Ruttler Mills PLLC

Seattle Patent Attorneys and Trademark Lawyers

206-838-6400 Complimentary 15 Minute Consultation

Supplemental Examination

Posted Friday, September 21, 2012 by Mike Cicero

Beginning September 16, 2012, the America Invents Act will enable patent owners to utilize the new Supplemental Examination procedure. Under this procedure, the U.S. Patent and Trademark Office (PTO) will be asked for supplemental examination of a patent in view of information presented by the patent owner. Upon a request by a patent owner, the PTO will then consider, reconsider, or correct the patent in light of the newly presented information. Supplemental Examination will enable diligent patent owners to block later claims of patent invalidity due to inequitable conduct stemming from a failure to present the information to the PTO during patent prosecution.* For more on inequitable conduct read* Changes to Implement the Supplemental Examination Provisions of the Leahy-Smith America Invents Act and to Revise Reexamination Fees.”

The rules allow a patent owner to file supplemental examination requests, each containing no more than twelve pieces of information, at any time during the enforceable term of the patent. The final rules specify that each request must: (1) list the items of information to be considered, reconsidered, or corrected; (2) identify each patent claim for which supplemental examination is requested; (3) explain the relevance and manner of applying each item of information to the corresponding identified patent claims; and (4) summarize the relevant portions of any submitted document, other than the request, that is over 50 pages in length. Additionally, the request may explain why the claims are patentable over the submitted information and whether an item of information does or does not raise a substantial new question of patentability.

Requests for supplemental examination which meet the requirements above, and are therefore entitled to a filing date, will viewable by the public via the Office Image File Wrapper for the patent and the Patent Application Information Retrieval system. However, in order to afford patent owners the opportunity to correct defective requests without notifying the public of the submitted information and risking an assertion of inequitable conduct before a filing date is issued, the PTO will not publish individual requests until they meet the conditions to be entitled to a filing date.

Once an adequate request is received, the PTO will within three months review the request and determine whether a substantial new question of patentability has been raised by any of the submitted items of information. The PTO will only consider the information submitted in the request and will not allow amendments or interviews. Following supplementary examination the PTO will issue a certificate stating whether a substantial new question of patentability was discovered, and if one was discovered the PTO will also initiate ex parte reexamination of the patent which will be governed by the usual rules.

The fee for a request for supplemental examination has been set at $5,140 and the fee for an ex parte reexamination resulting from such a request has been set at $16,120. Both fees are due with the request but if no ex parte reexamination results the $16,120 fee will be returned.

Supplemental Examination ›› Ruttler Mills PLLC