What is supplemental examination?
Supplemental examination is a USPTO process to reconsider an issued patent as requested by the patent owner. If USPTO grants a request for supplemental examination filed by the patent owner, the examination process is ex parte. This means that only the patent owner corresponds with the USPTO. Third parties do not get involved in the supplemental examination of a granted patent.
What are the grounds for requesting supplemental examination?
Supplemental examination is not limited to consideration of prior art patents and publications [35 USC 207(b)]. Any ground of patentability may support a supplemental exam request. For example, a patent owner may request supplemental exam of its patent based on [MPEP 2801]:
- patent eligible subject matter (Section 101)
- anticipation (Section 102)
- obviousness (Section 103)
- public use or sale
- written description
- indefiniteness (Section 112)
- enablement
- double-patenting
How to file a request for supplemental examination
Contents of a request
A request for supplemental examination should contain the following:
- optional cover sheet itemizing each component submitted as part of the request [MPEP 2811.02];
- optional table of contents;
- patent number;
- list of items of information to be considered, reconsidered or corrected (maximum limit of 12);
- list identifying any other prior or concurrent post-patent USPTO proceedings involving the patent at issue;
- identification of each patent claim for which supplemental examination is requested;
- separate, detailed explanation of the relevance and manner of applying each item of information to each identified claim, which may include two additional optional explanations: (a) explanation of how the claims patentably distinguish over the items of information, and (b) explanation of why each item of information submitted with the request does or does not raise a substantial new question of patentability [MPEP 2811.02];
- copy of patent along with any disclaimer or certificate issued for the patent;
- copy of each item of information, except US patents and US patent publications, accompanied by a written English translation of all necessary and pertinent parts of any non-English language item of information;
- summary of relevant portions of any submitted document over 50 pages long;
- identification of the patent owner(s) and a submission by the patent owner(s) establishing the entirety of ownership in the patent at issue.
For each claim requested to be examined, the detailed explanation required by 37 CFR 1.610(b)(5) for each item of information listed must discuss:
- what the item of information teaches with respect to that claim, or
- which teachings contained in the item of information may be considered by an examiner to be important when determining the patentability of that claim.
The MPEP suggests that it may be ideal to use a claim chart that compares limitation-by-limitation each claim requested to be examined with the teachings of each item of information. [MPEP 2811.01]
The USPTO has provided a Quick Start Guide for efiling a supplemental exam request through EFS-Web.
What types of information may be submitted and considered?
A patent owner is not limited to submitting only prior art printed publications in a supplemental exam request. Items of information that are proper for a supplemental examination request include:
- sales invoice
- transcript of an audio or video recording
When can a request for supplemental examination be filed?
A supplemental exam request can be filed anytime when the patent is still enforceable, which is generally up to six years after expiration of the patent [MPEP 2808].
How much are the USPTO fees for requesting supplemental examination?
As of the date of this post, the large/small entity fees are $4,400/$2,200 for the request and $12,100/$6050 for reexamination ordered as a result of supplemental examination. The reexamination fee is refunded if supplemental examination if the USPTO decides there is no substantial new question of patentability. Additional excess document size fees may apply depending for nonpatent documents having at least 21 pages.
How does the USPTO make a decision on a request for supplemental examination?
Timing of USPTO decision
The USPTO must decide whether a supplemental exam request raises a substantial new question of patentability (aka “SNQ”) within three months of the filing date of the request. If so, the USPTO will order ex parte reexamination of the patent, which will not be limited to patents and printed publications.
Criteria for deciding SNQ
The standard for deciding whether a substantial new question of patentability has arisen is whether 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. [MPEP 2816.02].
Conclusion of examination
The proceeding concludes with the electronic issuance of a supplemental examination certificate, indicating the result of whether a substantial new question of patentability was raised.
