USPTO Issues Proposed Rulemaking for Supplemental Examination Provisions of AIA

by McDonnell Boehnen Hulbert & Berghoff LLP

On January 25, 2012, the U.S. Patent and Trademark Office published its notice of proposed rulemaking to implement the supplemental examination provisions of the Leahy-Smith America Invents Act ("the AIA") (77 Fed. Reg. 3666).  This is one of the ten notices that the Office plans to publish to implement the various provisions of the AIA, and specifically deals with § 12 of the Act, which amends chapter 25 of title 35, United States Code by adding new § 257 "Supplemental examinations to consider, reconsider, or correct information."  We provided an overview of the supplemental examination provisions of the AIA last fall (see "AIA Overview: Supplemental Examination').  In short, this new provision permits "a patent owner to request supplemental examination of a patent by the Office to consider, reconsider, or correct information believed to be relevant to the patent."  77 Fed. Reg. 3666.  The Office is required by statute to determine within three months of a request whether it raises a substantial new question of patentability, and if so, the Director is required to order an ex parte reexamination of the patent.  Such a reexamination follows the same rules as a normally requested reexamination, except that the patent owner does not get the opportunity to submit a statement pursuant to section § 304 after the reexamination is ordered, and the reexamination is not limited to patents and printed publications.  In addition to providing notice of rules for implementing this new procedure, the Office also proposed fees for both supplemental examination and various reexamination fees.  Notably, the Office is proposes raising the cost for filing a request for ex parte reexamination to $17,750!  Written comments related to these proposed rules must be received by March 26, 2012.

In general, the proposed rules track the provisions of § 12 of the AIA, but there are a few notable exceptions.  The AIA did provide the Office with the authority to implement some of its own procedures, but otherwise the Office took the opportunity to interpret some sections of the AIA and propose its own rules when the AIA was silent on an issue.  This report will mainly focus on the unique aspects of the Office's proposed implementation of supplemental examination, but where necessary to provide context, the provisions of § 12 of the AIA and the reasons for its enactment will be described.  In addition, even though this report provides an overview of some of the more interesting aspects of the proposed rule, it is not meant to be exhaustive.    

As may be self-evident, one of the purposes of the new supplemental examination procedure is to help cure an application from potential future allegations of inequitable conduct.  Therefore, one of the most significant differences between this procedure and ex parte reexamination is that supplemental examination is not limited to patents and printed publications.  The Office recognizes that the type of information that can come from a variety of new sources, and some of these types of information may be difficult for the Office to review, especially in the view of the imposed three-month deadline.  Moreover, in addition to raising issues of novelty or obviousness, the patent owner is allowed to raise issues of patentablility under 35 U.S.C. §§ 101 and 112.  As a result, the Office is proposing specific rules to ensure that the determination of whether there is a substantial new question of patentability can be made within this three-month time frame....

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