PTO Announces Proposed Rules for Supplemental Examination

Patent, , ,

By Jason Rantanen

Yesterday, the United States Patent and Trademark Office announced the proposed rules for supplemental examinations and proposed revisions to ex parte reexamination fees.  These proposals detail the supplemental examination process, including the information that requesters must submit, as well as the substantial fees that will be associated with post-grant review in the future.  The PTO will accept comments on the proposed rules until March 26, 2012. 

The relevant Federal Register section is here: /media/docs/2012/01/77fr3666.pdf.

Major points include:

  • The request must be filed by the patent owner.  Only the patent owner will be permitted to participate in the supplemental examination or any reexamination ordered as a result. (§ 1.601)
  • Each supplemental examination request may identify up to ten items of information to be considered, reconsidered, or corrected.  Multiple supplemental examination requests may be filed at one time. (§ 1.605)
  • The cost for filing a supplemental examination request is steep: $5,180 for the initial request plus $16,120 for the ex parte re-examination fee. (§ 1.20(k))  Both must be paid at the time of initial request, and the $16,120 will be refunded if no re-examination is ordered in the supplemental examination certificate.  (§ 1.26(c))  In addition, there are substantial fees associated with documents over 20 pages, as well as with petitions filed in connection with the proceeding. 
  • The supplemental examination request must include ((§ 1.610(b)):
    1. a cover sheet;
    2. an identification of the patent for which supplemental examination is requested;
    3. a list of each item of information and its publication date, if applicable;
    4. a list identifying any other prior or concurrent post patent Office proceedings involving the patent to be examined;
    5. an identification of each aspect of the patent to be examined;
    6. an identification of each issue raised by each item of information;
    7. a separate, detailed explanation for each identified issue;
    8. an explanation of how each item of information is relevant to each aspect of the patent to be examined and of how each item of information raises each identified informaiton;
    9. a copy of each item of information; and
    10.  summary of the relevant portions of any submitted document, other than the request, that is over 50 pages in length.

The full requirement for item 8 is:

(8) A separate, detailed explanation for each identified issue, discussing how each item of information is relevant to each aspect of the patent identified for examination, and how each item of information raises each issue identified for examination, including:

(i) Where an identified issue involves the application of 35 U.S.C. 101 (other than double patenting) or 35 U.S.C. 112, an explanation discussing the support in the specification for each limitation of each claim identified for examination with respect to this issue; and

(ii) Where an identified issue involves the application of 35 U.S.C. 102, 35 U.S.C. 103, or double patenting, an explanation of how each limitation of each claim identified for examination with respect to this issue is met, or is not met, by each item of information. The detailed explanation may also include an explanation of how the claims distinguish over the items of information.

(Proposed § 1.610(b)(8)).  Note that if the PTO concludes that an examination request is not in compliance with the content requirements, it will not be entitled to the original filing date.  Rather, the filing date will be the date the corrected request is received.  (§ 1.610(d),(e))  This appears to mean that the PTO's three-month deadline for issuing a supplemental examination certificate will not begin until the corrected request is received and the safe-harbor provisions of 35 U.S.C. 257 may not be triggered even if a request is filed should the PTO conclude that requirement 8, for example, is not met.

The proposed cost to file an ex parte reexamination will increase from the current $2,520 to $17,750.    Given both this increase and the substantial cost to file a supplemental examination request, I'm skeptical of the PTO's prediction that it will receive about 800 ex parte examination requests and 1,430 supplemental examination requests annually.  The latter number, especially, seems to be based on some highly dubious assumptions.