February 6, 2012
USPTO Proposes Rules to Implement Supplemental Examination Procedure

On January 25, the USPTO released a set of proposed rules and fees to implement the Supplemental Examination procedures mandated by the America Invents Act (AIA). The Supplemental Examination procedure will be available starting September 16, 2012.

Section 12 of the AIA revised 35 U.S.C. § 257 to include a new "Request for Supplemental Examination" procedure. The procedure, which may only be requested by the patentee, allows the Office to "consider, reconsider, or correct information believed to be relevant to the patent." If the Office determines that a "substantial new question of patentability" exists, then the Director will initiate a full ex parte reexamination proceeding.

Under the USPTO's proposed rules, requesting a Supplemental Examination will cost $5,180. If a substantial new question of patentability is found to exist, the resulting ex parte reexamination procedure will cost $16,120. Patentees would be required to submit the full cost of both fees ($21,300) when the initial request is filed, with the ex parte reexamination fee being returned if no substantial new question of patentability is found. The Office has also proposed a $170 fee to review documents that are more than 20 pages and a $280 fee for submissions that are more than 50 pages in length.

Supplemental Examination may be an attractive alternative to ex parte reexamination for patentees in some circumstances. Unlike traditional ex parte reexaminations, Supplemental Examination may consider any information the patentee believes to be relevant, and is not limited to patents and printed publications. Supplemental Examination may also shield patentees from the affirmative defense of inequitable conduct in patent infringement litigation—the law provides that a patent may not be held unenforceable on the basis of information that was considered, reconsidered or corrected during a Supplemental Examination, provided that the patentee submits the Request for Supplemental Examination before the particular information is raised in an infringement action or raised in a Paragraph IV Certification of an Abbreviated New Drug Application challenging the patent."