Take a Chance on Supplemental Examination

Supplemental examination (SE) requests the USPTO “consider, reconsider, or correct information believed to be relevant to the patent.” 35 U.S.C. § 257(a). SE is one of the most undervalued AIA provisions. Academics criticize SE as a patent amnesty program because it may immunize patentees against inequitable conduct allegations. Patent practitioners largely write it off as redundant in view of ex parte reexamination and reissue, or unnecessary in view of Therasense. As of August 2, 2013, only 33 requests were filed, even though the USPTO had predicted in August 2012 that all patentee-filed ex parte reexamination requests (about 110 filed annually) would soon be replaced by SE. Despite the lukewarm response to SE in the past year, patent owners should take a second look at it.

SE has several advantages over ex parte reexamination. When filing a SE request, a patentee is not required to make a statement pointing out a substantial new question (SNQ) of patentability. Rather, the patentee merely identifies teachings in the submitted material without characterizing them. The USPTO judges whether the submitted material raises any SNQ, and if it does, initiates ex parte reexamination. Thus, a patentee avoids explicit statements on the record about the patentability of the claims. Additionally, ex parte reexaminations are limited to printed publications or patents, while SE can be based on any information, for example, sales receipts, and can involve any ground of unpatentability, including under Section 101. If the USPTO concludes that the information raises no SNQ, it issues a “supplemental examination certificate” stating its determination.

In the case of reissues, In re Tanaka made it possible to cure non-disclosure of material information, even those made with deceptive intent, using a reissue application. But unlike SE, reissue does not immunize the patentee from inequitable conduct allegations and requires an admission of a defect. Even if the art is arguably not material under the Therasense but-for standard, defendants can still allege inequitable conduct, casting a cloud over the patent’s validity and increasing the litigation costs. Therefore, from a litigation perspective, it is advantageous to correct non-disclosure through SE instead of reissue.

No doubt there are some downsides and limits to SE, for example, the higher cost and the limit on the number of items submitted. But in most cases SE is a better option than ex parte reexamination and reissue. Therefore, patentees should consider this provision as part of their pre-litigation strategy to reduce or eliminate known weaknesses in their patents prior to litigation.