What is a Supplemental Examination and Why Would I Want One? Episode 81

Reviewing Prior Invalidation Procedures

In the past four episodes, I discussed four different procedures for invalidating someone else’s patent at the Patent Office: ex parte reexaminations, inter partes reviews, post-grant reviews, and covered business method patent reviews.

This episode focuses on a different kind of reexamination. However, instead of filing a petition to invalidate someone else’s patent, you are requesting reexamination of your own patent.

What is a Supplemental Examination?

A supplemental examination is somewhat similar to a reissue patent application, which I covered in a previous episode. A reissue patent is used when you realize that you made a mistake in your original patent—perhaps your claims were too broad or too narrow—and you want the Patent Office to reissue your patent to correct those mistakes.

With a supplemental examination, you are asking the Patent Office to reexamine your patent. You might be wondering why you would voluntarily ask the Patent Office to take another look at your patent, potentially questioning its validity.

Why Would You Request a Supplemental Examination?

The primary reason for requesting a supplemental examination is to avoid a finding of inequitable conduct. Inequitable conduct occurs when the Patent Office determines that you engaged in fraudulent or deceptive behavior to obtain your patent. If proven, this can render your patent unenforceable.

When applying for a patent, you are required to disclose any known information that may be material to the patentability of your invention. If you are aware of prior art or similar inventions, you must disclose them in an Information Disclosure Statement (IDS)—which I covered in a previous episode.

You are required to submit all known relevant references until your patent is issued. After issuance, you no longer have a duty to disclose new information to the Patent Office. However, if you later discover a reference that should have been disclosed—and you intentionally failed to disclose it—this could be considered inequitable conduct, making your patent unenforceable.

Avoiding Accusations of Inequitable Conduct

If you come across a reference that may have influenced the examiner’s decision to grant your patent, you might want to preemptively disclose it through a supplemental examination. This is especially true if:

• You knew about a prior reference but didn’t think it was important at the time.

• You believe an opposing party may challenge your patent based on non-disclosure.

• You want to ensure that the Patent Office formally considers the reference, preventing others from claiming you hid it.

A supplemental examination allows you to say, “I know I was granted a patent, but I think the Patent Office should be aware of this reference and reconsider its decision.” This transparency can prevent future legal challenges based on inequitable conduct.

How Does a Supplemental Examination Differ from a Reissue Patent?

A reissue patent allows you to modify your claims to fix mistakes in your original application. However, a reissue alone does not necessarily cure inequitable conduct.

A supplemental examination does not require any claim changes. Instead, it simply asks the Patent Office to reconsider the patent in light of new information.

If you are concerned about inequitable conduct, you should discuss with your patent attorney whether a supplemental examination or a reissue application is the better option.

How Does a Supplemental Examination Work?

To request a supplemental examination, you file a request asking the Patent Office to consider, reconsider, or correct information relevant to your patent.

Within three months of your request, the Patent Office must issue a certificate indicating whether the information raises a substantial new question of patentability.

If the answer is no, then your patent remains valid, and you now have formal confirmation that the new information does not affect the enforceability of your patent. Even if you originally failed to disclose the information, it is now moot because the Patent Office has considered it and determined that it does not change the patentability of your invention.

If the answer is yes, meaning that the new information does raise a substantial new question of patentability, then the process moves to an ex parte reexamination—which I covered in a previous episode. The Patent Office will then issue a rejection based on the new information, and you will have the opportunity to argue—just like in any other office action—why your patent should still be valid.

Advantages of Supplemental Examination

One major advantage of supplemental examination is that you do not have to admit any defects in your patent. You can simply say that your patent is fine as it is, but you want the Patent Office to formally consider additional references.

Another advantage is that a supplemental examination helps preempt claims of inequitable conduct. If you voluntarily disclose references after your patent is issued, it weakens any argument that you intentionally withheld information.

Additionally, if your patent is reaffirmed after a supplemental examination, it can discourage competitors from attempting to invalidate your patent. If the Patent Office already reviewed your patent twice and still allowed it, an infringer may think twice before investing time and money to challenge it.

A final advantage is that supplemental examination provides a relatively fast decision, typically within three months.

Disadvantages of Supplemental Examination

One downside is cost. A reissue application typically costs only a few hundred dollars in Patent Office fees. In contrast, a supplemental examination costs:

• $2,200 for a small company (2019).

• An additional ~$6,000 if a reexamination is ordered (2019).

• Even higher fees for large entities.

Micro-entities may pay slightly less, but the process is still expensive. You should always check the latest fee schedule on the Patent Office website.

Rule of Thumb: Supplemental Examination vs. Reissue Patent

As a general guideline:

• Use supplemental examination if you want to ensure your patent is enforceable.

• Use reissue if you need to correct known issues with your claims.

  
  

However, there are many strategic considerations beyond just cost. You should consult a patent attorney to determine the best approach for your specific situation.

Conclusion

That’s the basics of supplemental examination. If you are concerned about inequitable conduct or want the Patent Office to confirm the validity of your patent in light of new references, this procedure may be the right option for you.

I’m Adam Diament, and until next time, keep on inventing!