MPEP § 2818 — MPEP § 2818
Current through: 2022-07-01

2818-Procedure after Conclusion of Supplemental Examination 
 
 

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2800 

 Section 2818 
 

 
 
 
 
 
 2818 Procedure after Conclusion of Supplemental
 Examination [R-11.2013]
 

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

 *****

 
 (b) If the supplemental examination certificate states
 that a substantial new question of patentability 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 . 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. The electronically issued
 supplemental examination certificate will remain as part of the public record of
 the patent. 
 

 (c) If the supplemental examination certificate
 indicates that no substantial new question of patentability is raised by any of
 the items of information in the request, and ex parte 
 reexamination is not ordered under 35 U.S.C. 257 , the
 electronically issued supplemental examination certificate will be published in
 due course. The fee for reexamination ordered as a result of supplemental
 examination, as set forth in § 1.20(k)(2) , will be refunded
 in accordance with 1.26(c) . 
 

 (d) Any ex parte reexamination
 ordered under 35 U.S.C. 257 will be
 conducted in accordance with §§ 1.530 through
 1.570 , which govern ex parte 
 reexamination, except that:
 
 (1) The patent owner will not have the right to
 file a statement pursuant to § 1.530 , and the order
 will not set a time period within which to file such a statement; 
 

 (2) Reexamination of any claim of the patent may
 be conducted on the basis of any item of information as set forth in
 § 1.605 , and is not
 limited to patents and printed publications or to subject matter that has
 been added or deleted during the reexamination proceeding, notwithstanding
 §
 1.552(a) ; 
 

 (3) Issues in addition to those raised by patents
 and printed publications, and by subject matter added or deleted during a
 reexamination proceeding, may be considered and resolved, notwithstanding
 §
 1.552(c) ; and
 

 (4) Information material to patentability will be
 defined by § 1.56(b) ,
 notwithstanding § 1.555(b) . 
 

 
 

 
 

 Supplemental examination is concluded by the electronic
 publication of the certificate. The Office procedure after publication of the certificate
 depends on whether the Office determines that a SNQ affecting at least one claim of the
 patent is raised in the request.
 

 If the supplemental examination certificate indicates that a
 SNQ is raised, ex parte reexamination of the patent will be ordered
 under 35 U.S.C.
 257 . See 37 CFR 1.625(b) . An ex
 parte reexamination ordered as a result of a supplemental examination
 proceeding will be conducted in accordance with the existing rules governing ex
 parte reexamination, except that: (i) the patent owner will not have the right
 to file a patent owner statement; and (ii) the Office will address each SNQ without regard
 to whether it is raised by a patent or printed publication. See 37 CFR
 1.625(d) and MPEP § 2818.01 .
 

 If the supplemental examination certificate indicates that no
 SNQ is raised, ex parte reexamination will not be ordered under
 35 U.S.C.
 257 . In this case, the electronically issued supplemental examination
 certificate will 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) . See MPEP §
 2818.02 .
 

 
 2818.01 After Determination Finding a Substantial New
 Question of Patentability [R-07.2015]
 

 37 CFR
 1.625(d) provides that any ex parte 
 reexamination ordered under 35 U.S.C. 257 will be conducted in
 accordance with 37 CFR
 1.530 through 37 CFR 1.570 , which govern
 ex parte reexamination, except that:
 

 
 (1) the patent owner will not have the right to file a
 statement pursuant to 37 CFR 1.530 , and the order
 will not set a time period within which to file such a statement; 
 

 (2) ex parte reexamination of any claim of the patent may be
 conducted on the basis of any item of information as set forth in
 37
 CFR 1.605 , and is not limited to patents and printed
 publications or to subject matter that has been added or deleted during a
 reexamination proceeding, which differs from the provisions of 37 CFR
 1.552(a) ; 
 

 (3) issues in addition to those raised by patents and
 printed publications and by subject matter added or deleted during an ex
 parte reexamination proceeding may be considered and resolved, which
 differs from 37
 CFR 1.552(c) ; and 
 

 (4) information material to patentability will be
 defined by 37 CFR 1.56 for the purposes of a supplemental examination
 proceeding and any resulting ex parte reexamination proceeding.
 
 

 
 The material to patentability standard ( 37 CFR
 1.56(b) ) applicable to patent applications is also applicable to an
 ex parte reexamination proceeding under 35 U.S.C.
 257 resulting from a supplemental examination proceeding because,
 like patent application examination, an ex parte reexamination
 proceeding ordered pursuant to 35 U.S.C. 257 is not limited to
 patents and printed publications. In contrast, the material to patentability standard
 under 37 CFR
 1.555(b) , which is applicable to ex parte 
 reexaminations ordered pursuant to 35 U.S.C. 302 , is limited to patents
 and printed publications. Any reference to
 
 "applicant"
 
 
 in 37 CFR 1.56(b) 
 will be read as 
 "patent owner"
 
 
 in the context of
 a supplemental examination proceeding and any resulting ex parte 
 reexamination proceeding under 35 U.S.C. 257 , because these
 proceedings are only available to a patent owner. 
 

 After the issuance and mailing of the supplemental
 examination certificate and the accompanying reasons document, the examiner will prepare
 an order for ex parte reexamination based on the determination made
 in the supplemental examination proceeding. To order reexamination under
 35 U.S.C.
 257 , the examiner may use form PTO-2302 or include form paragraph
 28.04 at the beginning of an initial Office action on the merits in the resulting
 reexamination proceeding. The order may refer to the reasons document that was created
 with the supplemental examination certificate. 
 

 The following is a copy of form PTO-2302:

 

 The following is a form paragraph that may be used at the
 beginning of an initial Office action on the merits to order reexamination under
 35 U.S.C.
 257 :
 

 ¶ 28.04 Reexamination Ordered Pursuant to 35 U.S.C. 257
Reexamination Ordered Pursuant to 35 U.S.C.
 257
 The supplemental examination proceeding, filed on
 [1] , concluded with the issuance of the supplemental examination certificate
 on [2] . The certificate indicated that one or more of the items of information
 submitted as part of the request for supplemental examination raises a substantial new
 question of patentability. See the Reasons for Substantial New Question of Patentability
 Determination in the file of this proceeding.
 

 Accordingly, ex parte reexamination of
 claim(s) [3] of U.S. Patent No. [4] is ordered. See
 35 U.S.C.
 257(b) and 37 CFR 1.625(b) . This ex
 parte reexamination proceeding is hereby initiated by the mailing of this order.
 Ex parte reexamination under 35 U.S.C. 257 
 will be conducted in accordance with 37 CFR 1.530 through 1.570 , which govern
 ex parte reexamination, subject to the exceptions enumerated in
 37 CFR
 1.625(d) , and, in addition, to the exception that a patent owner’s
 statement, including any amendment, under 37 CFR 1.530(a) - (c) may not be filed.
 See 35 U.S.C.
 257(b) . For this reason, no amendment in an ex parte 
 reexamination proceeding ordered under 35 U.S.C. 257 may be filed until after the
 mailing of a first Office action on the merits (which appears below). This reexamination
 proceeding has been assigned to the art unit listed at the top of the cover page of this
 action. All future correspondence should be directed to the assigned art unit and should be
 identified by the control number, which is also listed at the top of the cover page of this
 action, and which is identical to the control number assigned to the now-concluded
 supplemental examination proceeding. 
 

 A first Office action on the merits appears
 below.
 

 Examiner Note:
 
 1. In brackets 1 and 2, insert the filing date of the
 supplemental examination proceeding and the issue date of the supplemental examination
 certificate, respectively, as they appear on the certificate.
 

 2. In bracket 3, list the claims for which a substantial new
 question of patentability was found, per the Statement of Reasons for Substantial New
 Question of Patentability Determination.
 

 3. In bracket 4, list the patent number as shown on the
 supplemental examination certificate. 
 
 
 

 See, generally, MPEP § 2254 and MPEP §§ 2260 -
 2296 for a detailed discussion of ex parte 
 reexamination procedures and processes. The guidance provided in MPEP § 2250 is
 applicable to amendments submitted after the first Office action in an ex
 parte reexamination proceeding resulting from a supplemental examination
 proceeding. As stated previously, a reexamination ordered as a result of supplemental
 examination is subject to the regulations and procedures of ex parte 
 reexamination, subject to the above-noted exceptions.
 

 

 
 2818.02 After Determination Finding No Substantial New
 Question of Patentability [R-11.2013]
 

 If the supplemental examination certificate indicates
 that no SNQ is raised in the request, the electronically issued supplemental examination
 certificate will 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) .
 

 

 [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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 Last Modified: 
 
 03/09/2026 20:50:50