37 CFR 1.610 — Content of request for supplemental examination

Ninth Edition, Revision 01.2024

• (a) A request for supplemental examination must be accompanied by the fee for filing a request for supplemental examination as set forth in § 1.20(k)(1) , the fee for reexamination ordered as a result of a supplemental examination proceeding as set forth in § 1.20(k)(2) , and any applicable document size fees as set forth in § 1.20(k)(3) .
• (b) A request for supplemental examination must include:
  • (1) An identification of the number of the patent for which supplemental examination is requested.
  • (2) A list of the items of information that are requested to be considered, reconsidered, or corrected. Where appropriate, the list must meet the requirements of § 1.98(b) .
  • (3) A list identifying any other prior or concurrent post-patent Office proceedings involving the patent for which supplemental examination is being requested, including an identification of the type of proceeding, the identifying number of any such proceeding ( e.g., a control number or reissue application number), and the filing date of any such proceeding.
  • (4) An identification of each claim of the patent for which supplemental examination is requested.
  • (5) 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.
  • (6) A copy of the patent for which supplemental examination is requested and a copy of any disclaimer or certificate issued for the patent.
  • (7) A copy of each item of information listed in paragraph (b)(2) of this section, accompanied by a written English translation of all of the necessary and pertinent parts of any non-English language item of information. The patent owner is not required to submit copies of items of information that form part of the discussion within the body of the request as specified in § 1.605(b) , or copies of U.S. patents and U.S. patent application publications.
  • (8) A summary of the relevant portions of any submitted document, other than the request, that is over 50 pages in length. The summary must include citations to the particular pages containing the relevant portions.
  • (9) 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 § 3.73(c) of this chapter establishing the entirety of the ownership in the patent requested to be examined.
• (c) The request may also include:
  • (1) A cover sheet itemizing each component submitted as part of the request;
  • (2) A table of contents for the request;
  • (3) An explanation of how the claims patentably distinguish over the items of information; and
  • (4) An explanation of why each item of information submitted with the request does or does not raise a substantial new question of patentability.
• (d) The filing date of a request for supplemental examination will not be granted if the request is not in compliance with §§ 1.605 , 1.615 , and this section, subject to the discretion of the Office. If the Office determines that the request, as originally submitted, is not entitled to a filing date, the patent owner will be so notified and will be given an opportunity to complete the request within a specified time. If the patent owner does not timely comply with the notice, the request for supplemental examination will not be granted a filing date and the fee for reexamination as set forth in § 1.20(k)(2) will be refunded. If the patent owner timely files a corrected request in response to the notice that properly addresses all of the defects set forth in the notice and that otherwise complies with all of the requirements of §§ 1.605 , 1.615 , and this section, the filing date of the supplemental examination request will be the receipt date of the corrected request.

[Added, 77 FR 48828, Aug. 14, 2012, effective Sept. 16, 2012]