AIA Monitor

As part of US patent reform under the AIA, Title 35 of the United States Code was amended to provide a procedure for remedying failure to disclose information that may raise a substantial new question of patentability post grant.  The new procedure, dubbed “supplemental examination”, must be initiated prior to any well plead allegation of failure to comply with the duty of candor to the USPTO regarding the subject of supplemental examination and must be completed prior to taking action to enforce the patent in order to be effective against such an allegation raised as a defense to enforcement.

This provision, known as 35 USC §257, will go into effect on September 16, 2012.  It may be viewed by clicking here.

On January 25, 2012, the USPTO published a notification of proposed rulemaking for implementation of Section 12 of the AIA regarding the new supplemental examination procedure and to propose new fees for ex parte reexamination.  The notice of proposed rulemaking (NPRM) may be viewed by clicking here.

According to the NPRM, the USPTO proposes to charge $5,180 for conducting supplemental examination of up to 10 items of “information” (paragraph (a) of proposed Rule 605).  Information is defined in proposed Rule 605 as (1) a document submitted with the request for supplemental examination, (2) information presented in the request which is not found in a document submitted with the request, and (3) a combination of information provided in two or more documents submitted with the request.

If the USPTO determines that the request for supplemental examination raises a substantial new question of patentability, the USPTO is required to institute ex parte reexamination.  According to proposed new Rule 610(a), the patentee must submit an additional $16,120 for conducting ex parte reexamination when submitting the request for supplemental examination, which would be refunded if the request does not raise a substantial new question of patentability.  Added to the fee for the request, the up front cost of submitting the request would, at a minimum, be $21,300.

If the patentee needs to have more than 10 items of “information” considered, the proposed rules would require the patentee to submit a separate request and fees for supplemental examination for each set of 10 items.  Consideration of 11 items would require payment of $42,600 in fees, for example.

In addition, the USPTO proposes to charge $170 for each nonpatent document having from 21 to 50 pages and $280 for each nonpatent document having more than 50 pages.

§1.610 of the proposed new rules also require the patentee to include the following information in its request:

“(6)          An identification of each aspect of the patent for which supplemental examination is sought, including an identification of the structure, material, or acts in the specification that correspond to each means-plus-function or step-plus-function element, as set forth in 35 U.S.C. 112(f), in any claim to be examined.

(7) An identification of each issue raised by each item of information.

(8) A separate, detailed explanation for each identified issue, discussing how each item of information is relevant to each aspect of the patent identified for examination, and how each item of information raises each issue identified for examination, including:

(i)   Where an identified issue involves the application of 35 U.S.C. 101 (other than double patenting) or 35 U.S.C. 112, an explanation discussing the support in the specification for each limitation of each claim identified for examination with respect to this issue; and

(ii) Where an identified issue involves the application of 35 U.S.C. 102, 35 U.S.C. 103, or double patenting, an explanation of how each limitation of each claim identified for examination with respect to this issue is met, or is not met, by each item of information. The detailed explanation may also include an explanation of how the claims distinguish over the items of information.”

The explanations required by the proposed rules put the patentee and its representative in a precarious situation.  On the one hand, errors and omissions in the explanation may form the basis for an allegation of failure to comply with the duty of candor to the USPTO.  On the other hand, explanations regarding the relevance of certain information to the requirements for patentability may be regarded as an “admission against interest” prejudicing the outcome of ex parte reexamination against the patentee.

The situation is made worse by the requirement under proposed Rule 1.625(d)that the patentee would not be permitted to submit a statement under ex parte reexamination Rule 1.530, which implements exclusion of the §304 statement in §257(b) as amended under the AIA.  Rule 1.530 would normally allow the patentee to propose amendments to the patent to overcome the issues raised by the substantial new question of patentability.

Amendments to the patent would also be prohibited during supplemental examination under proposed Rule 1.620(f).

Placing the onus on the patentee to provide prejuicial explanations appears likely to discourage the use of this procedure to eliminate duty of candor issues from litigation.  Discouraging use of this procedure would be contrary to the will of Congress in enacting 35 USC §257.

In addition, the complexity of complying with the proposed new rules for this procedure is likely to result in fees in the five figure range for the preparation of the request for supplemental examination in addition to the proposed official fees discussed above.  Simplification of the rules may reduce the overall cost.

Comments on the proposed new rules for supplemental examination and the proposed new fees for reexamination may be submitted via e-mail addressed to supplemental_examination@uspto.gov.