Chapter 2800 Flashcards
Under AIA, why are supplemental examination of a patent requested?
If the patent owner wants a patent to consider, reconsider, or correct information believed to be relevant to the patent
What will supplemental examination determine?
It will determine whether the information presented in the request raises a substantial new question of patentability
What happens if substantial new question of patentability is found?
Then, the PO will order ex parte reexamination of the patent
EXCEPT
that the patent owner does not have the right to file an additional statement before reexamination begins and the basis of the ex parte reexamination is not limited to patents and printed publication
each new substantial new question of patentability identified during supplemental examination proceeding will be addressed by the PO during the ex parte reexamination proceeding
How can a patent owner cure a claim of inequitable conduct?
By submitting the allegedly withheld information to the PO during supplemental examination
What is required in a request for supplemental examination?
a list of each item of information that is requested to be considered, reconsidered, or corrected
an identification of each claim of the patent for which supplemental examination is requested
a separate explanation of the relevance and manner of applying each item of information to each claim of the patent for which it was identified
a summary of the relevant portions of any submitted document, other than the request, that is over 50 pages in length
Fee
Which information may be presented in a request for supplemental examination?
patents
printed publications
issues of patentability, under Section 101 and 112
What happens after submitting a request for supplemental examination?
the PO shall conduct supplemental examination and shall conclude the examination by the issuance of supplemental examination certificate
What is Supplemental Examination Certificate?
it’ll indicate whether the items of information presented in the request raise a substantial new question of patentability
When did supplemental reexaminations go into effect?
it became effective on September 16, 2012 and is available for all patents, regardless of issue date
When AIA switched from “first-to-invent” to “first-to-file” system, what was eliminated?
interference proceedings
What was created under AIA that is similar to the opposition practice in Europe?
post-grant opposition proceeding
