MPEP § 2813 — MPEP § 2813
Current through: 2022-07-01

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

 
 
 
 
 
 
 
 

 

 
 
 

 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 
 

 
 
 
 
 

 
 
 
 
 
 
 
 
 
 
 

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 Manual of Patent Examining Procedure 

 Chapter 2800 

 Section 2813 
 

 
 
 
 
 
 2813 Handling of Papers, Other Than a Request, in a
 Supplemental Examination Proceeding [R-11.2013]
 

 
 37 CFR 1.620 Conduct of supplemental examination proceeding. 

 *****

 
 (b) The Office may hold in abeyance action on any
 petition or other paper filed in a supplemental examination proceeding until after
 the proceeding is concluded by the electronic issuance of the supplemental
 examination certificate as set forth in §
 1.625 .
 

 (c) If an unauthorized or otherwise improper paper is
 filed in a supplemental examination proceeding, it will not be entered into the
 official file or considered, or if inadvertently entered, it will be expunged.
 

 
 *****

 
 I. ACTIONS ON PETITIONS OR PAPERS, OTHER THAN THE REQUEST, MAY BE HELD IN
 ABEYANCE 37 CFR
 1.620(b) provides that the Office may hold in abeyance an action
 on any petition or other paper filed in a supplemental examination proceeding until
 after the proceeding is concluded by the electronic issuance of the supplemental
 examination certificate as set forth in 37 CFR 1.625 . The only actions by
 the Office on the request for supplemental examination are:
 

 
 (1) a determination of whether the request is entitled
 to a filing date; and 
 

 (2) a determination of whether any of the items of
 information submitted with the request raises a SNQ. 
 

 
 The only relevant type of petition that the Office
 anticipates will be filed in a supplemental examination proceeding would involve the
 filing date of the request, which is not relevant to the determination of whether any of
 the items of information submitted with the request raises a SNQ. Holding in abeyance a
 decision on such a petition will assist the Office in making the determination regarding
 a SNQ within the three-month statutory period.
 

 II. UNAUTHORIZED OR IMPROPER PAPERS 37 CFR
 1.620(c) provides that if an unauthorized or otherwise improper
 paper is filed in a supplemental examination proceeding, it will not be entered into the
 official file or considered, or if inadvertently entered, it will be expunged.
 

 After filing a request for supplemental examination, no
 papers other than: (1) a corrected request filed in response to a notice of noncompliant
 supplemental examination request, or (2) a notice of a prior or concurrent post-patent
 Office proceeding pursuant to 37 CFR 1.620(d) , should be filed
 with the Office prior to the conclusion of the supplemental examination proceeding. Any
 papers directed to the merits of the supplemental examination proceeding other than (1)
 or (2) set forth above, will not be entered into the file, and may be discarded by the
 CRU without consideration. If such a paper is entered prior to its discovery, it may be
 expunged from the record. 
 

 Where an unauthorized or otherwise improper paper has
 already been scanned into the Image File Wrapper (IFW) of the supplemental examination
 proceeding before recognizing the nature of the paper, the paper cannot be physically
 returned to the party that submitted it. Instead, the paper will be expunged, i.e., by
 marking the paper 
 "non-public"
 
 
 and
 
 "closed"
 
 
 so it does not appear in the public
 record of the supplemental examination proceeding. A copy of the Office communication
 notifying the patent owner of the return of the paper (or its expungement) will be made
 of record in the patent file. However, no copy of the returned/expunged paper will be
 retained by the Office. If a later submission of the returned/expunged paper is
 appropriate, such as during any resulting ex parte reexamination
 proceeding, then the paper may be filed and entered by the Office at that time. The date
 of the later submission will be the filing date of the paper.
 

 A. Third-Party Papers In accordance with 35 U.S.C.
 257(a) , any party other than the patent owner is prohibited
 from filing papers or otherwise participating in any manner in the supplemental
 examination proceeding. See 37 CFR 1.601(b) . If a third party
 files any petition or other paper in a supplemental examination proceeding, it will
 not be entered into the official file or considered. If such papers are inadvertently
 entered, they will be expunged. See 37 CFR 1.620(c) .
 

 B. Authorized but Defective Papers Where papers filed in a supplemental examination
 proceeding are defective (e.g., are not signed or fail to meet the filing date
 requirements), such papers may be expunged from the official file of the supplemental
 examination proceeding by marking the paper as
 
 "non-public"
 
 
 and
 
 "closed"
 
 
 so that it does not appear in the
 public record of the supplemental examination proceeding. 
 

 C. Application Data Sheet (ADS) 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."
 
 
 
 

 
 2813.01 Amendments [R-11.2013]

 
 37 CFR 1.620 Conduct of supplemental examination proceeding. 

 *****

 
 (f) No amendment may be filed in a supplemental
 examination proceeding.
 

 
 *****

 

 37 CFR
 1.620(f) provides that no amendment may be filed in a supplemental
 examination proceeding. Amendments are not “information believed to be relevant to the
 patent” under 35 U.S.C. 257(a) and a patent owner
 cannot file an amendment as part of a statement under 35 U.S.C. 304 
 because 35
 U.S.C. 257(b) expressly excludes the filing of a statement
 pursuant to 35 U.S.C.
 304 in a supplemental examination proceeding. 
 

 Any paper containing an amendment that is filed in a
 supplemental examination proceeding is an unauthorized paper, and will be expunged from
 the file if inadvertently entered. Amendments are not items of information, and are not
 appropriate in a supplemental examination proceeding.
 

 An amendment may be submitted in an ex
 parte reexamination proceeding ordered under 35 U.S.C.
 257 . Patent owners, however, are reminded that 35 U.S.C.
 257(b) expressly removes the right of the patent owner to file a
 statement under 35
 U.S.C. 304 , which includes any amendment that the patent owner may
 wish to file prior to an initial Office action on the merits. Because the ex
 parte reexamination proceeding does not exist prior to the order under
 35 U.S.C.
 257 , and because the patent owner is precluded from filing a
 statement under 35
 U.S.C. 304 , no amendment may be filed from the time the
 request for supplemental examination is filed, until after the issuance of an initial
 Office action on the merits in any ex parte reexamination
 proceeding ordered under 35 U.S.C. 257 . 
 

 Patent owners are reminded that a statutory disclaimer
 under 35 U.S.C.
 253 and 37 CFR 1.321(a) may be submitted in
 the file of the patent prior to filing any request for supplemental examination. See
 MPEP §
 1490 . Moreover, if the patent owner merely wishes to amend the
 patent claims, the patent owner may file a reissue application instead of a request for
 supplemental examination.
 

 

 [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 20:49:41