Tag Archives: Supplemental Examination

USPTO Offers Guidance On Supplemental Examination

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 … Continue reading this entry

Join Me On September 18 For A Webinar On Supplemental Examination

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 … Continue reading this entry

USPTO Issues Final Rules For America Invents Act Provisions That Take Effect September 16, 2012

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 … Continue reading this entry

Today Is the Deadline for Commenting on the USPTO's Proposed Supplemental Examination Rules

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 … Continue reading this entry

The Rhyme & Reason Behind The USPTO's Proposed Patent Fees

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 … Continue reading this entry

More On Supplemental Examination: The USPTO's Cost and Volume Estimates

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 … Continue reading this entry

Supplemental Examination: Airing Your Dirty Laundry?

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

Proposed AIA Implementation Rules: Supplemental Examination

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 … Continue reading this entry