February 1, 2012
As a result of the Leahy-Smith America Invents Act (AIA), there are now several ways of asking the U.S. Patent and Trademark Office (USPTO) to review an issued patent after the grant of the patent. In addition to the existing reissue and ex parte reexamination procedures, which will continue to remain in effect, the law now provides for three new procedures. Specifically, the USPTO will allow “post-grant review” beginning nine months after issue of a patent or reissue patent; post-grant “inter partes review,” which will generally replace inter partes reexamination; and a “supplemental examination” procedure. This alert is directed to the new proposed rules and fees for the supplemental examination procedure, the third of the above-mentioned new procedures.
Supplemental examination permits a patent owner to cause the USPTO to consider, reconsider, or correct information that the patent owner believes to be relevant to the patent. In providing for the supplemental examination procedure, Congress hopes to reduce the number of allegations of inequitable conduct in patent litigation, such that patentees will use the supplemental examination procedure to submit prior art not previously cited to allow the examiner to comment.
Under the implementing rules proposed by the USPTO, the requestor will be charged a basic fee of $5,180 for filing a request for supplemental examination, in addition to various document size fees that may apply. If the USPTO determines that the request raises a substantial new question of patentability, the USPTO will impose another fee of $16,116 to proceed with an ex parte reexamination. The proposed rules also suggest a raise in fees from the current $2,520 to $17,750 for directly requesting ex parte reexamination, with a partial refund of $13,450 if the request to conduct an ex parte reexamination is not granted.
Unlike ex parte reexamination, the information that may be presented in a supplemental examination is not limited to patents and printed publications and can include issues of patentability created by circumstances other than just prior art. The proposed rules place a cap of ten items of information for consideration by the USPTO per supplemental examination request, although there is no limit on the number of supplemental examination requests that a patent owner can make. The patent owner must explain how each item of information is relevant to each aspect of the patent to be examined and how each item of information is relevant to the issues identified in the request.
Within three months of filing the request for a supplemental examination, the USPTO will determine if there is a substantial new issue of patentability. If there is such a new issue, the USPTO will order ex parte reexamination. If in a pending lawsuit there is an allegation of inequitable conduct already pled with particularity, then the supplemental examination proceedings will not operate to negate such allegation.
The USPTO will accept written comments on the proposed rules from the public until March 26, 2012. Absent modification after the public comment period, the new rules will go into effect with the institution of the supplemental examination procedure on September 16, 2012. Fitch Even attorneys are monitoring the progress of the supplemental examination rules and of the other new rules packages and will report periodically.