Supplemental examination allows a patent owners to submit information relevant to an issued patent in order to avoid any charges of inequitable conduct during litigation and to prevent defendants from making arguments that the patent is unenforceable because of “bad” acts or omissions of the patent owner during examination of the patent, such as not disclosing a key reference or making false statements. Historically, inequitable conduct charges were often long, drawn out processes and rarely succeeded during litigation, but such charges were often made because it allowed the accused infringer to paint the patent owner as a “bad” person. The Federal Circuit characterized the charge of inequitable conduct as a “plague” and disliked inequitable conduct defenses because they diverted the parties’ efforts from the more substantive issues such as validity, infringement and damages.
The recently enacted America Invents Act added Supplemental Examination to help avoid inequitable conduct charges. The supplemental examination allows the patent owner to submit or resubmit information to the patent office so that any information reviewed under Supplemental Examination cannot be used to make a charge of inequitable conduct.
To take advantage of the supplemental examination procedures, the patent owner makes a request to the Patent Office for a supplemental examination and pays the following fees: $5,140+$16,120+ other fees. The $5,140 fee is for the request itself and covers the costs the Patent Office incurs in reviewing the request. The request is streamlined similar to a reexamination request so that the Patent Office can make a quick determination whether the request should be granted. By statute, the Patent Office must grant or deny the request within three months. If granted, then an ex parte reexamination is initiated, meaning only the patent owner and the patent examiner are involved – with third party accused infringers being excluded. The Patent Office uses the $16,120 to cover the costs incurred by the Patent Office to conduct the reexam. If the request is not granted, then the Patent Office will refund the $16,120 back to the requester and issue a certificate that the information does not raise a substantial new question of patentability.
Here are the final rules for supplemental examination.
I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.