The America Invents Act will allow patent owners to ask the U.S.
Patent and Trademark Office ("PTO") for supplemental
examination to consider, reconsider, or correct any information
believed to be relevant to a patent. Once this information has been
considered, reconsidered, or corrected, the patent cannot be held
unenforceable based on conduct relating to that information. This
new procedure, which is subject to certain statutory limitations,
will become available for all U.S. patents on September 16,
On August 14, 2012, after addressing public comments on its
proposed rules, the PTO issued a final rules package entitled
"Changes to Implement the Supplemental Examination Provisions
of the Leahy-Smith America Invents Act and to Revise Reexamination
Supplemental Examination Request Requirements
Under the rules, a patent owner may file one or more
supplemental examination requests at any time during the life of a
patent. Each request may include no more than twelve items of
information. The PTO's Comments provide guidance on counting
the items: for example, a single declaration addressing two
distinct issues will constitute two items.
Simplifying the previously proposed rules, section 1.610(b)
requires the request to identify the items of information and each
claim at issue, and to explain in detail the relevance and manner
of applying each item to each claim. The request must summarize the
relevant portions of any documents over fifty pages. It may also
explain how the claims patentably distinguish over the submitted
items of information and why each item does or does not raise a
substantial new question of patentability ("SNQP").
The PTO will not grant a filing date to a noncompliant request.
But in response to concerns that a noncompliant request may trigger
a "race to court" before the requester can correct any
defects and receive a filing date, the PTO announced that it will
not publish supplemental examination requests before a filing date
has been granted.
PTO Action on a Proper Request
Within three months of receiving a request, the PTO will
determine whether an SNQP is raised by any item of information. The
PTO will generally consider only items submitted with the request.
No interviews or amendments will be permitted during supplemental
examination. If the PTO finds an SNQP, it will issue a supplemental
examination certificate and institute an ex parte reexamination. If
it finds no SNQP, it will issue a supplemental examination
certificate without instituting any reexamination.
Usual ex parte reexamination rules will govern a subsequent
reexamination proceeding with certain exceptions. For example, the
PTO may reexamine any claim based on any item of information in the
request, including issues unrelated to patents and printed
If the PTO becomes aware that a "material fraud" on the
PTO may have been committed, it will refer the matter to the U.S.
Attorney General. Addressing concerns about this provision,
however, the PTO stated that such referrals should be rare and that
multiple PTO officials would be consulted before any referral would
The PTO set a $17,750 fee for requesting ex parte reexamination,
but $13,430 will be refunded if no ex parte reexamination is
The PTO set a $5,140 fee for a request for supplemental
examination and a $16,120 fee for ex parte reexamination resulting
from supplemental examination. Although both fees must be paid with
the request, the $16,120 fee will be refunded if the PTO does not
institute a reexamination.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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