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New Supplemental Examination Procedure
December 10, 2012

Effective September 16, 2012, patent owners can utilize a new “Supplemental Examination” proceeding to address potential issues affecting granted patent claims. Congress created the procedure with the American Invents Act (AIA) to reduce the amount and cost of litigation often arising with enforcement of patent rights.

Supplemental examination can be carried out to “consider, reconsider, or correct” information believed to be relevant to the patent. The procedure entails two phases. The first phase, from which the proceeding derives its name, is a submission of information for consideration by the United States Patent and Trademark Office (USPTO). If the submitted information raises a substantial new question of patentability the request ripens into a second phase of ex parte reexamination. If the request is denied, that denial constitutes a determination by the USPTO that the information fails to raise a substantial new question of patentability.

The primary advantage obtained by such review is that it can be used to limit the defenses available to potential infringers, particularly about patent enforceability. The newly implemented law provides that, with certain exceptions, a patent shall not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered or was incorrect during prior examination of a patent if that information was considered, reconsidered or corrected during a supplemental examination. Thus, a patentee’s failure to provide information during examination may be excused if that information is later provided in a request for supplemental examination.

Supplemental Examination Requirements

A request for supplemental examination under 35 U.S.C. §257 can only be filed by the patent owner and must include the following:

  • a list of informational items to be considered, reconsidered or corrected (limited to twelve items);
  • identification of each patent claim for which supplemental examination is sought;
  • a separate explanation of the relevance and manner of applying each informational item to each claim for review;
  • a summary of the relevant portions of any submitted document, other than the request, that is over fifty pages in length; and
  • payment of all necessary fees.

The USPTO has three months to grant or deny a request for supplemental examination. At the time of that decision, the USPTO will electronically publish a supplemental examination certificate that will be attached to the granted patent.

Supplemental Examination Fees

Two primary fees must be paid when filing a request for supplemental examination. The first primary fee of $5,140 applies to processing and treating a request for supplemental examination. This fee is not refundable and pays for the USPTO’s initial consideration of the request and submitted information. The second primary fee of $16,120 is applied to ex parte reexamination when the USPTO grants a request for supplemental examination. This second fee, however, must be paid when the request is filed, but will be refunded if the USPTO denies the request.

Other fees may also apply including: (1) a $170 fee for processing and treating each non-patent document over 20 pages in length and (2) an additional $280 fee for each additional 50 pages or fraction thereof when the document is more than 50 pages in length.

The USPTO anticipates that supplemental examination fees may be reduced for small and micro entities. Since implementation of supplemental examination will begin before fee setting under Section 10 of the AIA takes place, the full fees will apply to all patent owners well into 2013.

Information Eligible for Consideration

The information that may be considered in supplemental examination includes both patent and non-patent publications that are typically considered in novelty and obviousness determinations under 35 U.S.C. §§102 & 103. Additional information ineligible for conventional reexamination, however, can also be considered through supplemental examination. Such information may be related to other requirements such as utility, written description and enablement under 35 U.S.C. §§101 & 112.

The number of information items eligible for review is limited to 12 items per request. The information can originate from various forms including publications, audio and visual recordings, and affidavits, but the information must be submitted in written form. Thus, if the information is an audio recording, a written transcript of the recording must be submitted and identified as the informational item. A video recording may be offered in the form of an audio transcript with select video still images, if desired.

If an affidavit is used to present distinct issues, statements by an affiant about the patentability of a claim under section 101, and another statement affecting the patentability of a different claim under section 103 will be counted as two items of information. If two sales receipts are offered in resolving potential on sale bars, each is considered as a separate informational item.

If the patent owner wants a reference reviewed for obviousness determination in view of a reference already considered, the owner must identify both the new reference and the already-considered reference as two informational items. The owner cannot make a blanket request for review of one document and “all existing prior art for the purposes of 35 U.S.C. §103.”

There is no limit to the number of requests for supplemental examination that can be filed. If a patent owner has more than 12 items for which supplemental examination is sought, multiple requests can be filed at any time.

Timing Considerations

A request for supplemental examination may only be sought during the period when a patent is enforceable. This period corresponds to the normal 20-year term plus any applicable patent term extensions and adjustments and an additional six years. A request for supplemental examination will not be made public or otherwise available until the request is granted a filing date. This should avoid the prospect of a “race to the court” if a request is defective and a potential litigant wants to challenge the patent before the request is perfected or completed.

There are two statutory exceptions to the safe harbor that affect when a patent owner seeks supplemental examination. First, the safe harbor obtained by supplemental examination is unavailable if either unenforceability was plead with particularity in a civil action or set forth in an abbreviated new drug application paragraph (iv) notice letter before a request was filed.

Second, the safe harbor is not available if supplemental examination and any resulting reexamination are incomplete before a §337(a) action at the International Trade Commission (ITC) or for infringement under 35 U.S.C. §281 are filed. It is unknown, however, whether this safe harbor will apply if a party brings a declaratory judgment action before supplemental examination is completed.

Strategy Considerations

The following strategies might be considered before seeking supplemental examination: 

  •  If you are a patent owner who qualifies as a small or micro entity, consider delaying supplemental examination until the USPTO puts forth a fee proposal under Section 10 of the AIA. It is possible that the filing fees will be halved for small entities and reduced by 75% for micro entities.
  • If you have several documents that you want reviewed, each document counts toward the maximum number of items of information. Try to leave out any reference that only contains cumulative information.
  • The cost of supplemental examination is several times more expensive than filing a continuation application. Thus, consider keeping a continuation application pending that relates to the issued patent. It may be more cost effective to present the items of information in an Information Disclosure Statement (IDS) in a continuation application.
  • If there is a clear need to amend the claims, consider filing a reissue application for any narrowing amendment or, within two years of the patent grant, any broadening amendment. Keep in mind that a broadening reissue cannot be sought to capture subject matter that was excluded by amendment.
  • If you want to use a patentee’s improper handling of material information in defense of a potential patent infringement claim, consider filing a declaratory judgment action before the patentee seeks or completes supplemental examination.

More information may be found at: http://www.uspto.gov/aia_implementation/faq.jsp.

If you have any questions or wish to discuss how the AIA legislation may impact you, please contact your attorney at Brinks Gilson & Lione or visit the Patent Reform section of our website.

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This Strategy Briefing is intended to provide information of general interest to the public and is not intended to offer legal advice about specific situations or problems. Brinks Gilson & Lione does not intend to create an attorney-client relationship by offering this information and review of the information shall not be deemed to create such a relationship. You should consult a lawyer if you have a legal matter requiring attention. For further information, please contact a Brinks Gilson & Lione lawyer.

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