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Intellectual Property: Post-Issuance: Supplemental Examination

Supplemental examination is a new post-issuance procedure created under the America Invents Act that provides patent owners with an opportunity to have the USPTO consider, reconsider or correct information believed to be relevant to a previously issued patent. The new procedure provides unique new strategic opportunities to patent owners to present new information to the USPTO. The attorneys in LeClairRyan’s Intellectual Property and Technology team can help guide patent owners in their decision whether to pursue a supplemental examination of their valuable issued patents.

Supplemental examination is limited to patent owners and may not be initiated by third parties or licensees of the patent. Supplemental examination may be requested at any time after issuance of the patent at issue.

Unlike earlier reexamination procedures, a supplemental examination request is not limited to prior art patents and printed publications. The requests can be based on any information the patent owner believes to be relevant to the patent and may be used to raise issues based upon “any supporting document.” The patent owner may submit up to 12 items of information in the supplement examination request. The items of information may include declarations or affidavits related to the patentability of the patent. Further, the submitted information may relate to any ground of patentability, including patent eligible subject matter, anticipation, obviousness, written description, enablement, best mode, and indefiniteness.

Upon submission of the request, the USPTO will determine whether any of the submitted items of information raises a substantial new question of patentability. The standard for determining whether a substantial new question of patentability exists is whether there is a substantial likelihood that a reasonable examiner would consider any of the items of information important in determining the patentability of the claimed invention. The USPTO is statutorily required to render a decision on whether to proceed with supplemental examination within three months.

When a decision on the request is reached, the USPTO issues a certificate of supplemental examination as to whether the submitted items of information raise any substantial new questions of patentability. If the USPTO determines that a substantial new question of patentability is raised by the submitted items of information, the USPTO will order ex parte reexamination of the patent. The ex parte reexamination is conducted in accordance with the rules for that procedure, but similar to the supplemental examination request, the USPTO’s review is not limited to patents or printed publications. If the USPTO determines that no substantial new question of patentability is raised, then the supplemental examination certificate indicates this finding.

The request may include the patent owner’s statements indicating why the submitted items of information do not raise a substantial new question of patentability. Thus, a submission could obtain the benefits associated with a supplemental examination proceeding while avoiding the more costly process of an ex parte reexamination.

Advantages of Supplemental Examination

Supplemental examination may provide several advantages to a patent owner. For example, supplemental examination gives a patent owner an opportunity to correct a prior potential error of omitting one or more prior art references from submission to the USPTO without deceptive intent evaluated by the USPTO prior to those references being raised in a civil action. The patent owner may submit arguments demonstrating why the references do not affect the patentability of the patent.

Supplemental examination can also provide a protective shield for a patent owner against allegations of unenforceability based on inequitable conduct. In particular, a patent may not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered or was incorrect during the prior examination if the information was considered, reconsidered or corrected during supplemental examination of the patent. In that regard, the timing of the supplemental examination request is of extreme importance. The supplemental examination and any associated ex parte reexamination must be completed prior to the filing of a civil action in order for the patent owner to receive the immunity. The patent owner cannot receive immunity against inequitable conduct allegations in a civil action filed before a supplemental examination.

Supplemental examination provides a unique new path to strengthening or correcting errors in an issued patent. LeClairRyan’s patent attorneys are prepared to help patent owners evaluate whether supplemental examination is an appropriate way in which to address issues not previously raised before the USPTO and, if so, to prepare the supplemental examination request.