Category: Supplemental examinations

Take a Chance on Supplemental Examination

Author: Arpita Bhattacharyya, Ph.D.
Editor: Anthony A. Hartmann

Supplemental examination (SE) requests the USPTO “consider, reconsider, or correct information believed to be relevant to the patent.” 35 U.S.C. § 257(a). SE is one of the most undervalued AIA provisions. Academics criticize SE as a patent amnesty program because it may immunize patentees against inequitable conduct allegations. Patent practitioners largely write it off as redundant in view of ex parte reexamination and reissue, or unnecessary in view of Therasense. As of August 2, 2013, only 33 requests were filed, even though the USPTO had predicted in August 2012 that all patentee-filed ex parte reexamination requests (about 110 filed annually) would soon be replaced by SE. Despite the lukewarm response to SE in the past year, patent owners should take a second look at it.

SE has several advantages over ex parte reexamination. When filing a SE request, a patentee is not required to make a statement pointing out a substantial new question (SNQ) of patentability. Rather, the patentee merely identifies teachings in the submitted material without characterizing them. The USPTO judges whether the submitted material raises any SNQ, and if it does, initiates ex parte reexamination. Thus, a patentee avoids explicit statements on the record about the patentability of the claims. Additionally, ex parte reexaminations are limited to printed publications or patents, while SE can be based on any information, for example, sales receipts, and can involve any ground of unpatentability, including under Section 101. If the USPTO concludes that the information raises no SNQ, it issues a “supplemental examination certificate” stating its determination.

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Lessons Learned from the First Year of the PTAB Post-Grant Proceedings: A Three-Part Series

Author: Clara N. Jimenez
Editor: Michele C. Bosch

On September 16, 2012, the post-grant proceedings under the AIA went into effect and became a new tool in the patent practitioner’s toolbox. The much anticipated new PTAB proceedings have clearly sparked a renewed interest for out-of-court patent challenges. In this three-part series, we review the past year of many “firsts” related to these new proceedings and recap the strategies that have been employed and the valuable lessons learned. In Part 1, we look at how IPR petitioners have tipped the “reasonable likelihood” standard in their favor. In Part 2, we recap an exciting year of CBM proceedings, including the first ever CBM oral hearing and decision. Finally, Part 3 offers a glimpse of what supplemental examination offers to patentees and how the proceeding has been utilized so far.

 

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Supplemental Examination: What Do the Numbers Tell Us?

Author: Adriana L. Burgy
Editor: Jeffrey A. Berkowitz

The USPTO posts raw statistics of filings for a number of proceedings including supplemental examination. A link to the USPTO’s AIA statistics can be found here: http://www.uspto.gov/aia_implementation/statistics.jsp. It should be noted that the data presented in the AIA statistics by the Office does not take into account whether the filing satisfied the statutory and regulatory requirements and was determined to be compliant. Nonetheless, the data serves as a good source to determine how filings, like supplemental examination, are not only being used, but also to what extent. Here, we take a look at supplemental examination and the filings to date.

As of August 2, 2013, the USTPO indicates that there were a total of 33 supplemental examinations filed. Of the 33 filings, there are 16 filings that are publically available as of July 30, 2013, as provided in PAIR. When looking at the numbers for supplemental examination, it is important to keep in mind that a supplemental examination request only becomes public once it is deemed compliant with the filing requirements and a filing date assigned. Moreover if a request for supplemental examination is deficit and not corrected by the patent owner, no filing date is assigned and thus, not available to the public.

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