USPTO Proposes Rules to Implement Supplemental Examination

The latest AIPLA Direct Vol. 7, Issue 3: January 25, 2012 contains an interesting snippet about supplemental examination at the US Patent and Trademark Office.

The USPTO recently proposed new rules to implement the supplemental examination provisions of the recently enacted Leahy-Smith America Invents Act.

A new 35 U.S.C. 257 permits patent owners to request supplemental examination for the Office to consider, reconsider, or correct information believed to be relevant to the patent. The statute also authorizes the Office to set fees for the procedure.

Supplemental examination is meant to assist the patent owner in addressing certain challenges to the enforceability of the patent that may be raised during litigation. The information presented in a request for supplemental examination is not limited to patents and printed publications, and may include, for example, issues of patentability under 35 U.S.C. 101 and 112. The procedure is not available to an allegation pleaded in a civil action against the patentee. If the request raises a substantial new question of patentability, the Director must order an ex parte reexamination.

Under Section 257(e), if the Director "becomes aware ... that material fraud on the Office may have been committed" in connection with the patent under supplemental examination, the claims may be cancelled and the matter may be referred to the Justice Department. The Federal Register notice states that the Office regards "material fraud" to be narrower than inequitable conduct under Therasense, Inc.

Written comments on the proposed rule must be received by March 26, 2012.

To read the Federal Register notice, click here.