Will the USPTO’s proposed supplemental examination rules help patent holders?

In January 2012, the USPTO proposed new rules for a supplemental examination proceedings, as mandated by the America Invents Act.  A supplemental examination proceeding will permit a patent owner to request supplemental examination of a patent by asking the USPTO to consider, reconsider, or correct information that may be relevant to the patent.  The information that can be submitted includes prior art publications or patents, as well as other information that may be relevant to patentability such as video recordings or evidence of enablement.

The new program is intended to help patent owners avoid costly challenges that could be raised against a patent during litigation.  The program is also intended to help patent owners avoid charges of inequitable conduct based on an allegation that the patent holder withheld material information from the USPTO.  However, information pled against a patent holder during litigation is not eligible, so the program’s practical effect may be limited to pre-litigation correction of a patent before a lawsuit is filed.

In addition, because patent holders who are considering litigation will likely be hesitant to highlight potential weaknesses in the patents, and because the supplemental examination rules require patent holders to explain why the submission raises a substantial new question of patentability, patent holders may be hesitant to file for supplemental examination in most situations.

Under the proposed rules, within three months of filing the USPTO will consider the patent owner’s request and either (a) issue a certificate confirming patentability or (b) initiate an ex parte reexamination to review the patent.

The proposed fee for requesting supplemental examination is $5,180.  If the USPTO orders an ex parte reexamination, an additional fee of $16,120 will be required.  In a related action, the USPTO proposed to raise the fees for filing a request for ex parte reexamination from $2,520 to $17,750.

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