The United States Patent and Trademark Office (PTO) published their proposed rules for implementing the Supplemental Examination provision of the Leahy-Smith America Invents Act (AIA – 35 U.S.C. §257). Written comments on the proposed rules are due on or before March 26, 2012. The rules are scheduled to go into effect prior to September 16, 2012, at which point patentees can file requests for supplemental examination.

I. Key Elements of Supplemental Examination

• Filing fee of $21,300 (large entity) must be included – includes fee for considering request and reexamination fee (refunded if no reexamination) – extra fees as well for any document over 50 pages in length;

• Request must comply with content requirements – many items needed in request, such as list of items, detailed discussion of each issue, summary of any document over 50 pages (12 items listed in 37 C.F.R. §1.610(b)(1)-(12));

• Can only include 10 items in the request;

• Any document over 50 pages must be summarized, although documents can be redacted;

• Any issue may be considered during ex parte reexamination, including priority, Section 101, and Section 112 issues;

• If the PTO becomes aware of a material fraud on the office, they WILL refer the matter to the Attorney General.