37 CFR 1.625: Conclusion of supplemental examination; publication of supplemental examination certificate; procedure after conclusion

Taken from the Ninth Edition of the MPEP, Revision 07.2015, Last Revised in November 2015

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1.625    Conclusion of supplemental examination; publication of supplemental examination certificate; procedure after conclusion.

  • (a) A supplemental examination proceeding will conclude with the electronic issuance of a supplemental examination certificate. The supplemental examination certificate will indicate the result of the determination whether any of the items of information presented in the request raised a substantial new question of patentability.
  • (b) If the supplemental examination certificate states that a substantial new question of patentability is raised by one or more items of information in the request, ex parte reexamination of the patent will be ordered under 35 U.S.C. 257. Upon the conclusion of the ex parte reexamination proceeding, an ex parte reexamination certificate, which will include a statement specifying that ex parte reexamination was ordered under 35 U.S.C. 257, will be published. The electronically issued supplemental examination certificate will remain as part of the public record of the patent.
  • (c) If the supplemental examination certificate indicates that no substantial new question of patentability is raised by any of the items of information in the request, and ex parte reexamination is not ordered under 35 U.S.C. 257, the electronically issued supplemental examination certificate will be published in due course. The fee for reexamination ordered as a result of supplemental examination, as set forth in § 1.20(k)(2), will be refunded in accordance with § 1.26(c).
  • (d) Any ex parte reexamination ordered under 35 U.S.C. 257 will be conducted in accordance with §§ 1.530 through 1.570, which govern ex parte reexamination, except that:
    • The patent owner will not have the right to file a statement pursuant to § 1.530, and the order will not set a time period within which to file such a statement;
    • (2) Reexamination of any claim of the patent may be conducted on the basis of any item of information as set forth in § 1.605, and is not limited to patents and printed publications or to subject matter that has been added or deleted during the reexamination proceeding, notwithstanding § 1.552(a);
    • (3) Issues in addition to those raised by patents and printed publications, and by subject matter added or deleted during a reexamination proceeding, may be considered and resolved, notwithstanding § 1.552(c); and
    • (4) Information material to patentability will be defined by § 1.56(b), notwithstanding § 1.555(b).
[Added, 77 FR 48828, Aug. 14, 2012, effective Sept. 16, 2012]