The USPTO has published “Tips for Filing a Compliant Supplemental Examination Request” on its AIA Implementation web page. According to the notice, the USPTO has received six requests for Supplemental Examination, but apparently not all of them complied with the USPTO’s rules. Luckily for patent owners, requests for Supplemental Examination are not made public unless and until they have been found to satisfy the filing date requirements. Thus, patent owners who file non-compliant requests have an opportunity to cure them before they are made public. The “tips” in the notice underscore the importance of following the rules to a “T,” and making it easy for the USPTO to determine why the “information” is being submitted and whether it is “relevant to the patent.”Continue reading this entry
On Tuesday, September 18, 2012, at 2:00 pm eastern, I will be speaking on the IPO IP Chat Channel webinar on “Supplemental Examination: Rules & Strategy.” My distinguished co-panelists are Robert Bahr, Senior Patent Counsel in the USPTO’s Office of Patent Examination Policy, and Kurtis MacFerrin, Patent Counsel at Google Inc.
We will be reviewing the statute and rules governing supplemental examination, which is a new post-grant procedure by which patent owners can ask the USPTO to consider, reconsider, or correct information believed to be relevant to a patent, and immunize the patent from being held unenforceable based on conduct relating to that information. We also will discuss strategies and factors to consider when balancing the possible risks and benefits of this new option for patent holders.
For more information or to register, please visit the IPO IP Chat Channel webpage.
As announced on the USPTO website, the final rules for the provisions of the America Invents Act (AIA) that take effect on September 16, 2012, will be published in the August 14, 2012 Federal Register. Pre-publication versions of the rules packages are available now in the Federal Register reading room. While I have not yet reviewed all of the final rules, it appears that the USPTO took public comments into consideration and made significant changes to some of the proposed rules. Applicants and practitioners should study the final rules packages and consider attending a USPTO “AIA roadshow,” where USPTO representatives will explain the new rules. Practitioners and applicants interested in the new patent trial proceedings also may want to register for and attend the Patent Nation Webinar program hosted by Foley & Lardner LLP on Monday, August 27, 2012. Continue reading this entry
Today, March 26, 2012, is the deadline for submitting public comments on the USPTO’s proposed rules for implementing the Supplemental Examination provisions of the America Invents Act.
Some issues that stakeholders may wish to comment on include:
- The proposed fees
- The limitation on the number of items of information per request
- The risk of filing a request for supplemental examination that may not be granted
- The USPTO’s cost and volume estimates
Comments can be submitted by email to email@example.com.
On Wednesday, February 15, 2012, the Patent Public Advisory Committee (PPAC) will hold its first public hearing on the patent fees that the USPTO proposes to charge in accordance with its new fee-setting authority conferred by the America Invents Act. In advance of this meeting, the USPTO released several documents outlining and explaining the proposed patent fees. Even taking the USPTO’s cost estimates at face value, I have several questions and concerns about some of the proposed fees. Continue reading this entry
Earlier this week I provided a summary of the USPTO’s proposed rules to implement the Supplemental Examination provisions of the America Invents Act. The Federal Register Notice also includes a discussion of the USPTO’s estimate of how much a Request for Supplemental Examination will cost to prepare, and its estimate of how many Requests will be filed on an annual basis. Members of the public may submit written comments on these estimates by March 26, 2012.Continue reading this entry
As I was reviewing the USPTO’s proposed rules to implement the Supplemental Examination provisions of the America Invents Act, one issue that crossed my mind is the problems that could arise if a patent holder’s initial Request for Supplemental Examination is not granted. In this article, I discuss that potential problem and some possible solutions.Continue reading this entry
The USPTO has issued its proposed rules to implement the Supplemental Examination provisions of the America Invents Act. As I noted last week, the same rules package sets a new fee for ex parte reexamination at $17,750. Now that the shock of that amount has worn off, I am ready to take a look at the proposed Supplemental Examination rules. The USPTO will consider written comments received by March 26, 2012.Continue reading this entry