M.P.E.P 2800 Supplemental Examination

Question 1

Who can file a supplemental examination?

Answer 1

Only patent owner can file supplemental examination–no third parties.

If the inventor is the patent owner, they can file a supplemental examination.

If the inventor assigned all the rights to a company, the company is the patent owner, and thus, the company can file the supplemental examination–not inventor.

Question 2

What is the purpose of a supplemental examination and for what types of applications?

Answer 2

This is a secondary examination that takes place after the patent is issued and can only be initiated by the patent owner. It is to provide an avenue for the patent owner to ask the PTO to consider, reconsider, or correct information believed to be relevant to the patent.

Only for issued patents.

Question 3

In what situation would a supplemental examination be useful?

Answer 3

When inequitable conduct may have occurred during the initial examination to e.g., correct errors or omissions to inoculate the patent against later charges of inequitable conduct.

Question 4

What is inequitable conduct and why does it matter?

Answer 4

Inequitable conduct stems from 37 CFR 1.56 (duty to disclose material pertaining to patentability of application). Failure to do so can result in a finding of inequitable conduct during litigation, which means the entire patent is unenforceable.

Question 5

Does supplemental examination include all patents or patents issued before/after a certain date?

Answer 5

Supplemental examination can be used for any patent whether issued on, before, or after Sept. 16, 2012 even though it was enacted on Sept. 16, 2011.

Question 5

What must the supplemental examination request contain for it to be complete?

Answer 5

1. Identification of the patent number for which supplemental examination is requested;
2. List of “items of information” that are being requested be to considered, reconsidered, or corrected;
3. List identifying any other prior or concurrent post-patent Office proceedings involving the patent for which supplemental examination is being requested;
4. Identification of each claim of the patent for which supplemental examination is requested;
5. A separate, detailed explanation of the relevance and manner of applying each item of information to each claim of the patent for which supplemental examination is requested.
6. Copy of patent for which supplemental examination is requested and a copy of any disclaimer or certificate issued for the patent.
7. A copy of each item of information (OTHER than US patents and published US patent applications) and translation if necessary
8. Summary of relevant portions of any submitted document that is over 50 pages in length; and
9. An identification of the owners of the entire right, title, and interest in the patent requested to be examined, and a submission by the patent owner establishing the entirety of the ownership in the patent requested to be examined.

Not required to submit copies of U.S. patents and U.S. patent application publications and items of information that form part of the discussion within the body of the request as specified in 1.605(b)

Question 6

Once a request for supplemental examination is filed, when will the examination conclude?

Answer 6

Within 3 months after the date of request for supplemental examination is received, the Director shall conduct the supplemental examination and conclude such examination by issuing a certificate indicating whether the information presented in the request raises a SNQ of patentability.

Question 7

What happens if the request for supplemental examination is non-compliant?

Answer 7

No filing date will be awarded. PTO does not give an opportunity to cure the request.

Question 8

What is the limit on the number of items of information that can be presented for supplemental examination?

Answer 8

12 items of information/request. If 12 items of information are not sufficient for a particular situation, more than one request for supplemental examination of the same patent may be filed at any time.

PTO does not count the number of issues raised or the number of grounds to consider when determining items of information.

Question 9

What kind of items of information are acceptable for submitting?

Answer 9

Not limited to patents and publications, so it can also include transcripts of audio or video recordings.

Patent owner may raise issues of patentability under 101 and 112.

Supplemental examination will be more resource-intensive to process, review, and treat than then information permitted in an ex party reexamination.

Question 10

What happens at the conclusion of supplemental examination?

Answer 10

A certificate is issued to indicate whether or not a SNQ of patentability is raised.

Question 11

What happens if certificate issued indicates that a SNQ is raised?

Answer 11

An ex parte reexamination will be ordered by the PTO with 2 notable exceptions:
1. ex parte reexamination is not limited to patents and printed publications (so ANY item of information will be accepted);

2. the patent owner will not have the right to file a statement pursuant to 35 USC 304 (“The patent owner will be given reasonable period, not less than 2 months from the date a copy of the determination is given or mailed to him, within which he may file a statement on such question…” No patent owner statement may be filed in a reexamination provoked by supplemental examination.); and
3. Issues in addition to those raised by patents and printed publications and by subject matter added/deleted during a reexamination proceeding may be considered and resolved; and
4. Information material to patentability will be defined by 1.56(b)

Question 12

What are reasons to seek supplemental examination?

Answer 12

To inoculate a patent owner against later potential charges of inequitable conduct.

Question 13

What are the two exceptions to supplemental examination to inoculate a proactive patent owner against inequitable conduct?

Answer 13

1. Inoculation “shall not apply to an allegation pled with particularity in a civil action, or set forth with particularity in a notice received by the patent owner.”
2. Inoculation shall not apply to an action brough under section 337(a) of Tariff Act or to a patent infringement
   action commenced under 35 USC 281 unless the supplemental examination, and any reexamination ordered pursuant to the request, are concluded before the date on which the action is brought.

Question 14

What are the risks involved with supplemental examination?

Answer 14

• Loss of patent rights.
• Loss of some or all claims during ex parte reexamination.
• USPTO is required to refer to the US Attorney General if the PTO becomes aware that a “material fraud” may have been committed in connection with the patent that is the subject of the supplemental examination.

Question 15

How is “material fraud” defined?

Answer 15

35 USC 257(e) –> to be narrower in scope than inequitable conduct

Question 16

Are there fees for supplemental examination and if there is, what are they?

Answer 16

Yes.
1. Fee for processing and treating a request for supplemental examination
2. Fee for an ex parte reexamination ordered as a result of a supplemental examination proceeding
3. Fee for processing and treating a non-patent documents over 20 pages in length (ie., a fee for a document between 21 and 50 pages, and a fee for each additional 50 pages)

*All 3 of these fees must be paid at the time of a request for filing a Supplemental Examination.
*If the Supplemental Examination does not result in a reexamination, the fee associated with an ordered ex parte reexamination will be refunded.
* There are small entity and micro entity discounts for Supplemental Examination fees.

Question 17

What are the differences between ex parte reexamination vs. inter partes reexamination vs. supplemental examination vs. post-grant review vs. inter partes review

Answer 17

Ex parte reexamination: asks whether there is a substantial new question (SNQ) of patentability. Filed by patent owner or third party

Inter partes reexamination: not filed by patent owner and no longer exists having been done away with by AIA.

Post-grant review and inter partes review: means to challenge a patent–not fix a patent. They are not filed by the patent owner but by a third-party requester.

Supplemental examination: to address and remedy potential inequitable conduct by filing a supplemental examination.

Question 18

What is the policy around interview with the examiner in a supplemental examination proceeding?

Answer 18

They are not allowed; prohibited.

Question 19

What happens if material fraud has occurred during supplemental examination proceeding?

Answer 19

The supplemental examination proceeding or any reexamination proceeding ordered will continue, and the matter will be referred to the U.S. Attorney general.