Supplemental Examination
With implementation of the Leahy-Smith America Invents Act (AIA),1 supplemental examination can be filed by the patent owner, and covers any “information” (e.g., not limited to submitting prior art).2 Types of possible “info” may include: Office Action from copending or foreign application; incorrect arguments of a declaration; incorrect interpretation of prior art; public sale before critical date; litigation papers; small entity status wrongly claimed; not submitting all experimental results; etc.
Regarding procedures and upcoming rules on supplemental examination, as stated by the USPTO:
35 U.S.C. 257 provides for supplemental examination of an issued patent. A request for supplemental examination must be filed by the patent owner, and must request that the Office “consider, reconsider, or correct information believed to be relevant to the patent, in accordance with such requirements as the Director may establish”. The “information” that forms the basis of the request is not limited to patents and printed publications, and may include other issues, e.g., issues under 35 U.S.C.112. The standard for granting the request is whether one or more items of information raises a substantial new question of patentability (SNQ), which requires a showing that a reasonable examiner would consider the item of information important in determining the patentability of the claims. Within 3 months after the receipt of a request meeting Office requirements, the Office will conduct the supplemental examination and will conclude the examination by issuing a certificate indicating whether the information presented in the request raises an SNQ. If an SNQ is raised by one or more items of information in the request, reexamination will be ordered, and will be conducted according to ex parte reexamination procedures (except patent owner will not have the right to file a statement pursuant to 35 U.S.C. 304). This provision is effective September 16, 2012, and will apply to any patent issued before, on, or after the effective date (retrospective effect).
Additional information is forthcoming.
According to § 257(c), supplemental examination would prevent the patent from being held unenforceable (in a court proceeding) on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect, if submitted or corrected during Supplemental Examination.
1.
Now Public Law 112-29 (Sept. 16, 2011).
2. See § 12 of HR 1249.
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