Patent Law Practice Center

Supplemental Examination to Cleanse Inequitable Conduct

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.

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The Best of the Post-Grant USPTO Proceedings Seminar

In case you missed it, PLI hosted a seminar entitled Post-Grant USPTO Proceedings 2012- The New Patent Litigation and the topics discussed by the day’s panelists proved to serve as both a refresher on the language of the new law as well as an enlightening course on what the developments in practice have and will become. If there was a trend throughout the day, it would be that patent professionals need to become familiarized with the changes in patent law in order to streamline their time and resources into more efficient patent applications and to facilitate  the litigation process. Requirements that had become common place in patent law are no longer on the books, but a patent practitioner would not know this unless they studied the America Invents Act provision by provision – or unless they attended PLI’s seminar.

To show you the range of topics that were discussed, here are some of the highlights from each panel of the seminar. The course handbook is still available, and the video recording of the entire seminar will be made available soon for On Demand viewing on the PLI website. (more…)

Top 5 Patent Law Blog Posts of the Week

Today we continue our weekly installment highlighting the best of the patent blogosphere from the past week. If there are any patent blogs you think should be highlighted by our Top 5, please comment on this post and we’ll check them out.

1) Patents Post-Grant: Supplemental Examination Rules Issued by USPTO – This post breaks down the USPTO’s Notice of Proposed Rule Making and how it outlines the procedures for conducting supplemental examination.

2) IP Watchdog: Business Methods by the Numbers: A Look Inside PTO Class 705 -As Gene Quinn explains, “The United States Patent Classification System is a system for organizing all U.S. patents into a smaller sub-collection of patents based on common subject matter. Each subject matter division includes a major component, which is called a class, and a minor component, which is called a subclass.”  This post discusses Class 705, which is the generic class for innovations relating to business methods.

3) Patent Docs: The Medicines Company to Get Patent Term Extension – This post provides a breakdown of the settlement of litigation reached between the Medicines Company and APP Pharmaceuticals, and gives a detailed case background and procedural history explaining how the parties reached their final settlement.

4) The Tech Transfer Blog: New Pact Brings “Express” Licensing Concept to Sponsored Research Agreements – Binghamton University (my alma mater) developed what it is calling the Binghamton Express Square Terms or BEST Deal License, a nonexclusive, royalty-free license on patentable innovations that arise from sponsored research. This post explains how this express licensing is intended to benefit the sponsored research negotiating process while also establishing standards and predictability for its industry partners.

5) FOSS Patents: Samsung allowed to show Apple-Qualcomm contracts, letters and limited source code to foreign courts – This post details the impact of Samsung’s discovery  request being granted in its case with Qualcomm and how the U.S. District Court came to its decision. The post also compares the Samsung-Qualcomm matter with the Apple-Qualcomm matter.

The Impact of Therasense On Patent Reform