2809.01 Information Relating to the Correction of Factual Information [R-11.2013]

In a request for supplemental examination, the patent owner may inform the Office of factual information believed to be relevant to the patent, which the patent owner wishes to correct. The factual information to be corrected may include, for example, a missing or erroneous foreign priority or benefit claim, or missing or erroneous information relating to the common ownership of the claimed invention. The item of information may be, for example, a patent document relating to the factual information, such as a priority document or parent patent in the case of a missing or erroneous foreign priority or domestic benefit claim, a declaration under 37 CFR 1.132 limited to a discussion of the factual information to be corrected, or, if no supporting document is submitted with the request, a discussion within the body of the request relating to the correction of the factual information.

However, if the patent owner merely wishes to amend the patent file in order to correct factual information, the patent owner should file a reissue application or a request for certificate of correction, where appropriate. See MPEP §§ 1402 and 1405. If the patent owner only desires to correct the inventorship, the patent owner should file a request for a certificate of correction under the provisions of 35 U.S.C. 256 and 37 CFR 1.324, or, alternatively, the patent owner may file a reissue application. See MPEP §§ 1402, 1412.04, and 1481.02. Correction of inventorship may also be made, if desired, in an ex parte reexamination proceeding. See MPEP § 2258, subsection IV.F. If the information that the patent owner wishes to correct is only of a clerical or typographical nature, or of a minor character within the meaning of 35 U.S.C. 255 and 37 CFR 1.323, the patent owner should file a request for certificate of correction rather than a supplemental examination request. See, e.g.,MPEP § 1481.

A deletion of an earlier-obtained domestic benefit claim in a supplemental examination proceeding or any resulting reexamination proceeding (or, for that matter, in any post-patent Office proceeding) will not operate to extend the term of the patent.

A supplemental examination proceeding is limited to a determination of whether the information properly submitted as part of the request raises a substantial new question of patentability (SNQ). See 35 U.S.C. 257(a).

However, an item of information limited to a correction of factual information, alone, may not raise a substantial new question of patentability. For example, an item of information limited to the correction of a missing or erroneous foreign priority or domestic benefit claim, alone, generally will not raise an issue of patentability. In order for the correction of a foreign priority or domestic benefit claim to raise a substantial new question of patentability, the request for supplemental examination should also include one or more additional item(s) of information, such as one or more intervening reference(s), that would cause the patentability of the claims under, e.g.,35 U.S.C. 102 or 103, to depend upon the foreign priority or domestic benefit claim. In such an instance, the item of information may raise a SNQ, depending upon whether the foreign priority or domestic benefit claim is or is not corrected. See MPEP § 2816.02 for a further discussion of whether a document raises a SNQ depending upon the correction of a foreign priority or domestic benefit claim. Similarly, information limited to the correction of other factual information, such as the common ownership of the claims, alone, may not raise a SNQ, in the absence of one or more additional item(s) of information that would cause the patentability of the claims to depend upon the issue of common ownership.

If the Office determines that no SNQ is raised by the request, the supplemental examination proceeding concludes with the issuance of a supplemental examination certificate, indicating that no SNQ is raised. See 35 U.S.C. 257(a), 37 CFR 1.620(a), and 37 CFR 1.625(a). Because no SNQ is raised by the request, ex parte reexamination is not ordered. In such an instance, the factual information cannot be corrected because the procedure for making the correction of the factual information is the reexamination that would have been ordered, had the Office determined that a SNQ was raised in the request. In other words, the patent owner may inform the Office of factual information to be corrected during the supplemental examination proceeding, and thus request supplemental examination "to correct information believed to be relevant to the patent" in accordance with 35 U.S.C. 257(a). However, in the absence of information in the request that raises a SNQ, there is no opportunity to make the correction. Thus, the supplemental examination proceeding will not result in any correction to the patent. In such cases, the patent owner may wish to file a reissue application, a certificate of correction, or other proceeding, as applicable, in order to have the information corrected. See, e.g.,MPEP §§ 1402, 1405 and 1481.

If, however, the Office determines that the request raises a SNQ, reexamination will be ordered. See 35 U.S.C. 257(b) and 37 CFR 1.625(b). The factual information may be corrected during the resulting reexamination proceeding in accordance with ex parte reexamination practice. For example, corrections may be made during the resulting reexamination proceeding by filing, where appropriate, an amendment after the initial Office action on the merits (see MPEP § 2813.01 ), or a petition for an unintentionally delayed foreign priority or domestic benefit claim (see MPEP § 2258, subsection IV.E.).

When analyzing a request for supplemental examination, the Office will only consider the item(s) of information provided by the patent owner. The Office will not initiate supplemental examination of the patent in view of any item of information that was not requested by the patent owner to be considered, reconsidered or corrected. For example, any prior art of record in the patent file, that is not properly submitted as one or more additional item(s) of information in the request, will not, in general, be considered during the supplemental examination proceeding, except to determine whether the item(s) of information properly submitted with the request are cumulative to the prior art of record. Furthermore, a request for supplemental examination "of all of the patent claims" solely in view of the "the factual information to be corrected" , without more, is improper. The patent owner is effectively requesting reconsideration of all of the patent claims in view of all prior art in existence (or, at a minimum, all of the prior art of record). Each prior art document, however, would be considered as a separate item of information. Such a request would be improper because it would not comply with the requirements of, for example, 37 CFR 1.610(b). It would fail to include, e.g., (a) a separate list of each prior art document as an item of information; (b) a copy of each item of information, where appropriate; c) a separate, detailed explanation of the relevance and manner of applying each prior art document to every claim for which supplemental examination is requested, etc. In addition, "all prior art in existence" is likely to include more than twelve items of information. See MPEP § 2811 for discussion of the required elements of a supplemental examination request as set forth in 37 CFR 1.610(b).

In summary, the patent owner may inform the Office of factual information to be corrected during the supplemental examination proceeding, and thus request supplemental examination "to correct information believed to be relevant to the patent" in accordance with 35 U.S.C. 257(a). However, in the absence of information in the request that raises a SNQ, the supplemental examination proceeding will not result in a corrected patent. Any correction may only be made during a resulting reexamination proceeding, which is only initiated if the supplemental examination proceeding concludes with a determination that a SNQ was raised. For these reasons, the patent owner should include with the request, as one or more additional items of information, evidence that the patentability of the claims depends upon the factual information to be corrected. Such evidence may include, for example, one or more intervening references.

The Office recommends that any request for supplemental examination, that includes an item of information limited to the correction of factual information, should also include one or more additional item(s) of information that potentially provide evidence that the patentability of the claims depends upon the factual information to be corrected.

For example, where the information to be corrected is a foreign priority or domestic benefit claim, the Office recommends that the patent owner include in the request, as one or more additional item(s) of information, any documents or other information, such as an intervening patent or printed publication, that caused the patent owner to reconsider the effective filing date of the claims. The effective date of some of the claims in a patent which resulted from a continuing application under 35 U.S.C. 120, for example, could be the filing date of the continuing application since those claims were not supported in the parent application. Therefore, intervening patents or printed publications may be available as prior art. See, e.g., In re Ruscetta, 255 F.2d 687, 118 USPQ 101 (CCPA 1958), In re van Langenhoven, 458 F.2d 132, 173 USPQ 426 (CCPA 1972). See also MPEP § 211.05. Similarly, where the information to be corrected involves, for example, the common ownership of the claims, the patent owner should include with the request one or more additional items of information that cause(s) the patentability of the claims to depend upon the common ownership issue, such any prior art or other documents or information that caused the patent owner to reconsider the common ownership of the claims.

Alternatively, the patent owner may include in the request one or more additional items of information which are unrelated to the factual information to be corrected, but which raise a SNQ. For example, the patent owner may include, in addition to information limited to the correction of a domestic benefit claim, an item of information such as a reference patent that would qualify as prior art under 35 U.S.C. 102 even if the domestic benefit claim is corrected.

See MPEP § 2809, subsection IV. Petitions should not be submitted with the request. Petitions including, for example, petitions for unintentionally delayed foreign priority or domestic benefit claims, should only be filed after reexamination is ordered. See MPEP § 2809.01. In addition, amendments to the patent may not be submitted with the request. No amendment may be filed in a supplemental examination proceeding. 37 CFR 1.620(f). If reexamination is ordered, amendments may be filed after an initial Office action on the merits in the resulting reexamination proceeding. See MPEP § 2813.01.

See MPEP § 2816.02, subsection II, for a further discussion of situations where a SNQ is or is not raised, when the request includes information limited to the correction of factual information.