Supplemental examination became available on September 16, 2012, as a result of new section 257 of Title 35, United States Code, which was added by Public Law 112-29, enacted on September 16, 2011, known as the Leahy-Smith America Invents Act (AIA). Supplemental examination provisions of the AIA provide a patent owner with a mechanism to request that the Office consider, reconsider, or correct information believed to be relevant to the patent. The rules of practice in patent cases relating to supplemental examination were promulgated on August 14, 2012, at 77 Fed. Reg. 48828-48853.
Unlike ex parte reexamination practice, the information that the patent owner may request to be considered, reconsidered, or corrected in a supplemental examination proceeding is not limited to patents and printed publications. The "information" may include any information that the patent owner believes to be relevant to the patent. For example, the information may include not only a patent or a journal article, but also a sales invoice, or a transcript of an audio or video recording. In addition, the information submitted as part of a request for supplemental examination may involve any ground of patentability, such as, for example, patent eligible subject matter, anticipation, public use or sale, obviousness, written description, enablement, indefiniteness, and double-patenting.
The flowchart below shows the general procedure for a supplemental examination proceeding, and for an ex parte reexamination proceeding initiated/ordered as a result of a supplemental examination proceeding.
35 U.S.C. 257(a) provides that supplemental examination may be requested by the patent owner to consider, reconsider, or correct information believed to be relevant to the patent in accordance with requirements established by the Office. The information presented in a request for supplemental examination is not limited to patents and printed publications, and may include, for example, issues of patentability under 35 U.S.C. 101 and 112. Within three months of the receipt of a request for supplemental examination (meeting the requirements of 35 U.S.C. 257 including the requirements established by the Office), the Office shall conduct a supplemental examination and conclude the supplemental examination proceeding with the issuance of a supplemental examination certificate. The supplemental examination certificate shall indicate whether the items of information presented in the request raise a substantial new question of patentability.
If the supplemental examination certificate, issued under 35 U.S.C. 257(a), indicates that a substantial new question of patentability is raised by one or more items of information in the request for supplemental examination, the supplemental examination certificate will indicate that ex parte reexamination will be ordered by the Office. The resulting ex parte reexamination proceeding will be conducted according to ex parte reexamination procedures, except that the patent owner does not have the right to file a statement pursuant to 35 U.S.C. 304, and the basis of the ex parte reexamination is not limited to patents and printed publications. Each substantial new question of patentability identified during the supplemental examination proceeding will be addressed by the Office during the resulting ex parte reexamination proceeding. See 35 U.S.C. 257(b).
35 U.S.C. 257(c) specifies the effect of a supplemental examination under 35 U.S.C. 257(a) and any resulting ex parte reexamination under 35 U.S.C. 257(b) on the enforceability of the patent.
35 U.S.C. 257(d)(1) provides the Director with authority to establish fees for filing a request for supplemental examination and for considering each item of information submitted with the request. If ex parte reexamination is ordered under 35 U.S.C. 257(b), 35 U.S.C. 257(d)(1) also establishes that the fees applicable to ex parte reexamination must be paid in addition to the fees for supplemental examination. 35 U.S.C. 257(d)(2) provides the Director with authority to establish regulations governing the requirements of a request for supplemental examination, including its form and content.
In accordance with 35 U.S.C. 257(e), if the Office becomes aware, during the course of a supplemental examination or ex parte reexamination ordered under 35 U.S.C. 257, that a material fraud on the Office may have been committed in connection with the patent that is the subject of the supplemental examination, the Office shall refer the matter to the U.S. Attorney General, in addition to any other actions the Office is authorized to take, including the cancellation of any claims found to be invalid under 35 U.S.C. 307 as a result of ex parte reexamination ordered under 35 U.S.C. 257. The Office anticipates that such instances will be rare. The Office regards the term "material fraud" in 35 U.S.C. 257(e) to be narrower in scope than inequitable conduct as defined by the U.S. Court of Appeals for the Federal Circuit in Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011).
Nothing in 35 U.S.C. 257 precludes the imposition of sanctions based upon criminal or antitrust laws (including 18 U.S.C. 1001(a)), the first section of the Clayton Act, and section 5 of the Federal Trade Commission Act to the extent that section relates to unfair methods of competition. See 35 U.S.C. 257(f)(1). Section 12 of the AIA sets forth rules of construction, providing that 35 U.S.C. 257 shall not be construed to limit the authority of the Office to investigate issues of possible misconduct and impose sanctions for misconduct involving matters or proceedings before the Office, or to issue regulations under 35 U.S.C. 32 or 35 U.S.C. 33 relating to sanctions for misconduct by patent practitioners. See 35 U.S.C. 257(f)(2) and 35 U.S.C. 257(f)(3).
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Only a patent owner may file a request for supplemental examination of a patent. See 35 U.S.C. 257(a) and 37 CFR 1.601(a). The statute does not authorize the Office to accept a request for supplemental examination from a party who is not the patent owner. For example, a party who merely states that it is an exclusive licensee or that it is a person with sufficient proprietary interest under 35 U.S.C. 118 is not eligible to file a request for supplemental examination.
The request must be filed by the owner(s) of the entire right, title, and interest in the patent. A request for supplemental examination must include an identification of the owner(s) of the entire right, title, and interest in the patent requested to be examined, and a submission by the patent owner in compliance with 37 CFR 3.73(c) establishing the entirety of the ownership in the patent requested to be examined. See 37 CFR 1.610(b)(9). This is because the terms of a patent may be changed (e.g., by cancellation or amendment of the claims) during any ex parte reexamination proceeding that may be ordered as a result of the supplemental examination proceeding, and this change must be binding on all parties having an ownership interest in the patent. Furthermore, the Office has consistently required that all parties having an interest in a patent are deemed "a patent owner" as a composite entity and must act together in proceedings before the Office. See MPEP §§ 301 and 324. This is also consistent with ex parte reexamination practice, which requires a patent owner requester of an ex parte reexamination to comply with the provisions of 37 CFR 3.71 and 37 CFR 3.73 for establishing an assignee’s right to take action when submitting a power of attorney. See MPEP § 2222.
The Office may, under rare circumstances, permit less than all of the owners to file a request for supplemental examination if a grantable petition under 37 CFR 1.183 requesting waiver of the provisions of 37 CFR 3.71 and 37 CFR 3.73(c) is filed. For example, such a petition may be filed in the case of a deceased or legally incapacitated joint owner, or where the joint owner refuses to join or cannot be found after diligent effort. See MPEP § 409 et seq. In the case of a deceased joint owner, the heirs, administrators, or executors of the joint owner may be permitted to join in filing the request for supplemental examination. If one of the owners is legally incapacitated, the legal representative of the joint owner may be permitted to join in filing the request for supplemental examination. If a joint owner refuses to sign or cannot be found or reached after diligent effort, the remaining owners must include, in the petition, proof of the pertinent facts, a showing that such action is necessary to preserve the rights of the parties or to prevent irreparable damage, and the last known address of all of the joint owners. Finally, if an owner of all or a portion of the entire right, title, and interest of the patent is an organization that is dissolved, the Office may require that a determination of the ownership of the patent be obtained from a court of competent jurisdiction prior to accepting and according a filing date to a request for supplemental examination.
A legal representative of the patent owner may file a request for supplemental examination on behalf of the patent owner. See MPEP § 2804.
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37 CFR 1.601(b) prohibits third parties from filing papers or otherwise participating in any manner in a supplemental examination proceeding. In addition, because only the patent owner can file the request for supplemental examination, third-party participation is prohibited in any ex parte reexamination ordered under 35 U.S.C. 257 and 37 CFR 1.625, pursuant to ex parte reexamination practice.
Office personnel, including both the examining and the technical support staff, should not enter into a discussion with, or answer inquiries from, third parties (i.e., parties who are not the patent owner) regarding a supplemental examination proceeding. A party who is not the patent owner should be referred to the Central Reexamination Unit (CRU) Supervisory Patent Reexamination Specialist (SPRS) in the art unit of the assigned examiner. Only questions on strictly general procedural matters regarding supplemental examination, i.e., not directed to any specific supplemental examination proceeding, may be discussed by the CRU SPRS with that party.
Employees of the Office, particularly CRU examiners who have conducted a supplemental examination proceeding that has been concluded, should not discuss or answer inquiries from any person outside the Office as to whether a certain reference or other particular evidence was considered during the proceeding, and whether that reference, or other evidence, would have been determined to raise a substantial new question of patentability, had it been considered during the proceeding. Patent practitioners (or other members of the public) must not address improper inquiries to members of the patent examining corps and to the Office as a whole. Inquiries from members of the public relating to the matters discussed above must, of necessity, be refused and this refusal should not be considered discourteous or an expression of opinion by the Office as to the validity, patentability, or enforceability of the patent.
The definitions set forth in 37 CFR 104.1 and the exceptions in 37 CFR 104.21 are applicable to this section.
The Office does not intend to provide the public with access, by Patent Center or otherwise, to a request for supplemental examination, or to any papers or information submitted as part of or accompanying the request, until the request is granted a filing date by the Office.
After a filing date has been accorded the request, supplemental examination files are open to inspection by the general public by way of Patent Center which is available on the USPTO's Internet site, www.uspto.gov. See MPEP § 2232 (access guidance). Copies of non-patent literature (NPL) cited in the proceeding, however, will not be available via Patent Center and must be ordered as set forth below.
If a copy of the supplemental examination file or NPL cited in the proceeding is desired, it may be ordered from the Patent and Trademark Copy Fulfillment Branch (PTCFB) of the Public Records Division (PRD) upon payment of the applicable fee after the request for supplemental examination has been granted a filing date.
Orders for such copies must indicate the control number of the proceeding. It is preferred that orders be made through the PTCFB's Certified Copy Center storefront at https://certifiedcopycenter.uspto.gov. Alternatively, orders may be addressed to:
Mail Stop Patent and Trademark Copy Fulfillment Branch
Director of the U.S. Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
In addition, after the request for supplemental examination has been granted a filing date, a request for a copy of the file may also be sent via email to: dsd@uspto.gov, and the fee for the copy may be charged to a credit card or deposit account.
Where an attorney or agent files a request on behalf of a patent owner, he or she may act under a power of attorney under 37 CFR 1.32, or in a representative capacity under 37 CFR 1.34. In order to act in a representative capacity under 37 CFR 1.34, an attorney or agent must provide his or her registration number, name, and signature. In order to act under a power of attorney from a patent owner, an attorney or agent must be provided with a power of attorney by the patent owner. Pursuant to 37 CFR 1.32(c) a "power of attorney may only name as representative" either one or more inventors or registered patent practitioners. Thus, an attorney or agent representing a patent owner must be a registered patent practitioner. A patent owner may not be represented during a supplemental examination proceeding or any resulting ex parte reexamination proceeding by an attorney or other person who is not registered to practice before the Office.
Any correspondence from the Office will be directed to the patent owner at the address indicated in the file of the patent for which supplemental examination is requested, pursuant to 37 CFR 1.33(c), regardless of the address of the person filing the request . If the patent owner wishes the Office to direct correspondence regarding the supplemental examination proceeding to an address other than the official correspondence address of record in the file of the patent, then the patent owner must file a change of correspondence address in the file of the patent. A change of correspondence address should also be filed in the supplemental examination proceeding. See MPEP § 2805.
For a practitioner to withdraw from representation in a patent, supplemental examination proceeding, or a reexamination proceeding, the Office no longer requires that there be at least 30 days remaining in any running period for response between the approval of a request to withdraw and the expiration date of any running period for response. Instead, pursuant to 37 CFR 11.116(d), a practitioner must take steps to the extent reasonably practicable to protect a client’s interests, such as giving reasonable notice to the client, allowing time for employment of other counsel, surrendering papers and property to which the client is entitled and refunding any advance payment of fee or expense that has not been earned or incurred. "Reasonable notice" should allow for a reasonable amount of time for the client to seek the services of another practitioner prior to the expiration of any applicable response period. When the correspondence address changes as a result of the withdrawal, the withdrawing practitioner(s) must request that the Office direct all future correspondence to the patent owner of record. Practitioners may do so by specifying either the correspondence address of the patent owner, or the address associated with the Customer Number of the patent owner. Withdrawing practitioner(s) cannot change the correspondence address to the address associated with the Customer Number of another law firm, or to any address other than that of the patent owner of record. See MPEP §§ 402.06 and 2805.
The correspondence address of record for the patent for which supplemental examination is requested is the correct address for all notices, official letters, and other communications for patent owners in supplemental examination proceedings. This is consistent with reexamination practice. See, e.g., 37 CFR 1.33(c). For this reason, the correspondence address of record in the file of the patent for which supplemental examination is requested will be utilized by the Office as the address of the patent owner when mailing any communications in supplemental examination proceedings, and in any resulting ex parte reexamination proceedings.
If the patent owner desires the Office to send correspondence to a registered attorney or agent other than the attorney or agent of record in the file of the patent for which reexamination is requested, then a new power of attorney must be filed in both: 1) the file of the patent for which supplemental examination is requested; and 2) the file of the supplemental examination proceeding, or, if reexamination is ordered, in the resulting ex parte reexamination proceeding. Patent owners are strongly encouraged to use form PTO/AIA/81B when submitting a power of attorney and/or change of correspondence address in a supplemental examination proceeding or a reexamination proceeding.
After a request for supplemental examination has been filed, and/or after any ex parte reexamination resulting from the supplemental examination has been ordered, any submissions to the Office to change the power of attorney or the correspondence address should be addressed as set forth in MPEP § 2806. Use of form PTO/AIA/81B is encouraged. If, however, the supplemental examination proceeding and any resulting reexamination proceeding is no longer pending, then such submissions should be addressed to Mail Stop Post Issue, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
A submission requesting a change of correspondence address may be signed by all of the patent owners (see MPEP § 2803) or by the registered attorney or agent of record in the file of the patent under supplemental examination. If the application which became the patent under supplemental examination was filed on or after September 12, 2012, a patent practitioner acting in a representative capacity whose correspondence address is the correspondence address of record in the file of the patent under supplemental examination may file a change of correspondence address, provided that the change of correspondence address is accompanied by a statement in accordance with 37 CFR 1.33(g).
Papers filed on behalf of patent owners must be signed by the patent owners, by the registered attorney or agent of record in the patent file, or by any registered attorney or agent acting in a representative capacity under 37 CFR 1.34. See MPEP § 2804. Double correspondence with the patent owner and the attorney or agent will not normally be undertaken by the Office.
The following is a copy of form PTO/AIA/81B, which may be used for changing a power of attorney and/or a correspondence address in a supplemental examination proceeding and, if desired, simultaneously in the file of the patent.
A request for supplemental examination should be deposited as a new, separate, and independent submission, and should not be deposited in the file of the patent for which supplemental examination is requested, or in the file of any other application, patent, or proceeding. The request should be clearly identified by, for example, providing a heading such as "REQUEST FOR SUPPLEMENTAL EXAMINATION" prominently at the top of the first page of the paper. Use of the new form PTO/SB/59 titled "Request for Supplemental Examination Transmittal Form," which is available on the Office’s website www.uspto.gov, is also recommended. Requests for supplemental examination, any paper(s) other than a request submission that are to be filed in a supplemental examination proceeding, and any paper(s) to be filed in a reexamination proceeding ordered as a result of a supplemental examination proceeding, should be addressed to the Office as set forth below.
The filing of any papers other than those forming part of a request for supplemental examination in the supplemental examination proceeding submission should be rare.
A supplemental examination proceeding is separate and distinct from any ex parte reexamination proceeding that may later result from it. A supplemental examination proceeding concludes with the electronic issuance of a supplemental examination certificate. 35 U.S.C. 257(a) and 37 CFR 1.625(a). Any reexamination resulting from a supplemental examination proceeding will be ordered after the conclusion of the supplemental examination proceeding. See 35 U.S.C. 257(b) and 37 CFR 1.625(b). The ex parte reexamination is a distinct proceeding initiated by its own order. If reexamination is ordered as a result of a supplemental examination proceeding, any papers submitted subsequent to the order should be filed in the resulting reexamination proceeding.
Supplemental examination proceedings will be assigned a "series 96" control number, such as, for example, 96/999,999. Any ex parte reexamination resulting from a concluded supplemental examination proceeding will retain the same control number, even though the two proceedings are separate and distinct. After the filing of the request, any correspondence sent to the Office relating to the supplemental examination proceeding or to the resulting ex parte reexamination proceeding should identify the proceeding by the number of the patent, the control number assigned to the proceeding, the art unit, and the name of the examiner.
The certificate of mailing and transmission procedures (37 CFR 1.8 ) may be used to file any paper in a supplemental examination proceeding, except for a request or corrected request. See MPEP § 512 regarding the use of the certificate of mailing and transmission procedures. The Priority Mail Express® mailing procedure (37 CFR 1.10 ) may be used to file any paper, including a request or corrected request, in a supplemental examination proceeding. See MPEP § 513 as to the use of the Priority Mail Express® mailing procedure.
Patent owners may submit papers in a supplemental examination proceeding via the Office’s Web-based electronic filing system (EFS-Web), available by accessing the Office's website, www.uspto.gov. The electronic submission of requests for supplemental examination and "follow-on" papers (i.e., subsequent correspondence in the proceedings) is encouraged.
When filing a new supplemental examination request, the patent owner should select, in EFS-Web, the filing option "New application/proceeding," and then select "Supplemental Examination." Any paper(s) that are to be filed in an existing supplemental examination proceeding, and any paper(s) that are to be filed in a reexamination proceeding ordered as a result of a supplemental examination proceeding, may be filed by selecting "Existing application/patent/proceeding" (e.g., a proceeding that has already been assigned a control number), "Documents/Fees for an existing application/proceeding," and then entering the assigned control number and confirmation number for the proceeding. For example, a corrected request that is filed in response to a Notice of Noncompliant Supplemental Examination Request should be filed as paper(s) in an existing proceeding. After the control number and confirmation number of the proceeding are entered, patent owners will be provided with a menu of document descriptions appropriate for a supplemental examination proceeding, unless reexamination has been ordered. If reexamination has been ordered, patent owners will be provided with a menu of document descriptions for a reexamination proceeding. For further information, see "EFS-Web Quick Start Guide to Filing a Supplemental Examination Request," at www.uspto.gov/sites/ default/files/patents/process/file/efs/ guidance/QSG_Supplemental_Exam.pdf.
Even though the concluded supplemental examination proceeding is separate and distinct from the resulting ex parte reexamination, the resulting reexamination retains the same control number as the concluded supplemental examination proceeding to simplify tracking and processing. Therefore, any paper to be submitted in the resulting reexamination proceeding is to be filed as a paper in an "existing application/patent/proceeding" , using the same control number as was used in the now concluded supplemental examination proceeding.
The Office accepts paper form (hard copy) requests for supplemental examination (i.e., request submissions), and any paper(s) other than request submissions that are filed in a supplemental examination proceeding. These papers should be addressed to "Mail Stop Supplemental Examination" at the appropriate address provided below.
Any papers to be submitted in paper form (hard copy) in a reexamination proceeding ordered as a result of a supplemental examination, other than correspondence to the Office of the General Counsel pursuant to 37 CFR 1.1(a)(3) and 37 CFR 102.4, should be addressed to "Mail Stop Ex Parte Reexam" at the appropriate address provided below.
Mail to be delivered by the United States Postal Service (USPS) should be addressed as:
Mail Stop ______________
Central Reexamination Unit
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Correspondence to be hand-carried or delivered by other delivery services (Federal Express (Fed Ex), UPS, DHL, Laser, Action, Purolator, etc.) should be addressed as:
United States Patent and Trademark Office
Customer Service Window
Mail Stop __________________
Central Reexamination Unit
Randolph Building, Lobby Level
401 Dulany Street
Alexandria, VA 22314
Whether the correspondence is mailed via the U.S. Postal Service mail or is hand-carried to the Office, it is strongly recommended that the Mail Stop information be placed in a prominent position on the first page of each paper filed, utilizing a large font size to direct attention to it.
Requests for supplemental examination may not be facsimile-transmitted. This is also true for a corrected request that is filed in response to a Notice ofNoncompliant Supplemental Examination Request (see MPEP §§ 2812.02 - 2812.03), since the corrected request stands in place of the original request. Papers to be filed in a supplemental examination proceeding, other than a request or a corrected request for supplemental examination, and any papers to be filed in a reexamination proceeding resulting from a supplemental examination proceeding, if the papers to be filed in the reexamination proceeding may be properly filed via facsimile transmission in accordance with reexamination practice, may be facsimile-transmitted to the Central Reexamination Unit at (571) 273-9900. See MPEP § 2224.
37 CFR 1.615(a) requires that all papers submitted in a supplemental examination proceeding must be formatted in accordance with 37 CFR 1.52.
37 CFR 1.615(b) provides that court documents and non-patent literature may be redacted, but must otherwise be identical both in content and in format to the original documents, and if a court document, to the document submitted in court, and must not otherwise be reduced in size or modified, particularly in terms of font type, font size, line spacing, and margins. Patents, patent application publications, and third-party-generated affidavits or declarations must not be reduced in size or otherwise modified in the manner described in this paragraph.
If the requirements of 37 CFR 1.615 are not satisfied, the request will be considered to be defective. See 37 CFR 1.610(d) and MPEP § 2812.01 .
Papers filed in a supplemental examination proceeding may be filed electronically via EFS-Web. See MPEP § 2806, subsection I.
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Under 37 CFR 1.601(c), a patent owner may, at any time during the period of enforceability of a patent, file a request for supplemental examination. This period was set by rule, because the Office believes that Congress could not have intended the Office to expend resources on the supplemental examination of a patent which cannot be enforced. The enforceability period is generally determined by adding six years to the date on which the patent expires, but the period may be extended if litigation is pending. Specifically, if litigation is instituted within the statute of limitations (see 35 U.S.C. 286 ), requests for supplemental examination may be filed after the statute of limitations has expired, as long as the patent is still enforceable against someone.
It is the responsibility of the patent owner to determine the expiration date of the patent for which supplemental examination is requested. For example, the expiration date of a utility patent may be determined by taking into account the term of the patent, whether maintenance fees have been paid for the patent, whether any disclaimer was filed as to the patent to shorten its term, any patent term extensions or adjustments for delays within the Office under 35 U.S.C. 154 (see MPEP § 2710, et seq.), and any patent term extensions available under 35 U.S.C. 156 for premarket regulatory review (see MPEP § 2750 et seq.). Any other relevant information should also be taken into account.
