MPEP § 2811 — MPEP § 2811
Current through: 2022-07-01

2811-Content of Request for Supplemental Examination 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2800 

 Section 2811 
 

 
 
 
 
 
 2811 Content of Request for Supplemental
 Examination [R-01.2024]
 

 
 37 CFR 1.610 Content of request for supplemental examination. 

 
 (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) establishing the entirety of the ownership in
 the patent requested to be examined.
 

 
 

 
 *****

 

 37 CFR
 1.610(a) requires payment of the fee specified in 37 CFR
 1.20(k)(1) , the fee for reexamination ordered as a result of a
 supplemental examination proceeding as set forth in 37 CFR
 1.20(k)(2) , and any applicable document size fees as set forth in
 37 CFR
 1.20(k)(3) . See MPEP § 2810 . 
 

 37 CFR
 1.610(b) sets forth content requirements for a request for
 supplemental examination. The elements are as follows:
 

 I. AN IDENTIFICATION OF THE PATENT FOR WHICH SUPPLEMENTAL EXAMINATION IS
 REQUESTED 37 CFR
 1.610(b)(1) requires that the request include an identification of
 the number of the patent for which supplemental examination is requested. 
 

 II. A LIST OF ALL ITEMS OF INFORMATION SUBMITTED WITH OR AS PART OF THE
 REQUEST 37 CFR
 1.610(b)(2) requires that the request include 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 37 CFR 1.98(b) . For example, the
 list must include a publication date for each item of information, if applicable. If the
 item of information is a U.S. patent, it must be identified by inventor, patent number,
 and issue date , as required by 37 CFR 1.98(b)(1) . 
 

 This list must include each of the items of
 information submitted with or as part of the request. See
 MPEP §
 2809 for more information about requirements for items of
 information. If the item of information is a discussion contained within the body of the
 request, the pages of the request on which the discussion appears, and a brief
 description of the item of information, such as “discussion in request of why the claims
 are patentable under 35 U.S.C. 101 , pages 7 - 11,” must be listed. Patent owners are
 strongly encouraged to use Part B of Office Form PTO/SB/59 to provide the list. 
 

 The list must be limited to the
 items of information for which a separate, detailed explanation is provided in the
 request, as required by 37 CFR 1.610(b)(5) , and, of which a
 copy is provided with the request, when required by 37 CFR
 1.610(b)(7) . If the list contains an item of information for which
 the required detailed explanation and required copy (if applicable) are not provided
 with the request, the request may not be granted a filing date, and a notice of
 noncompliant supplemental examination request, informing the patent owner of the
 defects, may be mailed by the Office.
 

 The list should identify each item of the information in
 a manner that clearly corresponds to any copy of the item of
 information provided with the request and to the detailed explanation of the manner of
 applying the item of information, pursuant to 37 CFR
 1.610(b)(5) , provided in the request. 
 

 The request must include a separate, detailed explanation
 of the relevance and manner of applying each item of information listed pursuant to
 37 CFR
 1.610(b)(2) to each claim of the patent for which supplemental
 examination is requested. See 37 CFR 1.610(b)(5) . See also
 subsection V below, and MPEP § 2811.01 .
 

 III. A LIST OF PRIOR OR CONCURRENT POST-PATENT OFFICE PROCEEDINGS 37 CFR
 1.610(b)(3) requires that the request include a list identifying
 any other prior or concurrent post-patent Office proceedings involving the patent for
 which the current supplemental examination is requested, including: an identification of
 the type of proceeding, the identification of Office serial number of any such
 proceeding ( e.g., a control number or a reissue application number),
 and the filing date of any such proceeding. The type of proceeding may be, for example,
 an ex parte or inter partes reexamination
 proceeding, a reissue application, an interference, another supplemental examination
 proceeding, a post-grant review proceeding, an inter partes review
 proceeding, or a covered business method review proceeding. Patent owners are strongly
 encouraged to use Office Form PTO/SB/59 to provide a list with a request. 
 

 If such notice has not been previously provided with the
 request, 37
 CFR 1.620(d) requires that the patent owner must, as soon as
 possible upon the discovery of any other prior or concurrent post-patent Office
 proceeding involving the patent for which the supplemental examination is requested,
 file a paper limited to notifying the Office of the post-patent Office proceeding. See
 MPEP §
 2820 .
 

 IV. IDENTIFICATION OF EACH CLAIM OF THE PATENT FOR WHICH SUPPLEMENTAL EXAMINATION IS
 REQUESTED 37 CFR
 1.610(b)(4) requires that the request include an identification of
 each claim of the patent for which supplemental examination is requested. The result of
 a supplemental examination is a determination whether any of the items of information
 raises a SNQ. Because patentability relates to the claims of the patent, the patent
 owner must identify the patent claims to be examined in order for the Office to
 determine whether a SNQ affecting those claims has been raised by an item of
 information.
 

 For example, if the information raises a question as to
 the adequacy of the written description portion of the specification, the SNQ pertains
 to the question of whether the specification provides adequate support under
 35 U.S.C.
 112 for the identified claim. If the information raises a question
 regarding whether the claimed invention may be anticipated or may be obvious, the SNQ
 pertains to the question of whether the identified claim is patentable under
 35 U.S.C.
 102 or 35 U.S.C. 103 in view of the item of
 information. 
 

 V. A SEPARATE, DETAILED EXPLANATION OF RELEVANCE AND MANNER OF APPLYING EACH ITEM OF
 INFORMATION TO EACH PATENT CLAIM FOR WHICH SUPPLEMENTAL EXAMINATION IS REQUESTED
 37 CFR
 1.610(b)(5) requires that the request 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. See
 MPEP §
 2811.01 for a detailed discussion of this requirement. In
 addition, patent owners may also consider the guidance set forth in
 MPEP §§
 2214 and 2217 , which govern the content of a
 request for ex parte reexamination.
 

 VI. A COPY OF THE PATENT FOR WHICH SUPPLEMENTAL EXAMINATION IS REQUESTED, AND A COPY
 OF ANY DISCLAIMER OR CERTIFICATE ISSUED FOR THE PATENT 37 CFR
 1.610(b)(6) requires that the request include a copy of the patent
 for which supplemental examination is requested, and a copy of any disclaimer or
 certificate issued for the patent. A copy of the patent, for which supplemental
 examination is requested, should be provided with the specification and claims submitted
 in a double column format. The drawing pages of the printed patent are
 presented as they appear in the printed patent; the same is true for the front page of
 the patent. Thus, a full copy of the printed patent (including the front page) can be
 used to provide the abstract, drawings, specification, and claims of the patent for the
 request for supplemental examination. The printed patent is to be reproduced on only one
 side of the paper; submission of a two-sided copy of the patent is not proper.
 

 A “certificate issued for the patent” includes, for
 example, a certificate of correction, a certificate of extension, a supplemental
 examination certificate, a post-grant review certificate, an inter
 partes review certificate, an ex parte reexamination
 certificate, and/or an inter partes reexamination certificate issued
 for the patent. Any disclaimer or certificate issued in the patent generally becomes a
 part of the patent. Thus, a copy of each must be supplied in order to provide the
 complete patent. The copy must have each page plainly written on only one side of a
 sheet of paper.
 

 VII. A COPY OF EACH ITEM OF INFORMATION 37 CFR
 1.610(b)(7) requires that the request include a copy of each item
 of information listed in 37 CFR 1.610(b)(2) , accompanied by a
 written English translation of all of the necessary and pertinent parts of any
 non-English language document. See MPEP § 609.04(a) , subsection III, for
 more information regarding translations of non-English language documents. The
 requirement of 37 CFR 1.610(b)(7) is important
 because it allows for all materials to be available to the examiner for full
 consideration within the three-month statutory time period for supplemental examination.
 The copy of each item of information listed under 37 CFR
 1.610(b)(2) must be legible, and must be otherwise in full
 compliance with 37 CFR
 1.52 . See 37 CFR 1.615 and
 MPEP §
 2807 . The request must not include a copy of any item of
 information that is not listed under 37 CFR 1.610(b)(2) . 
 

 Items of information that form part of the discussion
 within the body of the request as specified in 37 CFR
 1.605(b) are not required to be submitted. As discussed
 previously, if the information to be considered, reconsidered, or corrected is not, at
 least in part, contained within or based on any supporting document submitted as part of
 the request, the discussion within the body of the request relative to the information
 will be considered as the item of information, a copy of which is not required under
 37 CFR
 1.610(b)(7) to be separately submitted. See MPEP §
 2809 , subsection II.C.
 

 Copies of U.S. patents and U.S. patent application
 publications are not required, but may be submitted.
 

 VIII. A SUMMARY OF THE RELEVANT PORTIONS OF ANY DOCUMENT, OTHER THAN THE REQUEST, WHICH
 IS OVER FIFTY PAGES IN LENGTH 37 CFR
 1.610(b)(8) requires that the request include a summary of the
 relevant portions of any submitted document (including patent documents), other than the
 request, that is over fifty (50) pages in length. The summary must include citations to
 the particular pages containing the relevant portions. This summary may be similar to
 the requirement for information disclosure statements of a discussion of the relevant
 and pertinent parts of a non-English language document. See MPEP § 609.04(a) ,
 subsection III. This requirement will assist the Office in treating information
 presented in lengthy documents within the statutory three-month time period. Patent
 owners are encouraged to redact lengthy documents to include only the relevant portions,
 unless the redaction would remove context such that the examiner would not be provided
 with a full indication of the teachings of the item of information with respect to the
 claimed invention.
 

 IX. AN IDENTIFICATION OF THE OWNER(S) OF THE ENTIRE RIGHT, TITLE, AND INTEREST IN THE
 PATENT REQUESTED TO BE EXAMINED, AND A SUBMISSION UNDER 37 CFR 3.73(c) 37 CFR
 1.610(b) requires that the request must include 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 37 CFR 3.73(c) 
 establishing the entirety of the ownership in the patent requested to be examined. A
 request for supplemental examination of a patent must be filed by the owner(s) of the
 entire right, title, and interest. See 37 CFR 1.601(a) . This is because the
 scope of a patent may be changed ( e.g., by cancellation or amendment
 of the claims) during any ex parte reexamination proceeding that may
 be ordered as a result of the supplemental examination proceeding, and this change must
 be binding on all parties having an ownership interest in the patent. Furthermore, the
 Office has consistently required that all parties having an interest in a patent are
 deemed “a patent owner” as a composite entity and must act together in proceedings
 before the Office. See MPEP §§ 301 and 324 or 325 .
 This is also consistent with ex parte reexamination practice, which
 requires a patent owner requester of an ex parte reexamination to
 comply with the provisions of 37 CFR 3.71 and 3.73 for
 establishing an assignee’s right to take action when submitting a power of attorney. See
 MPEP §
 2222 .
 

 The Office may, under rare circumstances, permit less than
 all of the owners to file a request for supplemental examination if a grantable petition
 under 37 CFR
 1.183 requesting waiver of the provisions of 37 CFR 3.71 
 and 3.73(c) is filed. See MPEP §
 2803 .
 

 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.” 
 

 Form PTO/SB/59 should be helpful to persons filing
 requests for supplemental examination. The use of this form as, for example, the
 transmittal form, list of items of information, list of prior or concurrent post-patent
 Office proceedings, and cover sheet for a request for supplemental examination is
 encouraged. The following is a copy of form PTO/SB/59. 
 

 

 

 

 

 

 
 2811.01 Detailed Explanation of the Relevance and Manner
 of Applying Each Item of Information [R-01.2024]
 

 
 37 CFR 1.610 Content of request for supplemental examination 

 *****

 
 (b) A request for supplemental examination must
 include:
 
 *****

 (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.
 

 
 

 
 *****

 
 I. GENERAL A separate, detailed explanation required by
 37 CFR
 1.610(b)(5) must include, for each item of information listed
 pursuant to 37 CFR 1.610(b)(2) , an
 explanation of how the item of information may be applied to the claims for which
 supplemental examination is requested. The patent owner must explain, for
 each claim requested to be examined, either (1) what the item of
 information teaches with respect to that claim, or (2) 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 explanation should include citations to particular
 portions or figures in the item of information in which the teachings are located.
 Ideally, the required explanation can be provided using an
 appropriately detailed claim chart that compares, limitation by limitation, each
 claim for which supplemental examination is requested with the teachings of each
 item of information cited in the request . 
 

 A general statement of relevance that is not tied to
 any particular claim limitation is not sufficient to meet the requirement.
 

 Patent owners are strongly encouraged to specify which
 claims are to be examined in light of which items of information. If the patent owner
 desires to request supplemental examination of all of the claims of the patent in
 light of all of the items of information submitted with the request, the patent owner
 is encouraged to specifically request, for example, supplemental examination of
 claims 1-10 (i.e., all of the claims of the patent) in light of, for example, “the
 following items of information” (after which a list of the items of information is
 provided). On the other hand, if the patent owner separately lists: 1) the claims for
 which supplemental examination is requested; and 2) the items of information
 submitted with the request, but does not specify which of the claims are to be
 examined in light of which items of information, the request will be taken as a
 request for the supplemental examination of all of the claims requested in light of
 each item of information submitted with the request. In either case, the
 patent owner must provide a separate, detailed explanation of the manner of
 applying every item of information submitted as part of the request to each claim
 for which supplemental examination is requested . 
 

 The Office will assume that all of the claims identified
 pursuant to 37 CFR 1.610(b)(4) are requested
 to be considered in light of every item of information listed under 37 CFR
 1.610(b)(2) , unless otherwise specified. For example, if, in a
 request for the supplemental examination of claims 1-10, five items of information
 are listed, and the patent owner wishes supplemental examination of claims 1-5 based
 on the first two items of information and supplemental examination of claims 1-10
 based on the next three items of information, the patent owner must clearly indicate
 which claims are requested to be examined in light of which items of information. The
 patent owner can provide such an indication, for example, by use of the headings in
 the detailed explanation as discussed below, and/or in a table of contents. 
 

 A separate, detailed explanation is also required for
 each dependent claim for which supplemental examination is requested. If the patent
 owner wishes to rely upon the explanation of the manner of applying the item of
 information to the independent claim as the required explanation for the dependent
 claim, the patent owner should so state. For example, the patent owner may state:
 “Because dependent claims 2-5 each include all of the limitations of independent
 claim 1, the patent owner relies upon the required explanation under
 37 CFR
 1.610(b)(5) of the manner of applying the Fisher article to
 independent claim 1, provided above, as the required explanation under
 37 CFR
 1.610(b)(5) for dependent claims 2-5.” The patent owner is
 reminded, however, that if the patent owner relies on a proper, detailed explanation
 of an independent claim as the detailed explanation for the dependent claims, then a
 review of the dependent claims may be limited to the detailed explanation of the
 independent claim provided by the patent owner.
 

 If the request does not include an explicit statement
 incorporating the explanation for the independent claim as the required explanation
 for the dependent claims, or if the request fails to include separate explanations
 for the dependent claims, the Office may mail a notice of noncompliant request to
 inform the patent owner of the deficiency. See MPEP §
 2812.02 .
 

 The Office does not recommend that the detailed
 explanation under 37 CFR 1.610(b)(5) be combined
 with an optional discussion, such as a discussion under 37 CFR
 1.610(c)(3) of how the claims patentably distinguish over the
 item of information. See MPEP § 2812.02 . Although the rules
 do not prevent the patent owner from combining such optional discussions within the
 detailed explanation, the Office recommends that this optional discussion be made
 under a separate subheading such as “Optional Explanation under 37 CFR
 1.610(c) .” The Office has found that requests that combine the
 detailed explanation with the optional discussion typically include a lengthy
 discussion of why the claims are patentable over the items of information, or why the
 items of information do not raise a SNQ, with little to no explanation as to how the
 item of information is applicable to the claim limitations, as required by
 37 CFR
 1.610(b)(5) . By combining optional discussions with the
 required detailed explanation, the patent owner runs the risk of obscuring the
 “detailed explanation.” Such an obscured request could potentially result in the
 Office finding the “detailed explanation” was not provided, and therefore lead to a
 determination that the request failed to comply with the filing date requirements,
 and the loss of the date of the original deposit of the request as the filing date. 
 

 Use of headings and subheadings in the detailed
 explanation section of the supplemental examination request is encouraged. For
 example, headings that identify each item of information and which claims are being
 discussed are excellent tools to ensure clarity in the explanations. In addition,
 under each heading, the Office highly recommends using separate subheadings for each
 independent claim and its associated dependent claims, if applicable.
 

 For example, the patent owner may provide a series of
 statements which identify which claims are to be examined in light of each item of
 information listed under 37 CFR 1.610(b)(2) . The
 statements do not need to take the form of a proposed rejection, but should be
 sufficiently clear to determine the scope of the request. These statements will NOT
 be construed as an admission of unpatentability. These statements would only indicate
 that the patent owner is requesting that the Office consider whether certain issues
 may be raised by each item of information with respect to specific claims. If the
 patent owner is aware, or is made aware, that an item of information may raise
 particular patentability issue(s) (e.g., anticipation, obviousness, written
 description, enablement, etc…), the patent owner may identify these issues in the
 explanation under 37 CFR 1.610(b)(5) . These
 statements would provide a focused review on the potential issues and explicit
 consideration of those potential issues on the record. 
 

 The following are examples of statements that may be
 set forth as headings in the detailed explanation:
 

 Supplemental examination is requested for claims 1-10
 of the ‘123 patent in view of the Fisher article.
 

 The patent owner requests the Office to consider
 whether the Fisher article raises a SNQ affecting claims 1, 4, 7, and 15 of the ‘123
 patent.
 

 Does Smith raise a SNQ affecting claims 1-3 and
 5-7?
 

 Does the Byrd declaration raise issues under
 35 U.S.C.
 101 affecting claims 1-7?
 

 Does the Byrd declaration raise issues under
 35 U.S.C.
 112 affecting claims 2 and 8? 
 

 Are claims 1-5 entitled to the earlier filing date of
 March 5, 2008 in light of the Wolf declaration?
 

 Patent owners are encouraged to be as comprehensive as
 possible in the explanation. This allows the patent owner to frame any potential
 issues, and assists the examiner in focusing on these potential issues to better
 determine if a SNQ is, or is not, raised. See also the guidance provided in
 MPEP §§
 2214 and 2217 for ex parte 
 reexamination proceedings.
 

 Any failure to provide the required explanation for any
 item of information, or for any claim for which supplemental examination is
 requested, will be identified in a “Notice of Noncompliant Supplemental Examination
 Request ( 37 CFR 1.610(d) ).” See MPEP §
 2812.02 . Even if the request fails to strictly comply with
 the detailed explanation requirement, the Office may, in its sole discretion, accept
 the request if it is readily understood from the explanation provided in the request
 how the each of the items of information submitted with or as part of the request may
 be applied to each of the claims for which supplemental examination is requested.
 

 II. REQUIREMENT CANNOT BE SATISFIED BY INCORPORATING BY REFERENCE A PAPER FROM
 ANOTHER PROCEEDING OR BY RELYING ON A PAPER BY A THIRD PARTY The requirement for a detailed explanation may not be
 met by incorporating by reference a paper from another proceeding, or by relying on a
 paper of a third party, which is submitted with the request. 
 

 A request for supplemental examination must stand on
 its own. A request for supplemental examination cannot be made, and the requirements
 for a detailed explanation pursuant to 37 CFR 1.610(b)(5) cannot be
 satisfied, by incorporating by reference a paper from another proceeding. A paper
 filed in another proceeding must comply with the regulations and procedures set for
 that proceeding, and would address the issues specific to that proceeding, not to the
 present supplemental examination proceeding. A procedure which would require the
 examiner to sort through a paper filed in another proceeding and determine which
 issues may be raised and treated in a supplemental examination proceeding would
 frustrate the Office’s ability to conclude the supplemental examination proceeding
 within three months of the filing date of the request, as required by
 35
 U.S.C. 257 . For example, the patent owner cannot rely on an
 Office action from another proceeding as the detailed explanation required by
 37 CFR
 1.610(b)(5) of the manner of applying the references cited in
 the Office action. Incorporation by reference would require Office staff to review
 any incorporated papers (such as, e.g., an Office action) to see if the papers happen
 to include a discussion of each item of information identified in the present
 supplemental examination proceeding and explain, in detail, how each item of
 information may be applied to each claim for which supplemental examination is
 requested, in order to determine if the filing date requirements are met. Such a
 procedure would absorb a greater portion of the three-month time period for
 conducting the supplemental examination and reduce the time available for a full and
 comprehensive analysis of each item of information submitted as part of the request.
 For these reasons, each request must stand on its own. The requirement for a detailed
 explanation cannot be satisfied by incorporating by reference a paper from another
 proceeding.
 

 The detailed explanation must reflect the opinion of
 the patent owner, and not that of a third party (including a patent examiner).
 35
 U.S.C. 257(a) specifies that a patent owner 
 may request supplemental examination. The statute does not authorize the Office to
 accept a request for supplemental examination by a party other than the patent owner.
 The patent owner may not file papers on behalf of a third party and thus circumvent
 the intent of the legislation for supplemental examination. For this reason, the
 detailed explanation required under 37 CFR 1.610(b)(5) must be
 drafted by the patent owner, and must reflect the opinion of the patent owner, i.e.,
 what the patent owner believes is the relevance of each item of information, and what
 the patent owner believes is the manner of applying each item of information to each
 claim of the patent for which supplemental examination is requested. The patent owner
 may not rely on a paper filed by a third party (including a paper drafted by a patent
 examiner) to provide the detailed explanation required by 37 CFR
 1.610(b)(5) because the paper filed by the third party does not
 necessarily reflect the opinion of the patent owner. 
 

 If the patent owner wishes to have the examiner
 consider, in a supplemental examination proceeding, an Office action from another
 application or proceeding, the patent owner must separately list the Office action
 and any documents mentioned in the Office action as items
 of information pursuant to 37 CFR 1.610(b)(2) , and provide,
 when required under 37 CFR 1.610(b)(7) , copies of
 each item of information. In addition, the patent owner must supply its own detailed
 explanation under 37 CFR 1.610(b)(5) , of how the
 Office action and any documents mentioned in the Office action may be applied to the
 claims for which supplemental examination is requested.
 

 III. DETAILED EXPLANATION OF INFORMATION LIMITED TO CORRECTION OF FACTUAL
 INFORMATION If the request includes an item of information limited
 to a correction of factual information, such as a foreign priority or domestic
 benefit claim, or the common ownership of the claimed invention, the request 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 . In such a case, the request must include a
 detailed explanation required under 37 CFR 1.610(b) of how each of
 the additional item(s) of information may be applied to the claims for which supplemental examination is requested. For example,
 if the patent owner wishes to correct the effective filing date of the claimed
 invention in the patent to be examined by claiming the benefit of an
 earlier filing date of, e.g., a parent patent, the request
 should include a copy of the parent patent as a first item of information, and a copy
 of an intervening reference as a second item of information. The patent owner must
 include in the request a detailed explanation of how the intervening reference may be
 applied to the claims of the patent to be examined if the effective filing date remains unchanged and is not corrected. As another example, if the patent owner wishes to
 delete a benefit claim, or correct an earlier-obtained
 (incorrect) benefit claim in order to properly claim the benefit of a later filing
 date of a parent patent, the request should include, as separate items of
 information, a copy of any parent patent document on which the later (corrected)
 effective filing date is based, and a copy of an intervening reference which would
 pre-date the effective filing date of the claimed invention in the patent to be
 examined, if the domestic benefit claim were deleted or corrected to an appropriate
 later date. In this case, the patent owner must include in the request a detailed
 explanation of how the intervening reference may be applied to the patent claims if
 the effective filing date of the claimed invention in the patent to be examined is corrected to the later date. 
 

 The request must also include an explanation of how
 the patent owner is entitled to the corrected factual information, where appropriate.
 For example, if the patent owner informs the Office that the effective filing date of
 the claimed invention in the patent to be examined should reflect an earlier filing
 date of a parent patent, then the patent owner must also include in the request a
 detailed explanation of how the patent owner is entitled to the earlier effective
 filing date, by, for example, explaining how each claim limitation is supported by
 the parent patent. If, however, the patent owner merely wishes to
 delete a foreign priority or domestic benefit claim, an
 explanation of how the patent owner is entitled to the (new) effective filing date,
 if the domestic benefit claim (or, where appropriate, the foreign priority claim) is
 deleted, is not required. 
 

 Example. A request for supplemental examination includes an
 item of information limited to the correction of the effective filing date of the
 claimed invention in the patent, such as a copy of a parent patent and a
 discussion within the body of the request limited to how the effective filing date
 should be corrected, i.e., by changing the effective filing date of the claimed
 invention in the patent to be examined to the earlier filing date of the parent
 patent. The request also includes a second item of information, i.e., an
 intervening reference, which causes the patentability of the claims to depend upon
 the domestic benefit claim. In such a case, the patent owner must include in the
 request a detailed explanation of how the intervening reference may be applied to
 the claims for which supplemental examination is requested, if the effective
 filing date of the claimed invention in the patent to be examined remains
 unchanged and is not corrected. The patent owner must also include a detailed
 explanation of how the patent owner is entitled to the earlier effective filing
 date, by, for example, explaining how each claim limitation is supported by the
 parent patent. 
 

 

 

 
 2811.02 Optional Content [R-11.2013]

 
 37 CFR 1.610 Content of request for supplemental examination. 

 *****

 
 (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.
 

 
 

 
 *****

 

 37 CFR
 1.610(c) provides that the request may optionally include the
 following enumerated elements:
 

 I. A COVER SHEET 37 CFR
 1.610(c)(1) permits the request to include a cover sheet
 itemizing each component submitted as part of the request. A
 
 "component"
 
 
 may be a certificate of
 mailing, the request, the patent to be examined, an item of information, and any
 other separate document that is deposited with or as part of the request. Submission
 of a cover sheet will assist the Office in the review of the request for compliance
 with the filing date requirements. For example, the Office may readily recognize that
 certain components listed as submitted on the cover sheet may be missing from the
 file and quickly contact the patent owner for correction. The Office encourages
 patent owners to submit a cover sheet with a request for supplemental examination.
 Use of the form PTO/SB/59 as the cover sheet is particularly encouraged.
 

 II. A TABLE OF CONTENTS 37 CFR
 1.610(c)(2) permits the request to include a table of contents
 for the request. Submission of a table of contents will provide clarity to the record
 and also help ensure that the request includes all of the required elements in
 accordance with 37 CFR 1.610(a) and
 37 CFR
 1.610(b) . In addition, a table of contents will also assist in
 the initial review of the request to determine if the filing date requirements are
 met and in the examiner’s analysis of the request during the supplemental examination
 proceeding.
 

 III. AN EXPLANATION OF HOW THE CLAIMS PATENTABLY DISTINGUISH OVER THE ITEMS OF
 INFORMATION 37 CFR
 1.610(c)(3) provides that the request may include an
 explanation of how the claims patentably distinguish over the items of information.
 This optional discussion should be separately made under a separate subheading such
 as 
 "Optional Explanation under 37 CFR
 1.610(c)(3) ."
 
 
 The Office has found that
 requests that combine the detailed explanation under 37 CFR
 1.610(b)(5) with the optional discussion under
 37 CFR
 1.610(c)(3) typically have a lengthy discussion of why the
 claims are patentable over the items of information with little to no explanation as
 to how the item of information is applicable to the claim limitations as required by
 37 CFR
 1.610(b)(5) . By combining the optional discussion with the
 required detailed explanation, the patent owner runs the risk that the Office will
 find that the required explanation was not provided, causing the request to be
 noncompliant, and the loss of the date of the original deposit of the request as the
 filing date. See MPEP § 2812.02 .
 

 IV. AN EXPLANATION OF WHY EACH ITEM OF INFORMATION SUBMITTED WITH THE REQUEST DOES
 OR DOES NOT RAISE A SUBSTANTIAL NEW QUESTION OF PATENTABILITY 37 CFR
 1.610(c)(4) provides that the request may include an
 explanation why each item of information does or does not raise a SNQ. Patent owners
 are encouraged to submit this explanation, which will assist the Office in analyzing
 the request. If the patent owner does submit this optional content, particularly
 where the patent owner explains why each item of information does
 not raise a SNQ, the Office strongly recommends that this
 optional discussion be separately presented, in the request, from the explanation
 required by 37 CFR 1.610(b)(5) , under a
 subheading such as 
 "Optional Explanation under 37 CFR
 1.610(c)(4) "
 
 
 . See MPEP §§ 2811.01 and
 2812.02 .
 

 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."
 
 
 
 

 

 [top] 

 

 

 
 

 
 

 

 

 

 
 
 
 2801-Introduction 

 2802-Supplemental Examination 

 2803-Persons Who May File a Request for Supplemental Examination 
 2803.01-Inquiries from Persons Other Than the Patent Owner 

 2803.02-Public Access 

 
 

 2804-Representative of Patent Owner 
 2804.01-Withdrawal of Attorney or Agent 

 
 

 2805-Correspondence with Patent Owner; Patent Owner Address 

 2806-How to File Papers in a Supplemental Examination Proceeding and in Any Resulting Ex Parte Reexamination Proceeding 

 2807-Format of Papers Filed in a Supplemental Examination Proceeding 

 2808-Time for Requesting Supplemental Examination 

 2809-Items of Information 
 2809.01-Information Relating to the Correction of Factual Information 

 
 

 2810-Fees Due on Filing a Supplemental Examination Request 
 2810.01-Document Size Fees 

 
 

 2811-Content of Request for Supplemental Examination 
 2811.01 -Detailed Explanation of the Relevance and Manner of Applying Each Item of Information 

 2811.02 -Optional Content 

 
 

 2812-Initial Processing of a Request for Supplemental Examination 
 2812.01 -Filing Date of the Request 

 2812.02-Noncompliant Request for Supplemental Examination 

 2812.03 -Corrected Request 

 2812.04 -Termination Due to Defective/Improper Request or Corrected Request 

 
 

 2813-Handling of Papers, Other Than a Request, in a Supplemental Examination Proceeding 
 2813.01 -Amendments 

 
 

 2814-Interviews Are Prohibited 

 2815-Time for Deciding Request 

 2816-Determination on the Request 
 2816.01 -Claims Considered in Making the Determination 

 2816.02 -Criteria for Making the Determination 

 2816.03 -Content of the Determination 

 2816.04 -Effect of the Determination 

 
 

 2817-Conclusion of Supplemental Examination 
 2817.01 -Processing and Electronic Issuance of Supplemental Examination Certificate 

 
 

 2818-Procedure after Conclusion of Supplemental Examination 
 2818.01 -After Determination Finding a Substantial New Question of Patentability 

 2818.02 -After Determination Finding No Substantial New Question of Patentability 

 
 

 2819-Discovery of Possible Material Fraud 

 2820-Submission of Notification of Other Prior or Concurrent Post-Patent Office Proceedings 

 2821-Multiple Post-Patent Office Proceedings 

 2822-Assignment of the Supplemental Examination Proceeding 

 2823-Differences Between an Ex Parte Reexamination Proceeding Ordered Pursuant to 35 U.S.C. 257 and an Ex Parte Reexamination Proceeding
 Ordered Pursuant to 35 U.S.C. 302 

 

 

 
 

 
 
 

 
 

 

 
 
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 03/09/2026 20:50:50