Supplemental Examination: What Do the Numbers Tell Us?

The USPTO posts raw statistics of filings for a number of proceedings including supplemental examination. A link to the USPTO’s AIA statistics can be found here: http://www.uspto.gov/aia_implementation/statistics.jsp. It should be noted that the data presented in the AIA statistics by the Office does not take into account whether the filing satisfied the statutory and regulatory requirements and was determined to be compliant. Nonetheless, the data serves as a good source to determine how filings, like supplemental examination, are not only being used, but also to what extent. Here, we take a look at supplemental examination and the filings to date.

As of August 2, 2013, the USTPO indicates that there were a total of 33 supplemental examinations filed. Of the 33 filings, there are 16 filings that are publically available as of July 30, 2013, as provided in PAIR. When looking at the numbers for supplemental examination, it is important to keep in mind that a supplemental examination request only becomes public once it is deemed compliant with the filing requirements and a filing date assigned. Moreover if a request for supplemental examination is deficit and not corrected by the patent owner, no filing date is assigned and thus, not available to the public.

Based on the 16 publically available supplemental examination requests, there are 3 supplemental examination requests that are awaiting a PTO determination of whether a substantial new question of patentability exists, as of July 30, 2013. The Office is required to conduct and conclude supplemental examination within three months after a request is filed. Thus, of the 13 publically available supplemental examinations, there have been only 3 instances where the Office found no substantial new question of patentability. And, 5 of the publically available supplemental examinations have an associated litigation. In those associated litigations, some of the court proceedings have been stayed in view of the supplement examination/ex parte reexamination proceeding.

While the filing numbers for supplemental examination do not rival other AIA filings, like preissuance submission and inter partes review, practitioners are finding situations in which submission of information for the Office to consider, reconsider, or correct exist.