USPTO Releases Proposed Rules for Supplemental Examination

As promised, the U.S. Patent and Trademark Office has published another set of new rules. This time, the USPTO is proposing rules to implement the supplemental examination provisions of the America Invents Act. It is also proposing to adjust the fee for filing certain ex parte reexamination requests and petitions.

As detailed by the USPTO, the proposed supplemental examination procedures will allow a patent owner to request supplemental examination of a patent by the USPTO to consider, reconsider, or correct information believed to be relevant to the patent. As noted by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos, “These provisions could assist the patent owner in addressing certain challenges to the enforceability of the patent during litigation.”

Under the new rules, a request for supplemental examination must include the following:

  • An identification of the patent for which supplemental examination is requested;
  • A list of each item of information and its publication date, if applicable;
  • A list identifying any other prior or concurrent post patent proceedings involving the patent to be examined;
  • An identification of each aspect of the patent to be examined;
  • An identification of each issue raised by each item of information;
  • A separate, detailed explanation for each identified issue;
  • An explanation of how each item of information is relevant to each aspect of the patent to be examined and of how each item of information raises each identified issue;
  • A copy of each item of information; and
  • A summary of the relevant portions of any submitted document, other than the request, that is over 50 pages in length.

With respect to the fees changes, they are steep. The filing fee for an initial request for supplemental examination is $5,180. In addition, filers must also pay an ex parte re-examination fee of $16,120. While both are due at the time of the initial request, the $16,120 payment will be refunded if no re-examination is ordered in the supplemental examination certificate.

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