What is a Supplemental Examination?

The U.S. Patent and Trademark Office has released new rules for supplemental patent examination, which implement the provisions of the Leahy-Smith America Invents Act (AIA). It has also adjusted the fee for filing a request for ex parte reexamination and established a fee for petitions filed in ex parte and inter partes reexamination proceedings.

Supplemental examination allows a patent owner to request that the USPTO to consider, reconsider, or correct information believed to be relevant to the patent. The supplemental examination will determine whether the information presented in the request raises a substantial new question of patentability. If the information presented in the request raises a substantial new question of patentability, the USPTO will order ex parte reexamination of the patent. Ex parte reexaminations are initiated by members of the public, but once said members submit their request, they no longer actively participate in the proceedings. The correspondence is strictly between the examiner and the patent owner.

Under the current law, with certain exceptions, a patent will not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination of the patent if the information was considered, reconsidered, or corrected during a supplemental examination of the patent.

This means that a supplemental examination could assist the patent owner in addressing certain challenges to the enforceability of the patent during litigation.

However, supplemental examination and all other types of reexamination come at a cost. A fee of $5,140.00 is required for processing and treating a request for supplemental examination.  The fee for just filing a request for an ex parte reexamination is $17,750 as of Oct. 5, 2012.

How I Can Help

If you or know someone that can use my help about the costs and benefits of supplemental examination under the new rules, please contact me for a free 30 minute consultation by sending me an email or call TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) and ask for Norman.

– Ex astris, scientia –

I am and avid amateur astronomer and intellectual property attorney.  As a former Chief Petty Officer in the U.S. Navy, I am a proud member of the Armed Service Committee of the Los Angeles County Bar Association working to aid all active duty and veterans in our communities.  Connect with me on Google +

Norman

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