Persons Who May File a Request for Supplemental Examination

37 CFR 1.601 Filing of papers in supplemental examination.

(a) A request for supplemental examination of a patent

must be filed by the owner(s) of the entire right, title, and interest in the

patent.

*****

Only a patent owner may file a request for supplemental

examination of a patent. See

35 U.S.C. 257(a)

and

37 CFR

1.601(a)

. The statute does not authorize the Office to accept a

request for supplemental examination from a party who is not the patent owner. For example,

a party who merely states that it is an exclusive licensee or that it is a person with

sufficient proprietary interest under

35 U.S.C. 118

is not eligible to file a

request for supplemental examination.

The request must be filed by the owner(s) of the entire

right, title, and interest in the patent. A request for supplemental examination 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. See

37 CFR 1.610(b)(9)

. This is because the

terms 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

37 CFR 3.73

for establishing an

assignee’s right to take action when submitting a power of attorney. See

MPEP §

2222

posite 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

37 CFR 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

37 CFR

3.73(c)

is filed. For example, such a petition may be filed in the

case of a deceased or legally incapacitated joint owner, or where the

joint

owner refuses to join or cannot be found after diligent effort.

See

MPEP §

409

et seq.

In the case of a deceased joint owner, the heirs,

administrators, or executors of the joint owner may be permitted to join in filing the

request for supplemental examination. If one of the owners is legally incapacitated, the

legal representative of the joint owner may be permitted to join in filing the request for

supplemental examination. If a joint owner refuses to sign or cannot be found or reached

after diligent effort, the remaining owners must include, in the petition, proof of the

pertinent facts, a showing that such action is necessary to preserve the rights of the

parties or to prevent irreparable damage, and the last known address of all of the joint

owners. Finally, if an owner of all or a portion of the entire right, title, and interest

of the patent is an organization that is dissolved, the Office may require that a

determination of the ownership of the patent be obtained from a court of competent

jurisdiction prior to accepting and according a filing date to a request for supplemental

examination.

A legal representative of the patent owner may file a

request for supplemental examination on behalf of the patent owner. See

MPEP §

2804

.