Form PTO/SB/59 Request for Supplemental Examination Transmittal Form

PTO/SB/59 (01-12)
Approved for use through XXXXXXXX . OMB XXXXXXXXXXX
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
(Also referred to as FORM PTO-XXXX)

REQUEST FOR SUPPLEMENTAL EXAMINATION TRANSMITTAL FORM

Address to:

Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450

Attorney Docket No.:
Date:

1.

This is a request for supplemental examination pursuant to 37 CFR 1.610 of patent number _________________
issued ________________________, of which the first-named inventor is ____________________________ .

2.

Supplemental examination of claim(s) _______________________________________________is requested.

3.

a. A cover sheet itemizing each component of the request (e.g., certificate of mailing (if on a separate sheet),
transmittal form, request, and every document submitted as part of the request) is included. 37 CFR 1.610(b)(1).
b. A table of contents for the request is included. 37 CFR 1.610(b)(2).

4.

a. A check in the amount of $____________ is enclosed to cover the fee for processing and treating a
request for supplemental examination, the fee for reexamination ordered under 35 USC 257, and the fee for
processing and treating each non-patent document over 20 sheets in length (37 CFR 1.20(k)(1 - 3));
b.

The Director is hereby authorized to charge all applicable fees as set forth in 37 CFR 1.20(k)(1 - 3)
to Deposit Account No. ________________________; or

c.

Payment by credit card. Form PTO-2038 is attached. 37 CFR 1.610(a).

5.

Any refund should be made by
check or
credit to Deposit Account No.__________________.
37 CFR 1.26(c). If payment is made by credit card, refund must be to the credit card account.

6.

A copy of the patent for which supplemental examination is requested is included. 37 CFR 1.610(b)(9).

7.

CD-ROM or CD-R in duplicate, Computer Program (Appendix) or large table
Landscape Table on CD

8.

Nucleotide and/or Amino Acid Sequence Submission
If applicable, items a. – c. are required.
a.
Computer Readable Form (CRF)
b. Specification Sequence Listing on:
i.
ii.
c.

CD-ROM (2 copies) or CD-R (2 copies); or
paper

Statements verifying the identity of above copies

9.

A copy of any disclaimer, certificate of correction, certificate of extension, supplemental examination certificate,
reexamination certificate, inter partes review certificate, or post grant review certificate that has been issued for
the patent is included. 37 CFR 1.610(b)(9).

10.

A copy of every item of information relied upon is submitted herewith including a listing thereof in Part B of
this form. Also included is a statement including an identification and explanation of each submitted
item of information that was not considered, was inadequately considered, or was incorrect pursuant to
37 CFR 1.610(b)(4).

11.

An English language translation of all necessary and pertinent parts of each non-English language item of
information is included. 37 CFR 1.610(b)(10).

[Page 1 of 4]
This collection of information is required by 37 CFR 1.610. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO to process)
an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 18 minutes to complete, including gathering,
preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on the amount of time you
require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and Trademark Office, U.S. Department
of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS.

PTO/SB/59 (01–12)
Approved for use through xxxxxx. OMB xxxxxxxxxxxx
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.

Patent No.

12.

The attached detailed request includes the following items:
a. An identification of each aspect of the patent for which supplemental examination is sought, including an identification of
the structure, material, or acts in the specification that correspond to each means-plus-function or step-plus-function element,
as set forth in 35 U.S.C. 112(f), in any claim for which supplemental reexamination is requested. 37 CFR 1.610(b)(6).
b. An identification of each issue raised by each item of information. 37 CFR 1.610(b)(7).
c. A separate, detailed explanation for each identified issue, discussing how each item of information is relevant to each
aspect of the patent identified for examination, and how each item of information raises each issue identified for examination,
including an explanation compliant with each of the provisions of 37 CFR 1.610(b)(8)(i)-(ii).

13.

A summary of the relevant portions of each submitted document that is over 50 pages in length (other than the request) is
included. the summary includes the required citations to the particular pages containing the relevant portions. 37 CFR
1.610(b)(11).

14.

A submission by the patent owner in compliance with 37 CFR 3.73(b), which establishes that the requester has the entirety of
the ownership in the patent for which supplemental examination is requested as set forth in 37 CFR 1.601(b), is included.
37 CFR 1.610(b)(12).

15.

The below list includes all prior or concurrent post-patent Office proceedings (ex parte or inter partes reexamination, reissue,
supplemental examination, post grant review, or inter partes review) involving the patent for which supplemental examination
is being requested. 37 CFR 1.610(b)(5). Any prior or concurrent post-patent Office proceedings not listed below are listed on
an attached sheet.
Type of Proceeding

Identifying Number

Filing Date

_____________________________________________________________________________________________
_____________________________________________________________________________________________
_____________________________________________________________________________________________
_____________________________________________________________________________________________
_____________________________________________________________________________________________
______________________________________________________________________________________________
______________________________________________________________________________________________
_____________________________________________________________________________________________
_____________________________________________________________________________________________
_____________________________________________________________________________________________
_____________________________________________________________________________________________
_____________________________________________________________________________________________
______________________________________________________________________________________________
______________________________________________________________________________________________

See attached sheet for a listing of additional prior or concurrent post-patent Office proceedings for which supplemental
examination is requested.

[Page 2 of 4]

16. Correspondence Address: Please recognize, or change, the correspondence address for the file of the above-identified patent
and for the supplemental examination proceeding to be:

The address associated with Customer Number:
Firm or
Individual Name
Address

OR

City

State

Zip

Country
Telephone

Email

17.
WARNING: Information on this form may become public. Credit card information should not be
included on this form. Provide credit card information and authorization on PTO-2038.

_________________________________________________
Authorized Signature

___________________________
Date

__________________________________________________
Typed/Printed Name

___________________________
Registration No.

[Page 3 of 4]

PTO/SB/59 (01-12)
Approved for use through XXXXXXXX . OMB XXXXXXXXXXX
U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
(Also referred to as FORM PTO-XXXX)

REQUEST FOR SUPPLEMENTAL EXAMINATION TRANSMITTAL FORM
PART B – LIST OF ITEMS OF INFORMATION
Patent number for which supplemental examination is requested ___________________

Issue Date ______________

All items of information submitted herewith as part of this request for supplemental examination of the aboveidentified patent are included in the following list:

Privacy Act Statement
The Privacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection with your submission of the
attached form related to a patent application or patent. Accordingly, pursuant to the requirements of the Act, please be advised
that: (1) the general authority for the collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is
voluntary; and (3) the principal purpose for which the information is used by the U.S. Patent and Trademark Office is to process
and/or examine your submission related to a patent application or patent. If you do not furnish the requested information, the
U.S. Patent and Trademark Office may not be able to process and/or examine your submission, which may result in termination
of proceedings or abandonment of the application or expiration of the patent.
The information provided by you in this form will be subject to the following routine uses:
1.

2.

3.

4.

5.

6.
7.

8.

9.

The information on this form will be treated confidentially to the extent allowed under the Freedom of Information Act (5
U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from this system of records may be disclosed to the
Department of Justice to determine whether disclosure of these records is required by the Freedom of Information Act.
A record from this system of records may be disclosed, as a routine use, in the course of presenting evidence to a
court, magistrate, or administrative tribunal, including disclosures to opposing counsel in the course of settlement
negotiations.
A record in this system of records may be disclosed, as a routine use, to a Member of Congress submitting a request
involving an individual, to whom the record pertains, when the individual has requested assistance from the Member
with respect to the subject matter of the record.
A record in this system of records may be disclosed, as a routine use, to a contractor of the Agency having need for the
information in order to perform a contract. Recipients of information shall be required to comply with the requirements
of the Privacy Act of 1974, as amended, pursuant to 5 U.S.C. 552a(m).
A record related to an International Application filed under the Patent Cooperation Treaty in this system of records may
be disclosed, as a routine use, to the International Bureau of the World Intellectual Property Organization, pursuant to
the Patent Cooperation Treaty.
A record in this system of records may be disclosed, as a routine use, to another federal agency for purposes of
National Security review (35 U.S.C. 181) and for review pursuant to the Atomic Energy Act (42 U.S.C. 218(c)).
A record from this system of records may be disclosed, as a routine use, to the Administrator, General Services, or
his/her designee, during an inspection of records conducted by GSA as part of that agency’s responsibility to
recommend improvements in records management practices and programs, under authority of 44 U.S.C. 2904 and
2906. Such disclosure shall be made in accordance with the GSA regulations governing inspection of records for this
purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not be used to make
determinations about individuals.
A record from this system of records may be disclosed, as a routine use, to the public after either publication of the
application pursuant to 35 U.S.C. 122(b) or issuance of a patent pursuant to 35 U.S.C. 151. Further, a record may be
disclosed, subject to the limitations of 37 CFR 1.14, as a routine use, to the public if the record was filed in an
application which became abandoned or in which the proceedings were terminated and which application is referenced
by either a published application, an application open to public inspection or an issued patent.
A record from this system of records may be disclosed, as a routine use, to a Federal, State, or local law enforcement
agency, if the USPTO becomes aware of a violation or potential violation of law or regulation.