, a request for the supplemental examination of claims 1-3 includes, as an item of information, a copy of a foreign search report which is determined not to raise any issues of patentability under 35 U.S.C. 101, 102, 103, or 35 U.S.C. 112 affecting claims 1-3. In the reasons document, the examiner should explain why the foreign search report does not qualify as prior art (under, e.g., 35 U.S.C. 102 or 103) against any of claims 1-3, and should also state that the foreign search report does not contain information that raises any other issues of patentability with respect to claims 1-3 of the patent.

Where applicable, the examiner should also explain why an item of information that was cited in the record of the patent is barred by the guidelines set forth in MPEP § 2242, subsection II.A.

Where it is not clear from the patent file or supplemental examination record, the reasons document may optionally include, for each item of information:

  • (i) An explanation that the teaching was not previously considered or addressed in any prior examination or proceeding involving the patent or a final holding of invalidity of the patent by the federal courts; or
  • (ii) An explanation that the teaching, if considered in a previous examination or proceeding of the patent or of the application that became the patent, is presented in a new light, or in a different way, by the arguments presented in the request.

If the examiner determines that an item of information does not raise a SNQ affecting every claim to which the item of information was applied in the request, the examiner should state the claim(s) for which the SNQ was not raised and a brief statement of the reasons why the item did not raise a SNQ affecting the identified claim(s). If the patent owner applied the item of information to an independent claim, but did not apply the item to its dependent claims, the examiner may rely upon a determination that a SNQ is not raised for the independent claim as the basis for the determination that a SNQ is not raised for each dependent claim, for which supplemental examination was also requested, and which incorporates the subject matter of the independent claim. For example, if the patent owner provided a detailed explanation of the manner of applying item of information A to independent claim 11 as required by 37 CFR 1.610(b)(5), and relied on that explanation as the only required explanation for dependent claims 12-21 (for which supplemental examination was also requested), and if the examiner finds that item of information A does not raise a SNQ for independent claim 11, then the examiner may rely upon the explanation of how item A does not raise a SNQ for claim 11 as the explanation for its dependent claims 12-21. Form paragraph 28.02 should be used to explain why an item of information does not raise a SNQ.

The examiner will not decide, and no statement should be made, as to whether the claims are rejected over the items of information. It is unnecessary for the examiner to decide questions of patentability of the claims in a supplemental examination proceeding. The examiner only decides whether there is a SNQ.

B.Where No Substantial New Question of Patentability is Found

If the examiner determines that none of the items of information properly submitted as part of the request raise a SNQ, the supplemental examination certificate will state that no SNQ is raised in the request for supplemental examination, and will refer to the Reasons for Substantial New Question of Patentability Determination (i.e., "the reasons document"). The reasons document should explain why each item of information did not raise a SNQ for every claim to which that item of information was applied in the supplemental examination request. See subsection II.A., above. Form paragraph 28.02 should be used to explain why each item of information does not raise a SNQ.

C.Where the Request Includes Factual Information to be Corrected

Where the request includes an item of information limited to the correction of factual information, the request should also include one or more additional item(s) of information, such as one or more intervening reference(s), that potentially provide evidence that the patentability of the claims depends upon the factual information to be corrected. 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.

Example 1. The request includes a first item of information limited to the addition of a claim for the benefit of an earlier effective filing date, a second item of information which is an intervening reference, and a detailed explanation of how the intervening reference may be applied to the patent claims if the domestic benefit claim remains unchanged, and is not corrected. If the examiner determines that a SNQ is raised by the intervening reference, the examiner should include, in the reasons document, the reasons why the intervening reference raises a SNQ, in accordance with the general guidance set forth above in subsection II.A. If the examiner determines that no SNQ is raised by the intervening reference, the examiner should provide, in the reasons document, the reasons for the determination that the second item of information, i.e., the intervening reference, does not raise a SNQ in accordance with the general guidance set forth above in subsection II.B., even if the domestic benefit claim remains unchanged and is not corrected. The examiner should also provide a statement to the effect that the first item of information, which is limited to the correction of a domestic benefit claim, does not raise a SNQ because the patent owner did not include with the request any additional items of information that cause the patentability of the claim(s) to depend upon the domestic benefit claim, even if the domestic benefit claim remains unchanged and is not corrected.

Example 2. The request includes a first item of information limited to the deletion of a benefit claim, a second item of information which is a reference that pre-dates the effective filing date of the patent if the benefit claim is deleted (i.e., an intervening reference), and a detailed explanation of how the intervening reference may be applied to the patent claims if the benefit claim is deleted. If the examiner determines that a SNQ is raised by the intervening reference if the benefit claim is deleted, the examiner should include, in the reasons document, the reasons why the intervening reference raises a SNQ if the domestic benefit claim is deleted, in accordance with the general guidance set forth above in subsection II.A. If the examiner determines that no SNQ is raised by the intervening reference, the examiner should provide, in the reasons document, the reasons for the determination that the second item of information, i.e., the intervening reference, does not raise a SNQ in accordance with the general guidance set forth above in subsection II.B., even if the domestic benefit claim was deleted. The examiner should also provide a statement to the effect that the first item of information, which is limited to the deletion of the domestic benefit claim, does not raise a SNQ because the patent owner did not include with the request any additional items of information that cause the patentability of the claim(s) to depend upon the domestic benefit claim, even if the domestic benefit claim were to be deleted.

D.Panel Review

After an examiner has made a preliminary determination, the examiner will formulate a draft Supplemental Examination Certificate and a draft Reasons for Substantial New Question of Patentability Determination (i.e., a draft "reasons document"). The examiner will then inform his/her CRU Supervisory Patent Reexamination Specialist (SPRS) of his/her preliminary determination. A panel review conference will be convened, and the conference members will review the preliminary determination. See MPEP § 2271.01 for the make-up of the panel. If the conference confirms the examiner’s preliminary determination, the Supplemental Examination Certificate shall be issued by its publication in the Office’s Image File Wrapper System, IFW, which will be viewable in Public PAIR. The reasons document will be labeled "Reasons for SNQ Determination" in IFW, and it will generally be available for viewing at the same time as, or shortly after, the issuance of the certificate. The reasons document will be signed by the examiner, with the two other conferees initialing as "conferee" to indicate their presence in the conference.

If the conference does not confirm the examiner’s preliminary determination, the examiner will reevaluate and make appropriate changes to the draft Supplemental Examination Certificate and draft reasons document, in accordance with any agreement reached at the conference.

E.Form Paragraphs for the Reasons for Substantial New Question of Patentability Determination

The following are the form paragraphs that should be used in the Reasons for Substantial New Question of Patentability Determination:

¶ 28.01 Header for Statement of Reasons for Substantial New Question of Patentability Determination

REASONS FOR SUBSTANTIAL NEW QUESTION OF PATENTABILITY DETERMINATION

¶ 28.02 Reasons for Finding No Substantial New Question of Patentability

[1], as presented in the request, does not raise a substantial new question of patentability because [2].

Examiner Note:

  • 1. In bracket 1, insert the name or description, as appropriate, for the item of information. For example, a patent or patent application publication may be designated using the name of the patentee or first-named inventor, such as "the Jones patent," "the Jones patent application publication," or the number of the patent or patent application publication. A non-patent literature document may be designated by the name of the author, such as the "the Sherwood publication" and the date of the publication, if desired. A sales receipt or invoice should be designated using the date of the receipt, and any appropriate descriptive information, such as "the March 11, 2011, BigBoxStore sales receipt," or "the April 1, 2011 XYZ Corporation invoice." An affidavit or declaration should be designated using the name of the declarant and the date of the affidavit or declaration, such as "the Schmidt declaration dated January 20, 2012." A transcript of an audio or video recording should be designated using the title of the recording and the date of the recording, if applicable, such as "the transcript of the September 16, 2012 XYZ Corporation Marketing Video." A discussion within the body of the request regarding a potential issue under 35 U.S.C. 101 may be designated, for example, as "the discussion on pages 7-11 of the request regarding a potential issue under 35 U.S.C. 101."
  • 2. In bracket 2, insert the reasons for the determination that the item of information does not raise a substantial new question of patentability.

¶ 28.03 Reasons for Finding A Substantial New Question of Patentability

[1], as presented in the request, raises a substantial new question of patentability affecting patent claim(s) [2] because [3].

Examiner Note:

  • 1. In bracket 1, insert the name or description, as appropriate, for the item of information. For example, a patent or patent application publication may be designated using the name of the patentee or first-named inventor, such as "the Jones patent," "the Jones patent application publication," or the number of the patent or patent application publication. A non-patent literature document may be designated by the name of the author, such as the "the Sherwood publication" and the date of the publication, if desired. A sales receipt or invoice should be designated using the date of the receipt, and any appropriate descriptive information, such as " the March 11, 2011, BigBoxStore sales receipt," or "the April 1, 2011, XYZ Corporation invoice." An affidavit or declaration should be designated using the name of the declarant and the date of the affidavit or declaration, such as "the Schmidt declaration dated January 20, 2012." A transcript of an audio or video recording should be designated using the title of the recording and the date of the recording, if applicable, such as "the transcript of the September 16, 2012, XYZ Corporation Marketing Video." A discussion within the body of the request regarding a potential issue under 35 U.S.C. 101 may be designated, for example, as "the discussion on pages 7-11 of the request regarding a potential issue under 35 U.S.C. 101."
  • 2. In bracket 2, insert the claims for which a substantial new question of patentability has been raised.
  • 3. In bracket 3, insert the reasons for the determination that the item of information raises a substantial new question of patentability (SNQ). If a SNQ is found for only a portion of the claims identified with respect to the item of information, then an additional statement may be included explaining why a SNQ was found with respect to some of the identified claims, and why a SNQ was not found with respect to the remainder of the identified claims. For example, if the patent owner requests supplemental examination of claims 1-10 in view of the Schmidt patent, and the examiner finds that a substantial new question of patentability affecting only patent claims 1-5 is raised by that item of information, then the form paragraph may be completed by, for example, stating "The Schmidt patent, as presented in the request, raises a substantial new question of patentability affecting patent claims 1-5 because [provide reasons]. However, the Schmidt patent, as presented in the request, does not raise a substantial new question of patentability affecting patent claims 6-10 because [provide reasons]."

2816.04 Effect of the Determination [R-11.2013]

If the examiner determines that a SNQ 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. See 37 CFR 1.625(b) and (d). See MPEP § 2818.01.

If the supplemental examination certificate indicates that no SNQ 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). See MPEP § 2818.02.

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