MPEP 2820
Submission of Notification of Other Prior or Concurrent Post-Patent Office Proceedings

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

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2820    Submission of Notification of Other Prior or Concurrent Post-Patent Office Proceedings [R-11.2013]

37 C.F.R. 1.620  Conduct of supplemental examination proceeding.

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  • (d) The patent owner must, as soon as possible upon the discovery of any other prior or concurrent post-patent Office proceeding involving the patent for which the current supplemental examination is requested, file a paper limited to notifying the Office of the post-patent Office proceeding, if such notice has not been previously provided with the request. The notice shall be limited to an identification of the post-patent Office proceeding, including the type of proceeding, the identifying number of any such proceeding (e.g., a control number or reissue application number), and the filing date of any such proceeding, without any discussion of the issues of the current supplemental examination proceeding or of the identified post-patent Office proceeding(s).

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37 CFR 1.620(d) requires that the patent owner must, as soon as possible upon the discovery of any other prior or concurrent post-patent Office proceeding involving the patent for which the current supplemental examination is requested, file a paper limited to notifying the Office of the post-patent Office proceeding, if such notice has not been previously provided with the request. The Office anticipates that a patent for which supplemental examination is requested may be involved in other post-patent Office proceedings, including another supplemental examination proceeding. Knowledge of other proceedings is important to ensure a quality determination. In addition, notice is required due to the statutory three-month period within which the Office must conclude the supplemental examination. The notice is limited to an identification of the post patent Office proceeding, including the type (e.g., ex parte or inter partes reexamination, reissue, supplemental examination, post-grant review, inter partes review, or covered business method patent review), an identifying number, such as a control number or reissue application number, and the filing date of the other post-patent Office proceeding. The notice may not include further arguments or information, including any discussion of the issues present in the current supplemental examination proceeding or in the identified post-patent Office proceeding(s). A notice pursuant to 37 CFR 1.620(d) must not include copies of papers filed in a prior or concurrent Office proceeding. If the paper containing the notice is not so limited, the paper will be held to be improper, and will be processed as an unauthorized paper pursuant to 37 CFR 1.620(c).