MPEP 2803.01
Inquiries from Persons Other Than the Patent Owner

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in January 2018

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2803.01    Inquiries from Persons Other Than the Patent Owner [R-11.2013]

37 C.F.R. 1.601  Filing of papers in supplemental examination.

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  • (b) Any party other than the patent owner (i.e., any third party) is prohibited from filing papers or otherwise participating in any manner in a supplemental examination proceeding.

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37 CFR 1.601(b) prohibits third parties from filing papers or otherwise participating in any manner in a supplemental examination proceeding. In addition, because only the patent owner can file the request for supplemental examination, third party participation is prohibited in any ex parte reexamination ordered under 35 U.S.C. 257 and 37 CFR 1.625, pursuant to ex parte reexamination practice.

Office personnel, including both the examining and the technical support staff, should not enter into a discussion with, or answer inquiries from, third parties (i.e., parties who are not the patent owner) regarding a supplemental examination proceeding. A party who is not the patent owner should be referred to the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) in the art unit of the assigned examiner. Only questions on strictly general procedural matters regarding supplemental examination, i.e., not directed to any specific supplemental examination proceeding, may be discussed by the CRU SPRS with that party.

Employees of the Office, particularly CRU examiners who have conducted a supplemental examination proceeding that has been concluded, should not discuss or answer inquiries from any person outside the Office as to whether a certain reference or other particular evidence was considered during the proceeding, and whether that reference, or other evidence, would have been determined to raise a substantial new question of patentability, had it been considered during the proceeding. Patent practitioners (or other members of the public) must not address improper inquiries to members of the patent examining corps and to the Office as a whole. Inquiries from members of the public relating to the matters discussed above must, of necessity, be refused and this refusal should not be considered discourteous or an expression of opinion by the Office as to the validity, patentability, or enforceability of the patent.

The definitions set forth in 37 CFR 104.1 and the exceptions in 37 CFR 104.21 are applicable to this section.