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

A request for supplemental examination should be deposited

as a new, separate, and independent submission, and should

not

be

deposited in the file of the patent for which supplemental examination is requested, or in

the file of any other application, patent, or proceeding. The request should be clearly

identified by, for example, providing a heading such as “REQUEST FOR SUPPLEMENTAL

EXAMINATION” prominently at the top of the first page of the paper. Use of the form

PTO/SB/59 titled “Request for Supplemental Examination Transmittal Form,” which is

available on the Office’s website

www.uspto.gov

, is also recommended. Requests for supplemental

examination, any paper(s) other than a request submission that are to be filed in a

supplemental examination proceeding, and any paper(s) to be filed in a reexamination

proceeding ordered as a result of a supplemental examination proceeding, should be

addressed to the Office as set forth below.

The filing of any papers other than those forming part of a

request for supplemental examination in the supplemental examination proceeding submission

should be rare.

A supplemental examination proceeding is separate and

distinct from any

ex parte

reexamination proceeding that may later

result from it. A supplemental examination proceeding concludes with the electronic

issuance of a supplemental examination certificate.

35 U.S.C.

257(a)

and

37 CFR 1.625(a)

. Any reexamination

resulting from a supplemental examination proceeding will be ordered after the conclusion

of the supplemental examination proceeding. See

35 U.S.C.

257(b)

and

37 CFR 1.625(b)

. The

ex

parte

reexamination is a distinct proceeding initiated by its own order. If

reexamination is ordered as a result of a supplemental examination proceeding, any papers

submitted subsequent to the order should be filed in the resulting reexamination

proceeding.

Supplemental examination proceedings will be assigned a

“series 96” control number, such as, for example, 96/999,999

37 CFR 1.625(b)

. The

ex

parte

reexamination is a distinct proceeding initiated by its own order. If

reexamination is ordered as a result of a supplemental examination proceeding, any papers

submitted subsequent to the order should be filed in the resulting reexamination

proceeding.

Supplemental examination proceedings will be assigned a

“series 96” control number, such as, for example, 96/999,999. Any

ex

parte

reexamination resulting from a concluded supplemental examination

proceeding will retain the same control number, even though the two proceedings are

separate and distinct. After the filing of the request, any correspondence sent to the

Office relating to the supplemental examination proceeding or to the resulting

ex

parte

reexamination proceeding should identify the proceeding by the number of

the patent, the control number assigned to the proceeding, the art unit, and the name of

the examiner.

The certificate of mailing and transmission procedures

(

37 CFR

1.8

) may be used to file any paper in a supplemental examination

proceeding,

except for a request or corrected request

. See

MPEP §

512

regarding the use of the certificate of mailing and

transmission procedures. The Priority Mail Express

®

mailing

procedure (

37 CFR

1.10

) may be used to file any paper, including a request or corrected

request, in a supplemental examination proceeding. See

MPEP § 513

as to the use

of the Priority Mail Express

®

mailing procedure.

I.

ELECTRONIC SUBMISSION

Patent owners may submit papers in a supplemental

examination proceeding via the USPTO patent electronic filing system, available by

accessing the Office's website,

www.uspto.gov

. The electronic submission of requests for

supplemental examination and “follow-on” papers (i.e., subsequent correspondence in the

proceedings) is encouraged. An initial supplemental examination request may be filed

electronically by patent owners or legal representatives of patent owners, even if they

are not registered users of the USPTO patent electronic filing system

's website,

www.uspto.gov

. The electronic submission of requests for

supplemental examination and “follow-on” papers (i.e., subsequent correspondence in the

proceedings) is encouraged. An initial supplemental examination request may be filed

electronically by patent owners or legal representatives of patent owners, even if they

are not registered users of the USPTO patent electronic filing system. However, only

registered users can file “follow-on” papers using the USPTO patent electronic filing

system. For information regarding how to electronically file requests for supplemental

examination and “follow-on” papers, see the “Patent Center User Guide,” available at

www.uspto.gov/PatentCenter

. For questions regarding how to

electronically file using the USPTO patent electronic filing system or how to become a

registered user, contact the Patent Electronic Business Center (EBC) at 866-217-9197

(toll free) or via email at ebc@uspto.gov.

It is noted that a corrected request that is filed in

response to a Notice of Noncompliant Supplemental Examination Request should be filed as

“follow-on” paper(s) in an existing proceeding. Also, even though a concluded

supplemental examination proceeding is separate and distinct from the resulting

ex parte

reexamination, the resulting reexamination retains the

same control number as the concluded supplemental examination proceeding to simplify

tracking and processing. Therefore, any paper to be submitted in the resulting

reexamination proceeding is to be filed as “follow-on” paper(s) using the same control

number as was used in the now concluded supplemental examination proceeding.

II.

PAPER FORM (HARD COPY) SUBMISSIONS

The Office accepts paper form (hard copy) requests for

supplemental examination (i.e., request submissions), and any paper(s) other than

request submissions that are filed in a supplemental examination proceeding. These

papers should be addressed to “Mail Stop Supplemental Examination” at the appropriate

address provided below

lemental examination proceeding.

II.

PAPER FORM (HARD COPY) SUBMISSIONS

The Office accepts paper form (hard copy) requests for

supplemental examination (i.e., request submissions), and any paper(s) other than

request submissions that are filed in a supplemental examination proceeding. These

papers should be addressed to “Mail Stop Supplemental Examination” at the appropriate

address provided below.

Any papers to be submitted in paper form (hard copy) in a

reexamination proceeding ordered as a result of a supplemental examination, other than

correspondence to the Office of the General Counsel pursuant to

37 CFR 1.1(a)(3)

and

37 CFR

102.4

, should be addressed to “Mail Stop

Ex

Parte

Reexam” at the appropriate address provided below.

Mail to be delivered by the United States Postal Service

(USPS) should be addressed as:

Mail Stop ______________

Central Reexamination Unit

Commissioner for Patents

P.O. Box 1450

Alexandria, VA 22313-1450

Correspondence to be hand-carried or delivered by other

delivery services (Federal Express (Fed Ex), UPS, DHL, Laser, Action, Purolator, etc.)

should be addressed to the Customer Service Window (see

MPEP § 501

, subsection

III) with the appropriate Mail Stop information included in the address.

Whether the correspondence is mailed, delivered, or

hand-carried to the Office, it is strongly recommended that the Mail Stop information be

placed in a prominent position on the first page of each paper filed, utilizing a large

font size to direct attention to it.

III.

FACSIMILE TRANSMISSION

Requests for supplemental examination may not be facsimile-transmitted

.

This is also true for a corrected request that is filed in response to a Notice of

Noncompliant Supplemental Examination Request (see

MPEP §§

2812.02

-

2812.03

), since the corrected request stands in place of the

original request

paper filed, utilizing a large

font size to direct attention to it.

III.

FACSIMILE TRANSMISSION

Requests for supplemental examination may not be facsimile-transmitted

.

This is also true for a corrected request that is filed in response to a Notice of

Noncompliant Supplemental Examination Request (see

MPEP §§

2812.02

-

2812.03

), since the corrected request stands in place of the

original request. Papers to be filed in a supplemental examination proceeding, other

than a request or a corrected request for supplemental examination, and any papers to be

filed in a reexamination proceeding resulting from a supplemental examination

proceeding, if the papers to be filed in the reexamination proceeding may be properly

filed via facsimile transmission in accordance with reexamination practice, may be

facsimile-transmitted to the Central Reexamination Unit at (571) 273-9900. See

MPEP §

2224

.

[top]