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.

The Proposed Rule

The proposed rules include new 37 CFR § 1.610(e):

If the Office determines that the request, as originally submitted, does not meet the requirements of paragraph (d) of this section to be entitled to a filing date, the patent owner will be so notified and will be given an opportunity to complete the request within a specified time. If the patent owner does not timely comply with the notice, the request for supplemental examination will not be granted a filing date and the fee for reexamination as set forth in Sec. 1.20(k)(2) will be refunded. If the patent owner timely files a corrected request in response to the notice that properly addresses all of the defects set forth in the notice and that otherwise complies with all of the requirements of Sec. Sec. 1.605, 1.615 and of this section, the filing date of the supplemental examination request will be the receipt date of the corrected request.

This provision does not bother me in abstract, but I am concerned of it’s interplay with the exceptions to new 35 USC § 257(c):

(c) EFFECT.—
(1) IN GENERAL.—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. The making of a request under subsection (a), or the absence thereof, shall not be relevant to enforceability of the patent under section 282.
(2) EXCEPTIONS.—
(A) PRIOR ALLEGATIONS.—Paragraph (1) shall not apply to 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 under subsection (a) to consider, reconsider, or correct information forming the basis for the allegation.
(B) PATENT ENFORCEMENT ACTIONS.—In an action brought under section 337(a) of the Tariff Act of 1930 (19 U.S.C. 1337(a)), or section 281 of this title, paragraph (1) shall not apply to any defense raised in the action that is based upon information that was considered, reconsidered, or corrected pursuant to a supplemental examination request under subsection (a), unless the supplemental examination, and any reexamination ordered pursuant to the request, are concluded before the date on which the action is brought.

A Worst-Case Scenario

The “worst-case scenario” that comes to mind could arise like this:

  • A patent holder files a Request for Supplemental Examination.
  • The USPTO notes a deficiency in the Request and it is not granted a filing date.
  • A competitor, potential infringer, or other third party sees the Request and/or Notice of Deficiency on the USPTO’s PAIR website and files a civil action or issues a notice letter raising inequitable conduct issues based on the items of information cited in the Request.
  • The patent holder timely files a corrected Request.
  • The patent holder is not able to invoke the protections of 35 USC § 257(c) because the civil action or notice letter was filed/issued “before” the Request, based on the filing date accorded by the USPTO.

It’s an unlikely scenario I know, but it’s the outlier cases that are the most interesting!

Possible Solutions

There are several different ways the proposed rules could be tweaked to minimize the risks of this scenario.

  • The USPTO could accord a filing date to an incomplete Request.
    Paragraph (a) of new § 257 requires the USPTO to issues its decision “[w]ithin 3 months after the date a request for supplemental examination meeting the requirements of this section is received.” The USPTO could accord a Request its original filing date without having to start its three month clock until after a complete Request is received.
    This still might leave the availability of 35 USC § 257(c) open to challenge, however, if the language “before the date of a supplemental examination request under subsection (a)” embodies a requirement that the patent holder have filed “a request for supplemental examination meeting the requirements of this section.”
  • The Request could be filed under seal and maintained in confidence until it is accorded a filing date.
    The USPTO’s proposed rules for Preissuance Submissions provide for review of documents before they are made publically available. The USPTO could implement similar procedures for Requests for Supplemental Examination.
  • The Request could be filed under seal and maintained in confidence until the USPTO issues its decision on the Request.
    Maintaining the Request in confidence until the USPTO completes its review would provide patent holders with additional protection from third party use of information included in the Request.
  • The Request could be filed under seal and maintained in confidence unless the USPTO issues a decision granting the Request.
    Maintaining the Request in confidence unless the USPTO issues a decision granting the Request would provide patent holders with even more protection, but begs the question whether patent holders are entitled to such a “risk free” pursuit of Supplemental Examination or whether the public is entitled to know whenever a patent holder pursues Supplemental Examination, and on what basis.

The High Price Of Information Laundering?

The new Supplemental Examination provisions have been described as a mechanism by which patent holders can “launder” information that might otherwise render their patents unenforceable. Perhaps the price of being able to launder information to avoid inequitable conduct charges is having to air your dirty laundry in public.