One of the new provisions of the America Invents Act that went into effect last week authorizes Supplemental Examination. Supplemental examination will probably be used less frequently than the USPTO thinks it might be, but it will still be valuable in a small percentage of cases. We all know that inequitable conduct does not happen nearly as often as some might think or suggest, but it does happen. If there is inequitable conduct, supplemental examination is the route to go because it inoculates you from losing the patent.
Before examining the inoculation effect, let’s explore what is required to initiate a supplemental examination. Pursuant to 37 CFR 1.610(b), a complete request for supplemental examination must contain: (1) An identification of the number of the patent for which supplemental examination is requested; (2) A list of the items of information that are requested to be considered, reconsidered, or corrected; (3) A list identifying any other prior or concurrent post-patent Office proceedings involving the patent for which supplemental examination is being requested; (4) An 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) A copy of the 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 U.S. patents and published U.S. patent applications) accompanied by a written English translation of all of the necessary and pertinent parts of any non-English-language item of information; (8) A summary of the relevant portions of any submitted document that is over 50 pages in length; and (9) An identification of the owner(s) 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.
In the event a non-compliant request for supplemental examination is filed, no filing date will be awarded. The USPTO explained that this is due to the fact that they have only three months to treat a supplemental examination, so they could not award a filing date, give an opportunity to cure and still realistically have an opportunity to complete the review within the mandated time limit under the statute.
One of the more peculiar things about supplemental examination is that it will transition into an ex parte reexamination if, at its conclusion, the USPTO determines there is a substantial new question of patentability. The resulting ex parte reexamination will address each and every substantial new question identified, and will proceed as would any ex parte reexamination. There are, of course, exceptions though. Because for supplemental examination, everything is on the table for consideration, the reexamination will not be limited to considering patents and printed publications. Anything can be considered when reviewing the claims. Of less importance, a patent owner statement under 35 U.S.C. 304 is not permitted.
So why would someone request a supplemental examination of their own patent? Because it can inoculate a patent owner against potential charges of inequitable conduct. Generally speaking, a patent cannot be held unenforceable based on conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination of the patent if the information was subsequently considered, reconsidered, or corrected during a supplemental examination of the patent.
For the hope of inoculating your patent, you will have to pay a hefty fee though. Three different fees must be submitted at the time of filing the supplemental examination request. They are: (1) A fee of $5,140.00 for processing and treating a request for supplemental examination; (2) a fee of $16,120.00 for an ex parte reexamination ordered as a result of a supplemental examination proceeding; and (3) a fee for processing and treating any non-patent documents over 20 pages in length (i.e., a fee of $170.00 for a document of between 21 and 50 pages, and a fee of $280.00 for each additional 50 pages or a fraction thereof). Yes, that means that you have to pay for a reexamination in advance even though there is a chance that the USPTO will not issue a supplemental examination certificate that requires a reexamination. No worries, though. In the event that the reexamination is not undertaken, that portion of the fee is fully refundable.