USPTO Proposes Rules on AIA Supplemental Examination Provisions | Practical Law

USPTO Proposes Rules on AIA Supplemental Examination Provisions | Practical Law

The USPTO issued a notice of proposed rulemaking, on January 24, 2012, to implement the Leahy-Smith America Invents Act (AIA) provisions regarding supplemental examination proceedings. The USPTO has also proposed adjusting and setting certain fees concerning supplemental examination and ex parte and inter partes reexaminations.

USPTO Proposes Rules on AIA Supplemental Examination Provisions

Practical Law Legal Update 0-517-4349 (Approx. 3 pages)

USPTO Proposes Rules on AIA Supplemental Examination Provisions

by PLC Intellectual Property & Technology
Published on 24 Jan 2012 • USA (National/Federal)
The USPTO issued a notice of proposed rulemaking, on January 24, 2012, to implement the Leahy-Smith America Invents Act (AIA) provisions regarding supplemental examination proceedings. The USPTO has also proposed adjusting and setting certain fees concerning supplemental examination and ex parte and inter partes reexaminations.
On January 25, 2012, the USPTO published a notice of proposed rulemaking to implement provisions on the supplemental examination procedures of the America Invents Act (AIA).
The supplemental examination provisions allow a patent owner to request supplemental USPTO examination of a patent, to consider, reconsider or correct information believed to be relevant to the patent. Unlike a request for ex parte reexamination, the items a patent holder can present for supplemental examination are not limited to patents and printed publications. These proceedings are designed to help the patent owner address certain challenges to the enforceability of a patent during litigation. For more information on supplemental examination proceedings, see Practice Note, Leahy-Smith America Invents Act: Overview: Supplemental Examination Requests by Patent Owners.
Specifically, the proposed rules require, among other things:
  • The patent owner to file a request for supplemental examination.
  • Each request to be limited to ten items of information, although multiple requests may be filed for the same patent at any time.
  • An identification of any prior or concurrent post-patent USPTO proceeding 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
    • raises each identified issue.
  • A copy of each item of information.
  • A summary of the relevant portions of any submitted document that is over 50 pages long.
The USPTO has also proposed to:
  • Set certain fees to implement supplemental examination.
  • Adjust the fee for filing an ex parte reexamination request.
  • Set a fee for petitions filed in both ex parte and inter partes reexamination proceedings.
The USPTO is accepting comments on the proposed rules until March 26, 2012.