Benefits and Disadvantages of Supplemental Examination
This Post has No Comments
Efforts to limit the use of the inequitable conduct defense have been pursued via legislative reform and case law for many years. The present result is the creation of supplemental examination (S.E.) via the America Invents Act and the ruling in Therasense, Inc. v. Becton, Dickinson & Co.
Beginning on September 16, 2012, patent owners will be able to request that the USPTO “consider, reconsider, or correct information believed to be relevant to the patent” under the new S.E. rule. That information may relate to any aspect of patentability including issues involving patentable subject matter (35 U.S.C. §101), anticipation by the prior art (35 U.S.C §102), obviousness in view of the prior art (35 U.S.C. §103), whether the disclosure adequately describes the invention (35 U.S.C. §112) and whether there is double patenting.
The benefit of successfully prosecuting a patent through S.E. is to provide a protective shield for the patent owner against allegations of unenforceability based on conduct. Specifically, allegations that the Patentee’s conduct or the conduct of the Patentee’s agents resulted in specific information not being considered, inadequately considered, or were incorrect in a prior examination of the patent.
The new rule only allows the patent owner (of the entire interest) to request S.E. In addition, it limits the amount of information that can be addressed to ten items or less. However, separate requests for S.E. may be filed to consider more than ten items. The proposed rules require that Patentee notify the USPTO of other proceedings involving the patent and prevent the patent owner from amending the claims or interviewing the Examiner during this phase. After filing the request, the USPTO is statutorily required to reach a decision on whether to proceed with S.E. within three months.
S.E. will be granted if the request raises at least one substantial new question of patentability (SNQP). If granted, the USPTO will order ex parte reexamination of the patent as to each SNQP.
S.E. must be considered before initiating litigation because its benefits are available only when the patent owner recognizes issues and not after an adversary in litigation has brought a flaw to light.
If the USPTO becomes aware, during a S.E. or reexamination ordered based on a S.E., of a material fraud committed in connection with the patent then the PTO is required to refer the matter to the Attorney General. These provision places an affirmative obligation on the USPTO to report suspected material fraud, which may lead to criminal charges. Because of this, patent attorneys who prosecuted the patent application maybe discouraged from suggesting a client seek S.E. even if such would benefit the client.
The finding of material fraud requires proof that an applicant misrepresented or omitted material information with the specific intent to deceive the USPTO. The Federal Circuit requires that the evidence for the intent show deliberate decision to deceive and that the evidence for the materiality shows that “but for” the deception, the USPTO would not have allowed the claim. However, if it is necessary to amend the claims based on the prior art reference during reexamination after S.E. the prior art is but-for material and if intent is also shown then inequitable conduct has been proven.
Because of this, the interests of a patent owner and the attorney involved in the procurement of the patent may substantially diverge. The patent owner will be focused on obtaining confirmation that the patent is enforceable while the attorney may have concerns over the potential for a finding of inequitable conduct by the USPTO. Another disadvantage of S.E. is the proposed $27,000 cost of filing.
However, there is another option available particularly for small entities that has a similar benefit as S.E. To learn more about this option, please contact Patent Success Strategies, LLC.
In summary, it is important to conduct a thorough analysis to determine whether such action is needed before asserting a patent in litigation so that flaws are not brought to light by an adversary in litigation.