美國專利答辯補充修正與補充回應規定

筆記

「補充修正（supplemental amendment）」與「補充回應/答辯（supplemental response）」規定涉及申請人在已經提出答辯或是特定回應後，又有想法想要補充，包括修正與答辯，甚至是對已經提出的回應有更新/反悔的意見時，美國專利審查基準仍有相關規定。

「補充修正（supplemental amendment）或補充回應（supplemental response）」
MPEP 714.03(A)直指37CFR1.111規定，針對非終駁官方意見（non-final office action），專利申請人（或指進入reexamination的專利權人）應作出回應（37CFR1.111(b)規定），指出專利性所在，要求作出進一步審查，可避免專利被拋棄，隨附可能有修正或是沒有修正。

[USPTO可以接受補充回應]
情況一：當申請人針對OA作出回應後，USPTO可能拒絕另一次補充回應，但如果是以下狀況，USPTO可以接受補充回應（supplemental reply）（37 C.F.R. 1.111(a)(2)）：
(A)刪除請求項（Cancellation of a claim(s)）；
(B)採用審查委員建議（Adoption of the examiner suggestion(s)）；
(C)讓申請案處於可專利條件下（Placement of the application in condition for allowance）；
(D)在提出回應後，又針對PTO要求提出另一次回應（Reply to an Office requirement made after the first reply was filed）；
(E)形式修正（如錯字修正）（Correction of informalities）；
(F)簡化上訴議題（Simplification of issues for appeal）。
情況二：如果在37 CFR 1.103(a)(c)規定的OA期限內，USPTO仍會接受補充回應。

37 C.F.R. 1.945規定專利權人應於多方再審程序（inter partes reexamination）的官方意見發出後30天內作出回應，當專利權人作出回應後，仍有機會作出補充回應/答辯，但專利權人應提出為何要提出補充回應/答辯的足夠的理由，這些理由包括：
(1)在上述37 C.F.R. 1.111(a)(2)(i)(ii)規定的補充事項(A)(B)(C)(D)(E)(F)中；
(2)解釋為何補充回應內容沒有在之前原本的回應內容中；
(3)一個令人信服應提出補充回應的理由。


以下為法條摘錄：

MPEP 714.03(A)   SUPPLEMENTAL AMENDMENT

37 C.F.R. 1.111   REPLY BY APPLICANT OR PATENT OWNER TO A NON-FINAL OFFICE ACTION.

• (a)
  • (1) If the Office action after the first examination (§ 1.104) is adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply and request reconsideration or further examination, with or without amendment. See §§ 1.135 and 1.136 for time for reply to avoid abandonment.
  • (2) Supplemental replies.
    • (i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:
      • (A) Cancellation of a claim(s);
      • (B) Adoption of the examiner suggestion(s);
      • (C) Placement of the application in condition for allowance;
      • (D) Reply to an Office requirement made after the first reply was filed;
      • (E) Correction of informalities (e.g., typographical errors); or
      • (F) Simplification of issues for appeal.
    • (ii) A supplemental reply will be entered if the supplemental reply is filed within the period during which action by the Office is suspended under § 1.103(a) or (c).

*****

Applicants are encouraged to include a complete fully responsive reply in compliance with 37 CFR 1.111(b) to an outstanding Office action in the first reply to prevent the need for supplemental replies. Supplemental replies will not be entered as a matter of right, except when a supplemental reply is filed within a suspended period under 37 CFR 1.103(a) or (c) (e.g., a suspension of action requested by the applicant when filing an RCE). See MPEP § 709 regarding suspension of action. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:

• (A) cancellation of a claim;
• (B) adoption of the examiner’s suggestions;
• (C) placement of the application in condition of allowance;
• (D) reply to an Office requirement made after the first reply was filed;
• (E) correction of informalities (e.g., typographical errors); or
• (F) simplification of issues for appeal.

When a supplemental reply is filed in sufficient time to be entered into the application before the examiner considers the prior reply, the examiner may approve the entry of the supplemental reply if, after a cursory review, the examiner determines that the supplemental reply is limited to one of the situations set forth above. This list is not exhaustive. The examiner has the discretion to approve the entry of a supplemental reply that is not listed above. If a supplemental reply is a non-compliant amendment under 37 CFR 1.121 (see MPEP § 714), the supplemental reply will not be entered. If a supplemental reply is not approved for entry, the examiner should notify the applicant in the subsequent Office action. If applicant wishes to have a not-entered supplemental reply considered, applicant should include the changes in a reply filed in response to the next Office action. Applicant cannot simply request for its entry in the subsequent reply. The submission of a supplemental reply will cause a reduction of any accumulated patent term adjustment under 37 CFR 1.704(c)(8). If the supplemental reply is approved for entry, the examiner should clearly indicate that the subsequent Office action is responsive to the first reply and the supplemental reply.

Examiners may use form paragraph 7.147 to notify applicants that a supplemental reply is not approved for entry.

MPEP 2666    PATENT OWNER RESPONSE TO OFFICE ACTION

37 C.F.R. 1.945   RESPONSE TO OFFICE ACTION BY PATENT OWNER IN INTER PARTESREEXAMINATION.

• (a) The patent owner will be given at least thirty days to file a response to any Office action on the merits of the inter partesreexamination.
• (b) Any supplemental response to the Office action will be entered only where the supplemental response is accompanied by a showing of sufficient cause why the supplemental response should be entered. The showing of sufficient cause must include:
  • (1) An explanation of how the requirements of § 1.111(a)(2)(i) are satisfied;
  • (2) An explanation of why the supplemental response was not presented together with the original response to the Office action; and
  • (3) A compelling reason to enter the supplemental response.

...

III.   SUPPLEMENTAL RESPONSE TO OFFICE ACTION

Pursuant to 37 CFR 1.945(b), any supplemental response to the Office action in an inter partes reexamination proceeding must be accompanied by a showing of sufficient cause why the supplemental response should be entered. If such a showing is not provided, the supplemental response will not be entered, and may be sealed from public view in the Image File Wrapper (IFW), if it has already been scanned into the IFW for the proceeding.

The showing of sufficient cause why the supplemental response should be entered must include:

• (A) an explanation of how the requirements of 37 CFR 1.111(a)(2)(i) are satisfied;

• (B) an explanation of why the supplemental response was not presented together with the original response to the Office action; and

• (C) a compelling reason to enter the supplemental response.

...

資料來源：USPTO, www.bitlaw.com

Ron