2806 How to File Papers in a Supplemental Examination Proceeding and in Any Resulting Ex Parte Reexamination Proceeding [R-01.2024]

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. 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. 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.

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. 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.

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