Supplemental examination is a new proceeding created by section 12 of the America Invents Act through the addition of 35 U.S.C. § 257 titled “Supplemental examinations to consider, reconsider, or correct information.” Supplemental examination can only be requested by the owner of the patent after the patent has issued.
Any information not considered, inadequately considered, or incorrectly considered during the examination of a patent which is believed by the patent owner to be relevant may be presented to the Office in a supplemental examination. Information which may be submitted is not limited to patents and printed publication, but may include any “information believed to be relevant to the patent” (AIA § 12(a)). This could be anything from statements regarding inventorship to issues dealing with public use. Among other administrative requirements, a detailed explanation of each issue identified as well as an explanation of each document submitted, along with its relevancy, is required. While each request for supplemental examination is limited to ten items of information, there is no restriction on the number of requests for supplemental examination that may be filed.
Upon the filing of a request for supplemental examination, the Director will determine within three months whether the information provided by the patent owner creates a substantial new question of patentability. If it does, an ex parte reexamination is ordered with the information submitted by the patent owner admissible in the reexamination proceeding. Aside from the restriction prohibiting the owner from filing a statement under 35 U.S.C. § 304, the reexamination proceeds according to ex parte reexamination procedures. If no substantial new question of patentability is found, the Office will publish a supplemental examination certificate and attach it to the patent.
Generally, a patent will not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrectly considered in a prior examination of a patent if the information was considered, reconsidered, or corrected during a supplemental examination. There are two exceptions to this: allegations pled with particularity in a civil action or under the Federal Food, Drug, and Cosmetic Act, or allegations brought under the Tariff Act of 1930.
Upcoming Events/Key Dates
Supplemental examination became effective on September 16, 2012, and applies to any patent issued before, on, or after that date. The USPTO published the final rules on August 14, 2012.