Beginning September 16, 2012, a patent can be "cleansed" of inequitable conduct issues through a new Supplemental Examination procedure. Inequitable conduct issues may arise during the pendency of a patent application if the applicant fails to meet its obligation to disclose to the U.S. Patent and Trademark Office (USPTO) information that is material to the patentability of the application. Traditionally, patent owners could not cure inequitable conduct, and, thus, were reluctant to assert a patent potentially tainted with inequitable conduct issues.
The America Invents Act, however, will allow patent owners to ask the USPTO for Supplemental Examination to consider any information believed to be relevant to a patent, including information related to inequitable conduct issues. Once this information has been considered by the USPTO, the patent cannot be challenged on inequitable conduct grounds related to that information. While Supplemental Examination can remediate a patent, it does not excuse individuals from disciplinary action if inequitable conduct is found. Furthermore, Supplemental Examination cannot resolve issues of inequitable conduct raised in a lawsuit filed before Supplemental Examination is requested, or address defenses to a patent infringement action that are raised before Supplemental Examination is concluded.
If a patent owner has been reluctant to assert a patent because of inequitable conduct or other patentability concerns, now is the time to investigate whether Supplemental Examination can resolve these concerns. Additionally, before filing any patent infringement lawsuit and potentially losing the benefit of the Supplemental Examination option, patent owners will also want to assess their inequitable conduct risk, and whether Supplemental Examination should be pursued first to mitigate that risk.