A Walkthrough of Supplemental Examination

Presented by Zach Smart

© 2016 Workman Nydegger

• Procedure

• Effect of Supplemental Examination

• Pros/Cons• Alternate Strategies

Introduction

Overview

• Post-Grant Proceeding– New under the AIA– Similar to Ex Parte Reexamination

• Purpose– “Consider, reconsider, or correct information

believed to be relevant to the patent.”• Pros

– Cure patent of inequitable conduct– Vs. Reissue/Reeaxmination

• Need not assert inoperative or invalid patent

Overview

• Cons– Expensive– Likely to find substantial new question of

patentability– Requires extensive work to file

Supplemental Exam If Substantial New Question Reexamination

Filing

• Ownership– Must be owner(s) of patent’s entire interest

• Third Party Participation Prohibited– Both in supplemental exam and possible resulting ex

parte reexam

• Timing– Period of enforceability of the patent

Items of Information

• Limitation to 12 Relevant Items per Filing– Unlimited issues per item (no double counting for

items raising multiple issues)– One issue raised by multiple items = multiple items– Unlimited requests (each having up to 12 items)– Can raise any issue (101, 112, and so forth)

• Item as a Document– Writing Requirement– Examples: sales invoice, journal article, patent,

affidavit, declaration, transcript of audio/video recording

Content of Request

• Fees– Supplemental Examination

• Micro Entity: $1,100• Small Entity: $2,200• Other: $4,400

– Ordered Reexamination• Micro Entity: $3,025• Small Entity: $6,050• Other: $12,100• Refunded, if no reexamination is ordered

Mandatory Contents

• The Patent– 1. The patent’s number– 2. Other post-patent proceedings in the USPTO

regarding the patent– 3. Identification of each claim requested for

supplemental examination– 4. A copy of the patent (including any certificate

or disclaimer)– 5. Identification and evidence of ownership

• 37 C.F.R. 37.3(c) – Establishing Right of Assignee to Take Action

Mandatory Contents

Mandatory Contents

• The Items– 6. Items list– 7. Copies of each items (including translations)– 8. Summary of long documents

• Explanation of Relevance– 9. Separate, detailed explanation of

relevance/manner of applying each item to each claim• Claim Chart

Content of Request

• Optional Contents– A cover sheet itemizing each component

submitted as part of the request;– A table of contents for the request;– Explanation of how claims patentably distinguish– Explanation of substantial new question of

patentability regarding each item

• Filing Date– Defective filings

• Corrected request

Conduct of Proceeding

• Determination in Three Months Required

• Limitations/Standard of Review– Limited to the request’s identification of items in

relation to identified claims– Limited to determination of substantial new

question (SNQ) of patentability – Standard for determining SNQ is “substantial

likelihood that a reasonable examiner would consider the item important in determining patentability” (same standard as ex parte reexamination)

Conduct of Proceeding

• Interviews Prohibited during Supplemental Examination– Not extended to Ex Parte Reexamination

• Amendments Unavailable during Supplemental Proceeding

Result

• Issuance of Supplemental Exam Certificate– Electronic Certificate

• Contents of the Certificate– Statement for each item of information

indicating whether it raised SNQ– Additional “Reasons” Document

Result

• Substantial Question Raised in Certificate– Ex parte reexamination ordered

• No Substantial Question Raised in Certificate– No reexamination– Reexamination fee refunded– Certificate remains part of public record of

patent • Certificate publishes as attachment to patent

Ex Parte Reexamination Procedure Ordered• Exceptions to Ordinary Ex Parte Reexamination:

– 1. No Patent Owner Statement Regarding any SNQ Raised• Owner had opportunity to explain how the claims distinguish

over items – 2. Any Claim, Item, or Issue Considered

• Not limited to patents and printed publications– Ex Parte Reexamination ordered as result of supplemental

exam may extend to: » § 112 disclosure issues» Patentability under § 102 and § 103 based on all pertinent

prior art» Patentability based on § 101 eligible subject matter

– 3. Duty of Candor• General standard of materiality under Rule 56(b) (not limited

reexam standard)

Effect

• In General, No Basis for Inequitable Conduct– “A patent shall 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.”• Note: Items not considered in supplemental exam, but

considered in reexam (e.g., an IDS filed in reexam)– The making or absence of request irrelevant to

presumed validity under § 282

Inequitable Conduct

• A Defense to claims of patent infringement– Elements (Therasense (Fed. Cir. 2011) (en

banc))• (1) Proof of a bad act that is but-for cause of

the patent issuing, and • (2) Particular intent that the act was intended

to deceive the USPTO.– Examples

• Mis-statements of fact (e.g., in an affidavit)• Failure to meet duty of candor

Effect

• Exceptions – Information considered in SE can be the basis for a holding of unenforceability– Benefit Not Available, If Before Filing a Request for

Supplemental Exam• (1) Allegations pled with particularity in a civil action, or• (2) Actions set forth with particularity in notice received by

the patent owner under the Federal Food, Drug, and Cosmetic Act

– Benefit Not Available, If Before Conclusion of Supplemental Exam• (1) A defense is raised in an action brought in the

International Trade Commission under 337(a) of the Tariff Act of 1930, or

• (2) In a civil action brought in federal district court under Section 281

Pros of Supplemental Exam

• Pros– Cure patent of inequitable conduct– Strengthen claim of validity against assertion of

allowance based on incorrect/incomplete information

– Can consider issues other than 102/103– Determination within three months– Reissue/Reeaxmination

• Need not assert inoperative or invalid patent

Cons of Supplemental Exam

• Cons– Expensive– Likely to find substantial new question of

patentability– Requires extensive work to file

Alternatives

• Ex Parte Reexam– Less extensive work initially– Slightly cheaper– Likely to result in similar fashion to Supplemental

Exam

• Reissue– Less extensive work initially– Much cheaper

Summary

• Purpose– “Consider, reconsider, or correct information

believed to be relevant to the patent.”• Pros

– Cure patent of inequitable conduct– Vs. Reissue/Reeaxmination

• Need not assert inoperative or invalid patent• Cons

– Expensive– Likely to find substantial new question of

patentability– Requires extensive work to file

More Information

• 35 U.S.C. § 257

• 37 C.F.R. § 1.600

• MPEP Chapter 2800

• Chisum on Patents:– https://advance.lexis.com/GoToContentView?requestid=8

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