Is the New Supplemental Examination a Complete Replacement for Owner Initiated Ex Parte Reexamination?

By Dennis Crouch

This essay focuses on supplemental examination but, perhaps surprisingly, the essay does not consider inequitable conduct inoculation. The ability of supplemental examination to cure inequitable conduct has received a significant amount of attention. However, supplemental examination is likely to have a broader value for patent owners. In particular, supplemental examination offers an expanded and beneficial avenue for patent owners to subtly enter ex parte reexamination. In its official estimates, the USPTO predicts that patent owners will entirely stop filing ex parte reexaminations. Rather, in the USPTO’s estimation, 100% of the cases that would have been filed as owner-filed reexaminations will now be filed as supplemental examinations. The USPTO writes:

[T]he Office estimates that it receives approximately 110 requests for ex parte reexamination filed by patent owners annually. In view of the benefits to patent owners afforded by supplemental examination under 35 U.S.C. 257(c), the Office is estimating that all 110 requests for ex parte reexamination that would have been filed annually by patent owners will instead be filed as requests for supplemental examination. However, the Office is also estimating that more than 110 requests for supplemental examination will be filed annually due to a combination of: (1) the benefits to patent owners afforded by supplemental examination; (2) the fact that the “information” that may form the basis of a request for supplemental examination is not limited to patents and printed publications; and (3) the fact that the issues that may be raised during supplemental examination may include issues in addition to those permitted to be raised in ex parte reexamination (e.g., issues under 35 U.S.C. 112).

See Changes To Implement the Supplemental Examination Provisions of the Leahy-Smith America Invents Act and To Revise Reexamination Fees; Final Rule, 77 Fed. Reg. 48827 (2012). Although not suggested by the USPTO, there is some thought that the supplemental reexamination will also take some demand away from the current reissue system.

As a starting point on this topic, it is useful to remember that ex parte reexamination has been left virtually unchanged by the America Invents Act (AIA). The greatest exception is not a process change but rather a seven-fold increase in the price-tag for filing a request for ex parte. This takes the price from $2,500 to almost $18k. Ex parte reexaminations will still be conducted by examiners in the central reexamination unit (CRU) and the Board (now the PTAB) will handle first level appeals. The AIA “clarifies” the law that adverse decisions from the PTAB may be appealed only to the Court of Appeals for the Federal Circuit and that the patentee has now right to file a civil action in district court to overturn an adverse decision during the reexamination.

The reissue process was also left untouched except that the AIA removes the “without any deceptive intention” language from 35 U.S.C. § 251. The reissue statute now reads as follows:

Whenever any patent is, through error without any deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.

However, unlike reexaminations, reissue fees associated with reissue applications have been kept low – remaining mostly equivalent to fees associated with original prosecution. For patents in litigation (or likely to be litigated) the fee differential will be a relatively minor factor in the ultimate choice. However, that fee differential could be quite important for more average patents – those part of a large portfolio but that would become more valuable if given a secondary review. Since this post is getting quite long, I’m going to save the comparison between supplemental examination and reissues for a different post.

Comparing Supplemental Examination with Ex Parte Reexamination: The process of supplemental examination is quite similar to that of ex parte reexamination. You can think of ex parte reexamination as having two main parts: (1) request stage; and (2) examination stage. At the request stage, the USPTO must decide whether the reexamination request raises patentability issues that are significant enough to warrant full reexamination. If the issues presented are not significant enough then the reexamination request is denied and the case is over. However, if the issues are deemed significant then the patent is fully reexamined. That reexamination can result in claims being cancelled, amended, or confirmed as patentable. In many ways, supplemental examination can be seen as simply changing name of the request stage. For supplemental examination, the request stage is the supplemental examination. In that stage, the USPTO is simply conducting a cursory review to determine whether the issues presented in the supplemental examination request raise a substantial new question of patentability. If not, then the supplemental examination is concluded (with a certificate). If substantial questions are raised then a full reexamination is ordered and conducted. As in the request stage of ex parte reexaminations, supplemental examination is completed very quickly (3-months) and without any additional outside input beyond the request itself.

Supplemental examination offers four primary benefits for a patent owner as compared with directly filing a request for ex parte reexamination:

  • When a patent owner files a reexamination request on its own patent, it has to first convince the USPTO that its patent has a problem. With supplemental examination, the patentee need not make any such statement. Rather, the supplemental examination request simply points to material that should be considered with minor explanation and the PTO makes the judgment as to whether the submitted material raises any substantial new questions of patentability. This helps patentees avoid potential prosecution history issues that often trap patentees in the reexamination process. This may also mean that the supplemental examination document request is less expensive to prepare.
  • In ordinary circumstances, Ex parte reexaminations are instituted based upon printed publications or patents. Supplemental examination can be used to raise all sorts of issues based upon “any supporting document” or legal issue (such as patentable subject matter).
  • If the PTO concludes that no substantial question of patentability is raised by the request then, with supplemental examination, it issues a “supplemental examination certificate” that the patentee can take and show to a district court judge and jury. While the decision in supplemental examination is effectively the same as a denial of a request for ex parte reexamination, the cognitive impact is different. In the ex parte reexamination scenario, the PTO merely denied a request to review the case. On the other hand, in the supplemental examination scenario, the PTO actually conducted a supplemental examination; determined that the submitted issues do not raise a substantial question of patentability; and issued an official certificate saying as much.
  • As discussed elsewhere, the supplemental examination also provides the inoculation against inequitable conduct charges.

There are some downsides to supplemental examination, but in most cases it will be a better option when compared with an owner-requested ex parte reexamination.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

13 thoughts on “Is the New Supplemental Examination a Complete Replacement for Owner Initiated Ex Parte Reexamination?

  1. It’s Private Pair and not Public Pair. The rumor I’ve heard is that attorney’s personal information was exposed to data mining. How that CIO is still employed by PTO is a mystery. This isn’t his first screw up. What will it take for Kappos to cut ties with him already and put someone more competent in there. Has anyone else out there heard about this? I’ve only heard things third hand from friends that work over there.

  2. Ya’ll should be writing an article about the major system problem with Public Pair that has left attorney’s PII information accessible. My friend tells me that this is just another example of the CIOs, John Owens, incompetence. I hear he rounded up all employees for an emergency meeting yesterday and asked his employees to volunteer their time to do manual checks of the system. When will Kappos finally get rid of him? His employees have all lost confidence in his ability to lead a long time ago!

  3. Of course, if there IS a possible issue with inequitable conduct, then you have to go the Supplemental Exam route.

  4. In the absence of an inequitable conduct issue, I see it break down as follows. If you go via supplemental examination, you apparently have to pay 21 grand up front, but get 16 grand back if the PTO don’t order a Reexam, and you may not have to argue at the same time that there is a substantial new issue of patentability and that the patent is still valid. OTOH, the PTO has confirmed that you can still apply directly for ExParte Reexam, if you are willing to argue the above quasi-contradiction as before, which will avoid the supplemental exam fee, but then you have to pay 17 grand and don’t get any of it back if the Reexam doesn’t go ahead, but I think a few will still do this, even if the PTO don’t think so. And yes, I am quite sure this is all correct. I asked the PTO representatives in person at their Roadshow in Alexandria.

  5. Ned,

    Thanks for your reply; I hadn’t seen the discussion you refer to, but am glad to hear the prevailing opinion (especially at PTO and Federal Circuit) is to avoid applying new law to “old” patents. It makes sense, and would result in denial of SNQ if that was the only basis for a reexam or supplemental exam request, if the PTO maintains that perspective—which is good!

  6. How can one properly raise a patentable subject matter issue with new information?

    New information about, e.g., an admission from the patentee that a particular claim would prevent a third party from, e.g., looking at data and thinking a “new thought” about the data.

  7. Brian, ugh. I think the Federal Circuit and the PTO both agree that change in law does not, repeat, not and cannot result in a substantial new ground of patentability. We have had extensive discussions on this point here on Patently-O, with A New Light being on the side that such cases as KSR should result in substantial new questions of patentability over even old art.

  8. Don’t forget to include the quote from Prometheus that states that the sections 102/103/112 cannot do the work of 101.

  9. Ned,

    One example that comes readily to mind of “new information” relevant to §101 would be a new Supreme Court §101 opinion that might tend to raise doubt about the validity of an existing patent. Submitting that opinion as a document with a supplemental reexamination request would seem to be a useful technique, particularly given the number of §101 issues seen by SCOTUS recently.

    Thoughts?

  10. In Belkin v. Kappos we learned that the PTO has jurisdiction to consider substantial new questions of patentability, and cannot consider new issues unless unless they are substantial new grounds under, for example Section 301. The reexamination cannot be conducted on ANY issue not raised by the request, I think, or provided by statutes like 301 that are limited to patents and printed publications.

    How can one properly raise a patentable subject matter issue with new information?

    112? Huh?

    What you said, Dennis, doesn’t just jump off the written page and dance.

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