Fixing Unintentional Duty of Disclosure and Candor Issues Through Supplemental Examination

Key Takeaways

• Supplemental Examination is not limited to new prior art information
• Patent Owners must act fast once a question of patentability arises

A significant procedure for patent owners, Supplemental Examination, was established in the 2012 America Invents Act when Congress determined there should be a proceeding to turn events that in the past could lead to unenforceability when they were unintentional acts into fixable issues. Namely, 35 U.S.C. 257 was enacted and titled “Supplemental examinations to consider, reconsider, or correct information.”

According to this statute, “A patent owner may request supplemental examination of a patent in the Office to consider, reconsider, or correct information believed to be relevant to the patent” so that “[a] patent shall not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination of the patent if the information was considered, reconsidered, or corrected during a supplemental examination of the patent.” But this proceeding must be filed before “an allegation pled with particularity in a civil action, or set forth with particularity in a notice received by the patent owner under section 505(j)(2)(B)(iv)(II) of the Federal Food, Drug, and Cosmetic Act (21 U.S.C. 355(j)(2)(B)(iv)(II)), before the date of a supplemental examination request.”

Generally, the patent bar has considered this proceeding to cover unsubmitted relevant and non-cumulative documents. But the scope of Supplemental Examination is much broader and can also cover clarity, written description issues, patentable subject matter, double patenting, and any other issue related to patentability that may not be clear from the original examination record.

Once filed, “[w]ithin 3 months after the date a request for supplemental examination meeting the requirements of this section is received, the Director shall conduct the supplemental examination and shall conclude such examination by issuing a certificate indicating whether the information presented in the request raises a substantial new question of patentability.” In other words, if the Office determines that the submitted information raises a SNQ, the Office will order a reexamination proceeding based upon the information.

If reexamination is Ordered “[t]he reexamination shall be conducted according to procedures established by chapter 30, except that the patent owner shall not have the right to file a statement pursuant to section 304. During the reexamination, the Director shall address each substantial new question of patentability identified during the supplemental examination, notwithstanding the limitations in chapter 30 relating to patents and printed publication or any other provision of such chapter.”

One important note: Congress did not want fraud to be correctable through these proceedings.

Practitioners have been slow to use and recommend this procedure, but statistics show it has been effective for those patent owners who chose to use it.

Patent owners and their counsel need to be aware of the powerful tool this new procedure affords them if and when they discover unclear prosecution histories or are told about them by opposing counsel. And they need to act fast.  Once inequitable conduct is raised in district court, it is too late to file the Supplemental Examination proceeding.