Supplemental Examination

Supplemental examination allows a patent owner (only) to ask the USPTO to consider, reconsider, or correct any information the patent owner deems relevant to the patent. It was introduced by the America Invents Act (AIA), and became available on September 16, 2012.

Final Rules for Supplemental Examination

When receiving a request for supplemental examination, the USPTO evaluates whether the request sets forth a substantial and new question of patentability (SNQ), and if so, the USPTO orders ex parte reexamination of the patent.

This proceeding is primarily intended to give the patent owner a vehicle to cure issues that might otherwise make a patent subject to inequitable conduct allegations. As such, a patent that has been subject to supplemental examination will not generally be held unenforceable on the basis of any information that was considered during the supplemental examination. This is true regardless of whether or not an ex parte reexamination is instituted by the USPTO in response to a supplemental examination request. Specifically, if an ex parte reexamination is instituted and the patent emerges, confirmation of the resulting claims generally cleanses any potential inequitable conduct stemming from the failure to cite art during the original prosecution. Conversely, if issues raised by the supplemental examination request are not deemed by the USPTO to raise a substantial new question of patentability, materiality to support a finding of inequitable conduct likely will be difficult to establish in a litigation proceeding.