The U.S. Patent and Trademark Office has released new rules for supplemental patent examination, which implement the provisions of the Leahy-Smith America Invents Act (AIA). It has also adjusted the fee for filing a request for ex parte reexamination and established a fee for petitions filed in ex parte and inter partes reexamination proceedings.
Supplemental examination is important because it allows a patent owner to request that the USPTO to consider, reconsider, or correct information believed to be relevant to the patent. The supplemental examination will determine whether the information presented in the request raises a substantial new question of patentability. If the information presented in the request raises a substantial new question of patentability, the USPTO will order ex parte reexamination of the patent.
Section 12 of the AIA provides that, with certain exceptions, a patent shall not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination of the patent if the information was considered, reconsidered, or corrected during a supplemental examination of the patent. Thus, this process could assist the patent owner in addressing certain challenges to the enforceability of the patent during litigation.
As detailed in the Federal Notice, these proceedings will come at a cost. A fee of $5,140.00 is required for processing and treating a request for supplemental examination. If an ex parte reexamination is ordered as a result of a supplemental examination proceeding, an additional fee of $16,120.00 must be paid.
For more information about the costs and benefits of supplemental examination under the new rules, please contact me for a consultation.