Posted on

8.10 “Supplemental Examination” – America Invents Act

Supplemental Examination America Invents Act Patent Law

Supplemental Examination America Invents Act Patent Law

Overview

Supplemental examinations can only be requested by the owner of the patent after the patent is issued and are intended to consider, reconsider or correct information.  Any information not considered, inadequately considered, or incorrectly considered during the examination of a patent which is believed by the patent owner to be relevant may be presented to the office in the supplemental examination.

Specifics

Request for supplemental examination must be made by ALL inventors if there is more than one inventor on the patent.  All parties with ownership interest must request the supplemental examination.  This must be filed by patent owner as an exclusive licensee is not able to request this.

Information allowed to be submitted is not limited to patents and printed publications, but includes any information believed to be relevant to the patent. This includes statements regarding inventorship to issues dealing with public use.  A detailed explanation of each issue identified as well the explanation of each document submitted with its relevancy is required.

Each request for supplemental examination is limited to 10 items, however the number of supplemental examinations is not limited.  There is no limit on number of pages, but over 50 must be accompanied by summary of relevant portions of document with citations to particular pages.  Any document over 20 pages is subject to a document size fee.  All items must be in writing.

Within three months the director determines if the items submitted present a substantial new question of patentability.  If this substantial new question of patentability is achieved an ex parte re-examination is processed based on the information submitted in the supplemental examination.  The ex parte re-examination will proceed as usual however the owner is prohibited from filing a statement under 35 USC 304.  If no substantial new question of patentability is found the office will publish a supplemental examination certificate and attach it to the patent.

A patent will not be held unenforceable based on information that was incorrectly considered in a prior examination of a patent if it is corrected during a supplemental examination.

Fees

The fee for a supplemental examination is: $5,140 for processing and treating a request; $16,120 for ex parte reexamination (Refunded if the supplemental examination does not progress to the ex parte reexamination); any applicable document size fees.

Key dates

September 16, 2012

  • Date supplemental examination became effective
  • Applies to any patent issued before on or after that date

August 14, 2012

  • Date final rules published

Key concepts

  • Supplemental examinations are for the consideration reconsideration or correction of information
  • Can only be requested by the patent owner
  • Information submitted not limited to patents or printed publications but can include any information believed to be relevant to the patent
  • Detailed explanation of each issue identified as well as an explanation of each document submitted with this relevancy is required
  • 10 item limit per each supplemental examination
  • No limit on number of supplemental examinations
  • Substantial new question of patentability required
  • Ex parte re-examination initiated if SNQ found
  • Patent will not be held unenforceable if incorrect information corrected during the supplemental examination