Fitch, Even, Tabin & Flannery LLP: USPTO Issues Final Rules for Supplemental Examination

Fitch, Even, Tabin & Flannery LLP: USPTO Issues Final Rules for Supplemental Examination

As we reported earlier, on August 14, 2012, the U.S. Patent and Trademark Office (USPTO) published final rules in the Federal Register implementing supplemental examination provisions and revised reexamination fees. The patent owner may file a request for supplemental examination of a patent to consider, reconsider, or correct information believed to be relevant to the patent. The new supplemental examination applies to patents issued before, on, or after September 16, 2012. The USPTO will determine whether the information presented in the request raises a substantial new question of patentability and, if it does, then ex parte reexamination will be ordered.

A supplemental examination request is different from a request for ex parte reexamination (which still can be used) because in requesting a supplemental exam, a patent owner is not limited to submitting only patents and printed publications. Any items of information can be submitted as long as they are in written form. Any issues of patentability may be raised, such as issues under 35 U.S.C. §§ 101 and 112. Within three months of the filing date of the request for supplemental examination, a certificate will be issued that concludes the supplemental examination and indicates if a substantial new question of patentability was found, in which case an ex partereexamination will be ordered.

If ex parte reexamination is ordered after a request for supplemental examination, the subsequent ex parte reexamination proceeds according to regular reexamination procedures (37 CFR §§ 1.530 through 1.570) except that (1) the patent owner does not have the right to file a statement pursuant to 35 U.S.C. § 304 (and thus, cannot file any amendments prior to an office action), and (2) the basis of the ex parte reexamination is not limited to patents and printed publications.

A failure to cite art in an original prosecution can be corrected because a patent shall not be held unenforceable on the basis of conduct relating to information not considered, inadequately considered, or incorrect in a prior examination of a patent if the information is considered, reconsidered, or corrected in a supplemental examination. The barring of the inequitable conduct defense would not apply to any defense raised in an infringement action based upon information filed with a supplemental examination unless the supplemental examination and any ex parte reexamination resulting from it are concluded before the date on which the infringement action is brought. Thus, the filing of a supplemental examination request cannot be made by the patent owner after charges of inequitable conduct already exist. If a "material fraud" comes to the attention of the USPTO (as opposed to inequitable conduct), claims may be cancelled. Third parties are not permitted to participate in a supplemental examination.

The supplemental examination request is limited to no more than 12 items of information and must contain (1) a list of each item of information that is requested to be considered, reconsidered, or corrected; (2) an identification of each claim of the patent for which supplemental examination is requested; (3) an explanation of the relevance and manner of applying each item of information to each claim; (4) a summary of the relevant portions if the document submitted is over 50 pages in length; and (5) a non-refundable processing fee of $5,140 and an ex parte reexamination fee of $16,120, which is refunded if there is no reexamination ordered. If there are more than 12 items of information, then multiple supplemental examination requests may be filed.

The new fee for an ex parte reexamination filed without being ordered pursuant to a supplemental examination is $17,750 plus $1,930 for the petition fee, which covers the cost of processing the request. If the reexamination request is denied, the reexamination fee minus $4,320 is refunded. The USPTO retains $4,320 to cover the cost of reviewing a denied request.

If you have any questions regarding these new procedures and fees, please contact Fitch Even partner Timothy E. Levstik.

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