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2.15 – 35 U.S.C. § 112 1st Paragraph

35 U.S.C. § 112 1st Paragraph

“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such a full clear, concise, and exact terms so to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”

 

To summarize, the specification of the patent needs to contain a written description of the invention and the manner of making and using it in such full clear and concise language that one who is skilled in the art pertaining to the invention would be able to make and use the invention.  This must include the best mode contemplated by the inventor.

1) Written Description Requirement:

The written description requirement is intended to make clear what the applicant invented. Full disclosure is required.  The written description should be clear and concise with exact terms.

No New Matter:
“New matter” cannot be added by amendment to an applicant’s disclosure after its filing per 35 U.S.C. § 132 & 251.  New matter arises in information of an amendment to the claims, specification and drawings which are not included in the original disclosure.  It is not considered new matter if you simply reword a sentence  make explicit material incorporated by reference or make an inherent function explicit.

Specific Issues:

1) Amendment affecting a claim through the addition of material in an application:  Can be an amendment to the specification or the claims.  An amendment to correct an obvious error does not constitute new matter if one skilled in the art would recognize the error and the appropriate correction.  If there is a new claim being added it must be fully supported by the written description as originally filed.

2) Reliance on filing date of patent:  If claiming priority to earlier application, the subject matter must meet 35 U.S.C. § 112 1st paragraph requirement.  If claiming foreign priority, the subject matter must meet 35 U.S.C. § 112 1st paragraph requirements.

3) Changes to the scope of the claims: If the claims are narrowed or broadened care must be taken to ensure there is not a 35 U.S.C. § 112 error resulting from the change as this often happens.
This includes the altering of numeric ranges in a claim.

2) Enablement Requirement:

The specification must describe to one skilled in the art how to make and use the invention.  This is at the time the invention is filed.  If the enablement requirement is not met, the application ma be rejected under 35 U.S.C. § 112 for lack of enablement.

For a lack of enablement, one of the following conditions must be met:

1) Undue experimentation is required:  An individual skilled in the art should not have to conduct undue experimentation to make and use the invention.  Reduction to practice is not required if the disclosure enables one of ordinary skill in the art to make/use the invention without undue experimentation.  Complex experimentation is not necessarily undue experimentation if it is common in the art to which the invention applies.  This is as long as all the information necessary to perform the complex information is disclosed and one of reasonable skill in the art can make/use the invention.  Factors considered for determining if necessary experimentation is undue include: breadth of the claims, nature of the invention, prior art stat and level of ordinary skill.

2) Broadness of claims:  A specific reference in the specification to a feature of the invention which is crucial to its make/use which is not included in the claims can result in lack of enablement.  This makes the claims too broad.

3) Utility requirement is not met:  If a claim is not useful or inoperative it does not meet the enablement requirement due to lack of utility.  A claim can not be useful if it is inoperative or doesn’t provide a benefit of some sort.  The specification can not show how to use a useless invention.

3) Best Mode Requirement:

Since the act of patenting is a disclosure of a secret for a time limited monopoly on the secret, the law wants the patentee to disclose the best mode to use the invention.  This ensures that the applicant can not partially disclose his invention and receive a federal monopoly on the invention yet still retain the best way to use the invention as a trade secret.  Otherwise the patentee could disclose a less than desirable mode of usage in exchange for the monopoly yet still keep the best mode a secret for himself.  Examiner assumes the best mode is disclosed unless evidence proving other wise is discovered.  Evidence of concealment is the only relevant evidence.

Disclosure of less than the best mode does not invalidate a parent as long as the inventor as the time of the application did not know of the better method or did not recognize its superiority.

The best mode requirement is based on the time the application is filed.  A later finding of a better mode does not require disclosure.  The later finding of other superior modes also does not require disclosure.  This is only required at the time of filing the patent.

The disclosure does not have to point out the best mode as long as it is contained in the disclosure.  This can be subjective based on what outcome is wanted.  Updating of best mode after filing is not required even if perfecting priority to a previous application.

Failure to disclose best mode in the original application can not be corrected through an amendment.

A specific example is not required.  A preferred range of parameters could be good enough.

America Invents Act Update – Best Mode

Section 15 of the America invents act amended 35 USC 282 to provide that “the failure to disclose the best mode shall not be basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable.”  Although best mode is still required per 35 U.S.C. § 112(1) it can not be the basis for invalidating a granted patent.

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2.18 – MPEP 2100 Patentable Subject Matter

MPEP 2100 - Patentable Subject Matter

MPEP 2100 - Patentable Subject Matter

MPEP Chapter 2100 deals with the fundamental issues of patentability.

The previously discussed 35 U.S.C. § 101, 102, 103 and 112 laws are covered here.  The prometric patent bar tests MPEP 2100 heavily and care should be observed when reviewing this matter to ensure thorough knowledge of the subject matter.  This will help to ensure a successful test day once it comes time.

MPEP 2105: Patentable subject matter – Living subject matter

In reference to the courts views on patentable subject matter.  Patentable subject matter is nonnaturally occurring manufacture or composition of matter – a product of human ingenuity – having a distinct name, character and use.”  Non-patentable subject matter includes the laws of nature, physical phenomena and abstract ideas.

America Invents Act Update – Human Organism Prohibition

Section 33 of the America invents act makes certain that claimed invention encompassing a human being are not patentable subject matter under 35 USC 101.

MPEP 2106: Patentable subject matter eligibility

This chapter is strongly tied to 35 U.S.C. § 101.  To define what is patentable:

1) Product: A new, useful and non-obvious machine, manufacture or composition of matter

2) Process: A new useful and non-obvious way of doing, making, using something.  A new process for an unpatentable product can still be patentable.  A process claim must utilize steps to obtain the product, not just the result of the process without any steps.

3) Product-by process: The product is patentable not the process.  The product is independent of the process used to create the product.  If prior art depicts the same product but by a different process the product is still unpatentable even though the processes differ.

4) Living subject matter is patentable: Must use human ingenuity to invent the new matter.

Patenting of claims to practical applications of natural phenomenon are also allowed.

To define what isn’t patentable:

1) Naturally occurring materials and organisms.

2) An invention which encompasses a human being at its broadest reasonable interpretation.

3) Laws of mathematics, physics, processes which depend on these laws but are abstract.  They must claim a practical application of these laws.

4) Computer related descriptive material.  This is copyrightable not patentable.

America Invents Act Update – Tax Strategies Deemed within Prior Art

Section 14 of the America Invents Act limits what can be used to differentiate claimed inventions from prior art under 102 or 103.

Specifics

A strategy for reducing, avoiding or deferring tax liability is insufficient to differentiate a claimed invention from the prior art.

This does not apply to the component of the invention that is a method, apparatus, technology, computer program product or system that is used solely for preparing a tax or information return or that is used solely for financial management.

Claimed inventions which include this tax strategy are still able to be patented however this can not be the basis for non-obviousness or its uniqueness.

Utility RequirementUtility Requirement for Inventions

Utility requirement is an absolute must.  The invention must have practical applications.  The simple presentation of information or data is not patentable.  If the invention does not meet the claimed results it is not useful.  It needs to be completely incapable of achieving the results to violate 35 U.S.C. § 101.  Even if it crudely achieves the results it is okay.

Rejection under 35 U.S.C. § 101:

A Prima Facie showing of lack of utility is required.  This must be accompanied by sufficient evidence for the assumptions relied upon.  This must include an explanation with the reasoning for finding the utility not credible, support for factual findings relied upon, evaluation of the evidence of record (includes utility taught in the closest prior art).

MPEP 2111: Claim interpretation; Broadest reasonable interpretation

1) General interpretation of claims: The claims must be given their broadest reasonable interpretation consistent with the specification.  They must be consistent with what those skilled in the art would determine.  Limitations shown in the specification should not be applied to the claims unless the claims themselves utilize the limitation. Applicant can assign their own meaning to a term as long as it is defined in the specification.  If not, the examiner uses the general meaning of the term.  They can also not be completely incorrect with the usual meaning of the term (can’t use the word circle to describe a square).  One skilled in the art should be able to easily ascertain the meaning of the term.

2) Effects of the preamble: The preamble does not always limit a claim.  This is determined on a case-by-case basis.  Any wording in the preamble which does limit the claim should be treated as such.

3)  Transitional Phrases: The transitional phrases “comprising”, “consisting essentially of”, and “consisting of” define the scope of a claim with respect to what unrecited additional components if steps, if any, are excluded from the scope of the claim.

  • Comprising: Is non-exclusive language.  Also non-exclusive is: “including” or “Characterized by”.
  • Consisting essentially of: Is limiting language.  Limits the claim to the specified materials/steps and to those which do not materially effect the claimed invention.  This can be construed as “comprising” if there is no specific indication in the specification or claims to what the basic/novel characteristics are.
  • Consisting of: Is exclusive language.  This limits the claim to those items which are specified in the claim. One cannot add additional elements or steps after a consisting limitation.  When this is used in the clause of a claim it limits only the elements set forth in the clause (does not effect the preamble).

MPEP 2112: Requirements of rejection based on inherency, the burden of proof

1) Inherency:  Inherent features can be relied upon in a 35 U.S.C. § 102 or 103 rejection whether they are implicit, express or inherent in a prior art disclosure.  They do not need to be recognized a the time of the invention, only need to be inherent.  Old inventions do not become patentable simply because of a newly discovered inherent feature.  Prior art items which would perform the function desired under normal operation would anticipate the new invention through inherency.

2) Burden of Proof: Once the examiner has presented evidence/reasoning showing inherency from a prior art reference the burden moves to the applicant to prove non-obvious difference.

MPEP 2113: Product-by-Process Claims

The product of the product by process claim must be similar to prior art to be unpatentable and not the process used to achieve the product.  The same product by a different process is not patentable unless the product made by the new process is an improvement over the old product.  They are limited by the structure implied by the steps and not the manipulations of the recited steps.

MPEP 2114: Apparatus and Article Claims – Functional Language

Apparatus Claims:  The structure of the apparatus must be different from the prior art to be patentable.  A similar apparatus reference can perform the same function but not infringe if the structure is different.  These cover the device itself and not what the device does.  Operation method between apparatus claims is not a differentiating factor.

MPEP 2115: Material or Article Worked Upon by Apparatus

There is no limitation through the material or article which is worked on by the apparatus.

MPEP 2116: Material Manipulated in Process

For process or method claim obvious determination, all of the claims must be considered in weighing the differences between the new invention and the prior art.

MPEP 2121: Prior Art, General Level of Operability Required to Make a Prima Facie Case

1) Prior art is assumed to be Operable/Enabling:  The burden is on the applicant to prove that prior art is inoperable.  This pertains to a 35 U.S.C. § 103 rejection.  The level of disclosure is the same for any reference to make it an enabling disclosure.  The prior art type doesn’t matter and one skilled in the art must be able to carry out the claimed invention.

2) Use of Prior Art in Rejections Where Operability is in Question: 35 U.S.C. § 102 rejections must have a reference that teaches every element of a claim.  The reference does not need to teach how to practice the invention.  One can use secondary evidence which teaches how to make or use the invention.  35 U.S.C. § 103 rejections can use prior art reference which is non-enabling.

3) Compounds and Compositions: What constitutes Enabling Prior Art: Enabling prior art must allow one skilled in the art to make/synthesize the invention from the disclosure.  If the attempts to create the invention in the disclosure were unsuccessful the reference is non-enabling.

4) Plant Genetics: What Constitutes Enabling Prior Art: A person skilled in the art must be able to grow and cultivate the plant based on the prior art.

5) Apparatus and Articles: What Constitutes Enabling Prior Art:  A picture is okay if it shows all of the claimed structural features including how they put together.

MPEP 2123: Rejections Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments

What is prior art in a patent?  Everything that is disclosed is considered prior art even what is not claimed, alternate embodiments and non-preferred embodiments.  The disclosure of these does not constitute “teaching away” from these embodiments.

MPEP 2124: Exception to the Rule that the Critical Reference Date Must Precede the Filing Date

If a reference shows a universal fact, the date of the reference does not need to be prior to the effective date to be used as prior art.  Examples of this are: scientific principal, material properties and material characteristics.

MPEP 2125: Drawings as Prior Art

Drawings can be used as prior art if they show all the claimed structural features and how they are put together.  This would be a 35 U.S.C. § 102 anticipation rejection.  Proportions of features in a drawing are not evidence of actual proportions when the drawings are not to scale.  Measurements of a drawing can not be used against an invention if there is no scale provided.

MPEP 2126: Availability of a Document as a “Patent” for Purposes of Rejection Under 35 U.S.C. § 102(a), (b) and (d)

“Secret” patents can be used as prior art as of the date they are made available to the public.  For a 35 U.S.C. § 102(d) rejection it is the grant date that is used.  Foreign patents are usually available as prior art when they are granted their patent rights and not the application filing date.

MPEP 2127: Domestic and Foreign Patent Applications as Prior Art

Abandoned applications including provisional applications use the date an abandoned application is available to the public for its prior art date.  Examples of this are: when it is voluntarily disclosed, is in a publication or when referenced in another patent.

Applications which have issued as patents: Canceled matter of a patent is available as prior art when the patent is granted.  This is when the file history becomes available to the public.  35 U.S.C. § 102(e) rejections can’t rely on matter canceled from an application, however 35 U.S.C. § 102(b) rejections can rely on information canceled prior to publication.

Foreign applications open for public inspection (Laid Open Application) constitute published documents.  An example would be being published in the official gazette.

MPEP 2128: “Printed Publications” as Prior Art

A reference is a “printed publication” if it is accessible to the public.

1) Electronic Publications as Prior Art: Web pages and online content are available as prior art.  “printed publication within the meaning of 35 U.S.C. § 102(a) and (b) provided the publication was accessible to persons concerned with the relevant art.”  If there is no date included with the electronic publication it is not available under 35 U.S.C. § 102(a,b).  It can still be used to show the state of the art.  One does not have to how proof that someone viewed the publication as long as it was accessible to the public.

2) Level of public accessibility required:

Examples of publicly accessible documents:

  • Thesis placed in university library in indexed and shelved
  • Orally presented paper if written copies are available without restriction
  • Publicly displayed documents if only displayed for a few days.  These don’t have to be indexed, disseminated or filed in a database.  A person skilled in the art should be able to view them and they must be able to copy the information if desired.  Determining factors include: length of time displayed, target audience expertise, expectations that the material would not be copied and the ease at which the material could have been copied.

Not publicly accessible documents:

  • Internal documents of an organized marked confidential
    • The number of copies distributed internally are not important
    • There must be an existing policy of confidentiality in the organization

3) Date a publication is available as a reference: This can be shown through routine business practice.  Specific date of actual accessibility is not always necessary.  Publications become available as prior art the date they are received by a member of the public.

MPEP 2129: Admissions as Prior Art

1) Admissions by application constitute prior art: Admission on the record of a reference as prior art can be relied upon for a 35 U.S.C. § 102 or 103 rejection.  Even if the reference would not have been considered prior art otherwise.

2) Jepson Claims: reference 37 C.F.R. § 1.75(e).  Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order:

  1. A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known,
  2. A phrase such as “wherein the improvement comprises,” and
  3. Those elements, steps, and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.

The preamble of a jepson claim is an implied admission of prior art and can be used to avoid a double patenting rejection.  If the preamble is the work of the applicant it can’t be used against him.

3) Information Disclosure Statements (IDS):  A reference on an information disclosure statement is not admitted prior art.

MPEP 2131: Anticipation – Application of 35 USC § 102(a), (b), and (e)

As a general rule, to anticipate a claim only one reference may be used.  The single reference must teach every element of the claim.  If the claim covers several structures or compositions the claim may be anticipated if any of the structures or compositions are disclosed in the prior art.

Exceptions to the general rule: anticipatory rejection using multiple references can be okay if the additional references are used to:

1) Prove the primary reference contains an “enabled disclosure”.  Extra references and extrinsic evidence can be used to show that the primary reference contains an enabled disclosure such as where one reference fully anticipates a machine or composition but does not provide and enabling disclosure of the invention.

2) Explain the meaning of a term used in the primary reference.  Extra references or other evidence can be used to show meaning of a term used in the primary reference buy may not be used to expand the meaning of term(s) used in the primary reference.

3) Show that a characteristic not disclosed in the reference is inherent.  Additional evidence may be used to show an inherent characteristic of the thing taught by the primary reference, such that it makes clear that the missing descriptive matter is necessarily present in the thing described in the reference.

Genus-Species Situations:  A species can anticipate a genus.  The reference need only disclose one species if multiple listed to anticipate the claim.

For range anticipation:

Single anticipated point: For a claimed range to be anticipated by a reference only a single point within the claimed range need to be disclosed in the reference.

Overlapping ranges: Usually is considered anticipated if any of the claimed ranges overlap.  However, this may not always be the case.  If the claim has a narrow range and the reference has a broad range.  No proof of success in the reference for the claimed range can nullify anticipation.

Nearly the same range:  Does not anticipate the claimed range if it is “nearly the same”.

The following are not used in anticipation rejections:

1) Secondary Considerations: Used in obviousness rejections (i.e. unexpected results), but not used in anticipation rejections.

2) Non-analogous or Disparaging Prior Art: This is irrelevant for 35 U.S.C. § 102 rejection.  This includes arguments of non-analogous art, disparaging, not recognized as solving the problem or that the reference teaches away.

MPEP 2142: Legal Concept of Prima Facie Obviousness – Relevant to § 103 Rejections

Prima Facie Obviousness: Determines who has the burden of proof on producing evidence during the examination process.  For obviousness the examiner has the initial burden of supporting an obviousness rejection.  Analysis in support of prima facie case must be made explicit.

Some examples of this include: Teaching, suggestion, or motivation in the prior art that would have led
one of ordinary skill to modify the prior art reference or to combine
prior art reference teachings to arrive at the claimed invention; “Obvious to try” – Choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; Substitution of one known element for another to obtain predictable results; Applying a known technique to a known device ready for improvement to yield predictability; Use of known technique to improve similar devices in the same way; Combining prior art elements according to known methods to yield predictable results.

Suggestion or Motivation to Modify the Reference:

If there is some teaching, suggestion or other motivation to combine or modify the teachings of a prior art reference obviousness can be established.  The fact that two references can be combined/modified is not enough to establish prima facie obviousness.  Statement that prior art is within the capabilities of one of ordinary skill in the art is not sufficient by itself to establish prima facie obviousness.  Examiner proposed modification to the prior art for establishing obviousness cannot render the prior art unsatisfactory for its intended purpose.  Can not change the principal operation of a reference.

Reasonable Expectation of Success is Required:

Obvious rationale must show ALL claimed elements were known in the prior art.  One skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions.  There must be a reasonable expectation of success for obviousness.  Some degree of predictability is required and predictability is determined at the time the invention is made.  Applicants can show evidence of no reasonable expectation of success.

MPEP 2144: Supporting a Rejection Under 35 USC § 103

What rational is needed?

In order to support a rejection under 35 U.S.C. § 103 there must be legal precedent, scientific principles, logic, reasoning from common knowledge in the art, in a reference or art recognized equivalents.

For legal precedent, the facts of the case must be sufficiently similar to those in the application.  For reasoning from common knowledge in the art, the rationale may be different for an examiner compared to an application in order to show obviousness.

The rationale for combining references is strongest when showing an advantage.

Graham factors for an examiner to determine obviousness are:

  1. Determine the scope and contents of prior art
  2. Ascertain the differences between the prior art and the claims in issue
  3. Determine the level of ordinary skill in the pertinent art
  4. Evaluate any evidence of secondary considerations

MPEP 2145: Consideration of Applicant’s Rebuttal Arguments

Burden of proof is shifted to the applicant once the examiner establishes prima facie obviousness.  Applicant can submit a rebuttal which may include evidence of “secondary considerations” such as commercial success, long felt but unresolved need and failure of others.

Rebutting evidence can be submitted to overcome an obviousness rejection.  Argument cannot replace evidence where evidence is needed.  Prima facie obviousness can not be rebutted by merely recognizing additional advantages or latent properties in prior art.  Arguments of not being physically combine-able can not rebut an examiner’s rejection.  The test is designed to see what the combined teachings of those references would have suggested to those of ordinary skill.  Not simply if they can be physically combined.

To rebut obviousness rejections one can not argue against individual references, the number of references combined, limitations not claimed, economic in-feasibility, age of references or that the prior art is non-analogous.

MPEP 2183: Making a Prima Facie Case of Equivalence

This is when an element in prior art is equivalent to the corresponding element disclosed in the specification.  The examiner can find prior art element which performs the function specified in the claim.  This is not excluded by any explicit definition provided in the specification for an equivalent.  Examiner should assume the prior art element is an equivalent.

MPEP 2186: Relationship to the Doctrine of Equivalents

Doctrine of equivalents arises in the context of an infringement action. When product of process does not specifically infringe a protected invention.  The item may still be found to infringe though the doctrine of equivalents.  All words of the claim are considered when judging patentability of a claim against the prior art.  Doctrine of equivalents operates to expand claim coverage beyond the literal scope of the claim language.

 

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8.1 "Best Mode" – America Invents Act

Best Mode America Invents Act

Best Mode America Invents Act

Overview

Section 15 of the America invents act amended 35 USC 282 to provide that “the failure to disclose the best mode shall not be basis on which any claim of a patent may be canceled or held invalid or otherwise unenforceable.”  Although best mode is still required per 112 it can not be the basis for invalidating a granted patent.

Key Dates

September 16, 2011 – Date best mode provision went into effect.

Key Concepts

  1. Failure to disclose best mode can’t be basis for a claim to be canceled or held invalid post grant
  2. Specification of the application is still required to include best mode

Rules and Laws

  • 35 U.S.C. § 282
  • MPEP 2165

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8.5 “Citation of Prior Art and Written Statements” – America Invents Act

Citation of Prior Art and Written Statements America Invents Act Patent Law

Citation of Prior Art and Written Statements America Invents Act Patent Law

Overview

Section 6(g) of the America invents act amends 35 USC 301 to expand the scope of information any party may cite in a patent file to include written statements regarding patentability made by the patent owner before a federal court or the office.  Previously, only patents or printed publications could be cited in a patent file.

Either 3rd party or the patent owner can cite patent owner statements in a patent file.  A 3rd party can request to have their identity remain unknown and it will not be included in the patent file.

Claim scope submission:

A statement regarding the scope of the claims made before federal court or the USPTO is allowed to be filed.  The following are required for this claim scope statement to be allowed: an explanation of the pertinence and manner of applying the written statement to at least one claim; Additional evidence, documents or pleadings from the proceeding where the statement took place that address statement; Explanation of the pertinence and manner of applying the written statement to at least one claim; Additional evidence, documents or pleadings from the proceeding where the statement took place that address statement; Identification of the proceeding where the patent owner made the statement; Identification of the papers or portion of the papers where the statement is made; Explanation of how the statement takes a position on the scope of any claim; Proof that the statement was served to the patent owner by the third party.  The patent owner can explain how the patentability is effected when submitting a claim scope statement.

These written statements can only be used by the office to determine the meaning of the patent claim in ex parte re-examination’s THAT HAVE ALREADY BEEN ORDERED, inter parte reviews and post-grant review proceedings that have been instituted.  The claim construction will not be solely based on submitted statement during the reexamination, but the statement will be weighed with other relevant information by the USPTO.

Key dates

September 16, 2012

  • Date this provision took effect

August 6, 2012

  • Date final rules were published

 Key concepts

  • Written statements regarding patentability can be submitted
  • Can only be used in ex parte re-examination’s that have already been ordered
  • And in inter partes review and post-grant review proceedings that have been instituted

Rules and Laws

  • 35 USC 301
  • 37 CFR 1.501

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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