America Invents Act Final Rule: Supplemental Examination

The America Invents Act will allow patent owners to ask the U.S. Patent and Trademark Office (“PTO”) for supplemental examination to consider, reconsider, or correct any information believed to be relevant to a patent. Once this information has been considered, reconsidered, or corrected, the patent cannot be held unenforceable based on conduct relating to that information. This new procedure, which is subject to certain statutory limitations, will become available for all U.S. patents on September 16, 2012.

On August 14, 2012, after addressing public comments on its proposed rules, the PTO issued a final rules package entitled “Changes to Implement the Supplemental Examination Provisions of the Leahy-Smith America Invents Act and to Revise Reexamination Fees.”

Supplemental Examination Request Requirements

Under the rules, a patent owner may file one or more supplemental examination requests at any time during the life of a patent. Each request may include no more than twelve items of information. The PTO’s Comments provide guidance on counting the items: for example, a single declaration addressing two distinct issues will constitute two items.

Simplifying the previously proposed rules, section 1.610(b) requires the request to identify the items of information and each claim at issue, and to explain in detail the relevance and manner of applying each item to each claim. The request must summarize the relevant portions of any documents over fifty pages. It may also explain how the claims patentably distinguish over the submitted items of information and why each item does or does not raise a substantial new question of patentability (“SNQP”).

The PTO will not grant a filing date to a noncompliant request. But in response to concerns that a noncompliant request may trigger a “race to court” before the requester can correct any defects and receive a filing date, the PTO announced that it will not publish supplemental examination requests before a filing date has been granted.

PTO Action on a Proper Request

Within three months of receiving a request, the PTO will determine whether an SNQP is raised by any item of information. The PTO will generally consider only items submitted with the request. No interviews or amendments will be permitted during supplemental examination. If the PTO finds an SNQP, it will issue a supplemental examination certificate and institute an ex parte reexamination. If it finds no SNQP, it will issue a supplemental examination certificate without instituting any reexamination.

Usual ex parte reexamination rules will govern a subsequent reexamination proceeding with certain exceptions. For example, the PTO may reexamine any claim based on any item of information in the request, including issues unrelated to patents and printed publications.

If the PTO becomes aware that a “material fraud” on the PTO may have been committed, it will refer the matter to the U.S. Attorney General. Addressing concerns about this provision, however, the PTO stated that such referrals should be rare and that multiple PTO officials would be consulted before any referral would be made.

New Fees

The PTO set a $17,750 fee for requesting ex parte reexamination, but $13,430 will be refunded if no ex parte reexamination is instituted.

The PTO set a $5,140 fee for a request for supplemental examination and a $16,120 fee for ex parte reexamination resulting from supplemental examination. Although both fees must be paid with the request, the $16,120 fee will be refunded if the PTO does not institute a reexamination.