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USPTO Final Rules on AIA Supplemental Examination Provisions
Practical Law Legal Update 2-520-8857 (Approx. 3 pages)
USPTO Final Rules on AIA Supplemental Examination Provisions
by PLC Intellectual Property & Technology
| Published on 14 Aug 2012 • USA (National/Federal) |
On August 14, 2012, the US Patent and Trademark Office (USPTO) issued final rules to implement the Leahy-Smith America Invents Act (AIA) provisions regarding supplemental examination proceedings. The final rules take effect on September 16, 2012.
On August 14, 2012, the USPTO issued final rules implementing 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 provisions are designed to help the patent owner address certain challenges to the enforceability of a patent during litigation. The final rules were issued following a public comment period on proposed rules issued in January 2012 and differ from the proposed rules in certain respects.
The final rules require that a request for supplemental examination must contain:
- The number of the patent for which supplemental examination is requested and a copy of the patent.
- A list, and a copy, of each item of information that is requested to be considered, reconsidered or requested. The patent owner may submit no more than 12 items of information with a request for supplemental examination.
- An identification of each claim of the patent for which supplemental examination is requested.
- A separate explanation of the relevance and manner of applying each item of information to each claim of the patent of which it was identified.
- A summary of the relevant portions of any submitted document, other than the request, that is over 50 pages in length.
- An identification of the owner of the patent for which supplemental examination is requested.
- An identification of any prior or concurrent post-patent USPTO proceeding involving the patent for which supplemental examination is requested.
Notable features of supplemental examination proceedings are that:
- The USPTO will determine within three months of the filing date of the request for supplemental examination whether or not the patent owner raised a new question of patentability. If so, the USPTO will order an ex parte reexamination. If not, the USPTO will issue a supplemental examination certificate.
- The patent owner may not interview the patent examiner.
- The patent owner may not make amendments to the patent
The final rule sets a schedule of fees for supplemental examination including fees for:
- Processing and treating a request for supplemental examination.
- An ex parte reexamination ordered as a result of a supplemental examination proceeding.
- Processing and treating, in a supplemental examination proceeding, a non-patent document over 20 pages long.
The final rules also set certain fees for ex parte and inter partes reexaminations.
The final rules take effect on September 16, 2012 and apply to any patent issued before, on or after that date.
Differences from the Proposed Rules
The final rules on supplemental examination procedures differ from the proposed rules in various respects, including that the final rules:
- Increase from ten to 12 the limit on the number of items of information that may be contained in a request for supplemental examination.
- Adopt content requirements for a request for supplemental examination that are comparable to the requirements for a request for ex parte reexamination and do not implement certain of the proposed requirements for each item of information.