Chapter 2800

Supplemental Examination

Chapter 2800 covers supplemental examination allowing patent owners to request USPTO consideration of potentially material information. Key rules: only the patent owner can request, maximum 12 items per request, and it does NOT protect against intentional fraud on the USPTO.

Core Concepts

Supplemental Examination Basics — 35 USC 257 / MPEP 2801 Allows patent owner to request USPTO to consider, reconsider, or correct information believed to be relevant to patent. Purpose: immunize patent from inequitable conduct allegations based on that information. Only patent owner may request — no third parties.

Request Requirements — MPEP 2804 Maximum 12 items of information per request. Must explain relevance of each item. Fee required. Items may include patents, publications, or other information (broader than reexamination). Request must identify the patent and each item clearly.

SNQ Determination — MPEP 2812 USPTO determines if request raises SNQ of patentability. If SNQ found: USPTO orders ex parte reexamination. If no SNQ: supplemental examination certificate issued — patent immunized for those items.

Inequitable Conduct Shield — MPEP 2816 If supplemental examination is completed before inequitable conduct allegation is raised: cannot be used as basis for unenforceability. Exception: does NOT protect against intentional fraud on USPTO, criminal violations, or violations related to false statements.

Timing — MPEP 2804 Can request at any time during patent enforcement. No deadline — patent owner may request even during litigation. Cannot request if reexamination already ordered or litigation final judgment entered.

Key Rules

1.Only patent owner may request supplemental examination — no third parties

2.Maximum 12 items per request

3.If SNQ found: ex parte reexamination ordered automatically

4.If no SNQ: supplemental examination certificate issued — inequitable conduct immunity

5.Does NOT protect against intentional fraud on USPTO

6.Can request anytime during patent term — no deadline

7.Cannot request if reexamination already ordered or final judgment in litigation

EXAM TIP

Supplemental examination is specifically designed to cure potential inequitable conduct issues — but only for negligent or unintentional omissions, NOT intentional fraud. The 12-item cap and patent-owner-only standing are the two most tested procedural rules.

Common Traps

1.Thinking third parties can request supplemental examination — patent owner only

2.Assuming supplemental examination protects against intentional fraud — it does not

3.Submitting more than 12 items in one request

4.Confusing supplemental examination with ex parte reexamination — different purposes and standards

5.Thinking there is a deadline to file — no deadline during patent term

Search Terms

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Sections

2801Introduction

High Yield

2802Supplemental Examination

2803Persons Who May File a Request for Supplemental Examination

2804Representative of Patent Owner

2805Correspondence with Patent Owner; Patent Owner Address

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

2807Format of Papers Filed in a Supplemental Examination Proceeding

2808Time for Requesting Supplemental Examination

2809Items of Information

High Yield

2810Fees Due on Filing a Supplemental Examination Request

2811Content of Request for Supplemental Examination

High Yield

2812Initial Processing of a Request for Supplemental Examination

High Yield

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

2814Interviews Are Prohibited

2815Time for Deciding Request

2816Determination on the Request

2817Conclusion of Supplemental Examination

High Yield

2818Procedure after Conclusion of Supplemental Examination

2819Discovery of Possible Material Fraud

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

2821Multiple Post-Patent Office Proceedings

2822Assignment of the Supplemental Examination Proceeding

2823Differences 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