Supplemental Examination: Pitfalls for Noncompliant Items of Information

Supplemental Examination (SE)—established by 35 U.S.C. § 257 of the America Invents Act—provides patent owner a mechanism to request the Patent Office (the “Office”) consider, reconsider, or correct information believed to be relevant to the patent. As highlighted in a previous SE article published in our firm’s January 2025 PTAB Year in Review, the substantive and procedural requirements of SE are too frequently misunderstood or overlooked and, as a result, often cost applicants time and money responding to notices of noncompliance. One particular pitfall stems from what types of items can be submitted and what types of items are considered a plurality of items.

Rules for submitting items of information are broad and invite Examiner discretion when evaluating an SE request for noncompliance. For instance, according to 37 C.F.R. § 1.605, an item of information “includes a document submitted as part of the request that contains information, believed to be relevant to the patent, that the patent owner requests the Office to consider, reconsider, or correct.” And MPEP § 2809 states that “when counting the number of items of information submitted for supplemental examination, the Office will tally the number of items of information, such as documents, presented.” However, there is little guidance as to what constitutes an item of information and how items should be counted. Our research shows that this ambiguity has directly caused a number of noncompliant SE requests over recent years and suggests the procedural requirements for SE requests can be as difficult to meet as the substantive requirements.

Two tips to consider when submitting an SE request are: (1) third-party (e.g., expert) opinions may not be submitted as items of information; and (2) a single document can count as more than one item of information.

1. Third-Party Opinions Are Not Counted as Items of Information

Our research has shown that non-U.S. office actions and expert reports or declarations containing expert opinions from other proceedings may not be considered as proper items of information, although they could contain “information, believed to be relevant to the patent, that the patent owner requests the Office to consider, reconsider, or correct,” as specified in 37 C.F.R. § 1.605. In some cases, we have seen that the Office takes the arguments and opinions in the foreign office actions and expert reports and declaration from other proceedings as merely third-party opinions, rather than patent owner opinions. As a result, the arguments and opinions in the foreign office actions and expert reports and declarations are determined to be improper items of information for consideration in an SE request.

2. A Single Document Can Include More Than One Item of Information.

Our research has also shown that a single document can be counted as more than one item of information if it contains multiple sections, chapters, or portions that each contain an individual topic of information. This has caused frustration for some patent owners who subsequently received notices of noncompliance for submitting over 12 items of information.

2.1 Books

According to MPEP § 2809, if a patent owner relies upon different abstracts in a “book of meeting abstracts,” the Office will likely “treat each abstract as a separate item of information.” The Office also suggests the patent owner to “cite and rely upon only the particular abstracts that are relevant to the patent” and to avoid citing extra abstracts or even an entire book of meeting abstracts. As a result, for a book assembling different meeting abstracts or different articles, each meeting abstract or each article could be counted as a separate item of information if they are directed to different aspects of information. In some instances, a book with multiple chapters directed to one topic may be treated as separate items of information, similar to a book of meeting abstracts.

Accordingly, it would be a best practice for the patent owner to cite and only rely upon the particular abstracts or chapters of a book necessary for SE.

2.2. Declaration and Documents in Other Proceedings

According to MPEP § 2809, a “declaration or affidavit submitted as part of a request would be considered an item of information,” except when “the declaration presents two distinct items of information, in which case “each item of information contained within the declaration will be counted separately, resulting in two items of information.” MPEP § 2809 provides an example declaration that presents both “information relating to a potential ground under 35 U.S.C. § 101 as to patent claim 1 that was not considered during the prior examination of the patent, and information relating to erroneous facts or data presented during the prior examination of the patent with respect to an issue under 35 U.S.C. § 103” to include multiple items of information.

As such, it would be prudent for patent owners to evaluate how many substantive issues are addressed in a particular declaration.

2.3. Court Documents

Moreover, some patent owners have received noncompliant notices due to information contained within accompanying court documents. One notice of noncompliance was caused by a court document describing a group of patents that “cover[ed a] myriad of claim construction(s) for term(s), which are not necessarily congruent / relevant, to those at hand.”[1] Additionally, the Office found that each patent enumerated in the court document as well as each distinct section of the document as independent items of information. Thus, court documents may increase the total number of items of information due to the subsections and patents listed therein.

Takeaway:

In conclusion, our research has shown that a patent owner can run into a myriad of pitfalls when submitting SE requests. For example, third party opinions may not be counted as items of information. Additionally, a single document can be counted as more than one item of information if the document relates to multiple substantive questions. To avoid the noncompliant notices, patent owners should look to counsel with a deep understanding of the procedural requirements for SE requests.

[1] This notice of noncompliance stemmed from supplemental examination App. No. 96/000,395