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2817 Conclusion of Supplemental Examination [R-11.2013]

37 CFR 1.625 Conclusion of supplemental examination; publication of supplemental examination certificate; procedure after conclusion.

  • (a) A supplemental examination proceeding will conclude with the electronic issuance of a supplemental examination certificate. The supplemental examination certificate will indicate the result of the determination whether any of the items of information presented in the request raised a substantial new question of patentability.

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35 U.S.C. 257(a) requires that supplemental examination "shall conclude with the issuance of a certificate indicating whether the information presented in the request raises a substantial new question of patentability." A supplemental examination proceeding is initiated by the filing of a request for supplemental examination that complies with 35 U.S.C. 257 and 37 CFR 1.601et seq., and all other applicable rules, and ends with the electronic issuance of the supplemental examination certificate. The supplemental examination certificate will state the result of the Office’s determination whether any of the items of information submitted as part of the request raises a SNQ.

If the supplemental examination certificate states that a SNQ is raised by one or more of the items of information submitted as part of the request, ex parte reexamination of the patent will be ordered under 35 U.S.C. 257. In other words, if the supplemental examination certificate states that a SNQ is raised, an ex parte reexamination proceeding will be initiated after the conclusion of the supplemental examination proceeding. If, however, the supplemental examination certificate states that no substantial new question of patentability is raised in the request, then an ex parte reexamination proceeding will not be initiated at the conclusion of the supplemental examination proceeding.

2817.01 Processing and Electronic Issuance of Supplemental Examination Certificate [R-11.2013]

After the examiner has prepared the Supplemental Examination Certificate and the Reasons for Substantial New Question of Patentability Determination ("reasons document"), these documents, and the supplemental examination file, are referred to the Central Reexamination Unit (CRU) Legal Instrument Examiner (LIE) for coordinating the clerical processing carried out by the technical support staff.

The Supplemental Examination Certificate and the reasons document are made of record in the electronic file of the supplemental examination proceeding. Copies of both documents are also mailed to the patent owner.

The supplemental examination certificate will be electronically issued in the Office’s electronic Image File Wrapper system and will be visible in Public PAIR within three months of the filing date of the request. Electronic issuance of the supplemental examination certificate will permit the Office to issue the certificate within the three-month statutory period and will permit sufficient time to review the items of information submitted as part of the request. The certificate will be viewable by the public in Public PAIR.

The electronically issued supplemental examination certificate will display the filing date of the request. The electronically issued supplemental examination certificate will also list each of the items of information properly submitted as part of the request, and state whether the request raises a SNQ affecting at least one claim of the patent.

If the supplemental examination certificate indicates that a SNQ is raised in the request, ex parte reexamination of the patent will be ordered under 35 U.S.C. 257. Upon the conclusion of the ex parte reexamination proceeding, an ex parte reexamination certificate, which will include a statement specifying that ex parte reexamination was ordered under 35 U.S.C. 257, will be published as an attachment to the patent by the Office’s patent publication process in accordance with established ex parte reexamination practice (see 37 CFR 1.570). The electronically issued supplemental examination certificate will also remain as part of the public record for the patent.

If the supplemental examination certificate indicates that no SNQ is raised in the request, the electronically issued supplemental examination certificate, which will remain as part of the public record for the patent, will also be published in due course by the Office’s patent publication process as an attachment to the patent. 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).

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