Patents Post-Grant: Supplemental Examination Rules Issued by USPTO

New Mechanism to Cleanse Inequitable Conduct

Yesterday, the USPTO issued a Notice of Proposed Rule Making to outline the procedures for conducting supplemental examination (here). (See the earlier discussion on the related changes to patent reexamination fees provided by this Notice).

As a reminder, the America Invents Act provided supplemental examination (SE) as a mechanism to cure inequitable conduct before the USPTO. Upon submission of SNQs that explain potential issues for supplemental examination, the Office may initiate a type of "re-examination" that follows the procedures for ex parte patent reexamination with some modification. In essence this proceeding was based on a "but for" theory later adopted in Therasense.

In addition to proposing a steep price to initiate SE and conduct the related reexamination proceeding, (roughly $22K) the Office has outlined the rules for conducting supplemental examination.

Notable provisions are as follows:

-A request for SE is limited to a maximum of 10 "items of information." (additional filings may be pursued in parallel)

-Only the owner of a patent may pursue SE.

-The Office will consider SE requests within 90 days of submission in the same manner as patent reexamination.

-A mapping of means or step-plus-function claims relative to the patent specification for any such claim to be examined.

-A mapping of specification support for claims called into question by the presentation of a 112 or 101 based SNQ.

-Explanation of documents, and transcripts of any audio/vide0 submissions are required. (SE is not limited to patents or printed publications).

-No amendments or interviews are permitted in SE. (i.e., within first 90 days of filing)

-The SE proceeding concludes with a determination that an SNQ exists, or not. Should an SNQ be identified, ex parte patent reexamination is conducted in the usual manner with the exception that there is no Patent Owner Statement permitted and the  proceeding will not be limited to patents and printed publications.

Curiously, the Notice predicts that all owner initiated ex parte patent reexamination filings will be filed as SE requests going forward. The thinking being that the added benefit of inequitable conduct protection will be a driving force for filers. However, after Therasense, and in view of the fact that SE is not limited to patents and printed publications, and in some respects requires much more detail as to claim mappings, etc., this prediction seems more than a bit optimistic.

Although not outlined in the Notice, the Office has stated publicly that SE will be conducted by the examiners of the Central Reexamination Unit (CRU).

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