Section 12 of the America Invents Act, which was signed into law on September 16, 2011, gives patent owners the option to request supplemental examination of a patent to “consider, reconsider, or correct information believed to be relevant to the patent.” Section 12 is codified in the U.S. Code at 35 U.S.C. § 257 and essentially gives patent owners an additional avenue to satisfy their duty of disclosure under 37 C.F.R. § 1.56 after a patent has issued. Further, some patent owners may wish to use supplemental examination to preempt a potential reexamination proceeding that may be initiated by an accused infringer.

Duty Of Disclosure After Issuance of a Patent

Under 37 C.F.R. § 1.56, “[e]ach individual associated with the filing and prosecution of a patent application” has a duty to disclose to the PTO “all information known to that individual to be material to patentability.” This duty of disclosure exists until the patent issues. Occasionally, however, a patentee may come across potentially material prior art after the patent issues, and a question may arise regarding when “[e]ach individual associated with the filing and prosecution” of the patent was aware of it. If someone involved with the filing and prosecution of the application was aware of this prior art before the patent issued, the patent could potentially be rendered unenforceable due to inequitable conduct.

Prior to the enactment of the America Invents Act, a patentee in such a position who sought to remove any doubt that his duty of disclosure was satisfied could try to do so by putting the patent back into examination by filing a reissue application or by filing a request for reexamination and submitting an information disclosure statement (IDS) citing the prior art. However, M.P.E.P. § 1414 requires a patent owner seeking reissue of a patent to declare an “error” upon which reissue is based, which is not appropriate for a patent owner who is simply requesting to cite additional prior art without seeking to make any changes to the application itself. Likewise, a patent owner may be understandably reluctant to request a fullblown reexamination of his own patent just to have a piece of prior art formally considered by the PTO.  

A similar situation can arise when a patent is already under reexamination and the patent owner comes across potentially relevant prior art after the Patent Office has issued a Notice of Intent to Issue a Reexamination Certificate (NIIRC) but before the certificate actually issues and the reexamination has formally ended. The patent owner cannot submit an IDS after the NIIRC has issued. The patent owner has the option of filing a petition for the art to be considered, but these petitions are not guaranteed to be granted.  

The new supplemental examination proceeding enacted by the America Invents Act gives patent owners the right to submit prior art to the PTO without having to request reissue of the patent or put the patent into reexamination.

Supplemental Examination Proceedings

Supplemental examination proceedings become available to patent owners one year after the enactment date of the America Invents Act. Once the provisions governing supplemental examination go into effect, the America Invents Act requires the Director of the PTO to conduct a supplemental examination of a patent within three months of receiving a request for supplemental examination. The act gives the Director discretion to issue “regulations governing the form, content, and other requirements of requests for supplemental examination” and to establish procedures “for reviewing information submitted in such requests.”

After the supplemental examination proceeding has concluded, the Director is required by the act to issue a certificate indicating whether the information presented in the request raises a substantial new question of patentability (SNQ). If the certificate indicates that an SNQ is raised by at least one of the items cited in the request, the Director will order a reexamination of the patent, and the patent owner loses the right to file a statement under 35 U.S.C. § 304.  

It should be noted that the language of the America Invents Act limits this proceeding to patent owners, so supplemental examination is not an avenue available to a third party requester seeking to invalidate a patent before the PTO.  

Effects of Supplemental Examination on a Potential Charge of Inequitable Conduct

If the Director issues a certificate indicating that the information presented in the request for supplemental examination does not raise an SNQ, the patent cannot be held unenforceable on the basis of conduct relating to information that was cited during supplemental examination, even if this information was not considered during any prior examination of the patent. Thus, according to the language of America Invents Act, it appears that even if an “individual associated with the filing and prosecution” of the patent intentionally failed to disclose prior art (i.e., such a failure to disclose wasn’t simply an oversight), this breach of the duty of disclosure cannot be raised as a ground for unenforceability of the patent as long as the patent owner cites the prior art in a request for supplemental examination. Thus, it appears that supplemental examination can be used to “cure” not only simple oversights by the patent owner but actual intentional failures to disclose prior art by parties subject to the duty of disclosure.

However, the act states that if the Director becomes aware “that a material fraud on the Office may have been committed in connection with the patent that is subject to supplemental examination,” the Director can confidentially refer the matter to the Attorney General, who will not disclose the information to the public unless the United States charges a person with a criminal offense in connection with the referral. Thus, patent owners seeking to cure, via supplemental examination, an intentional breach of the duty of disclosure by an individual(s) involved with patent prosecution risk potential criminal charges being raised against the individual(s) who failed to disclose the information during prosecution.

The act specifies that supplemental examination cannot be used to cure: (1) prior allegations of inequitable conduct (e.g., allegations “pled with particularity in a civil action”) before the supplemental examination request is filed; and (2) defenses to a patent enforcement action that are raised before the supplemental examination and any associated reexamination are concluded.

Thus, if a patent owner seeking to charge an accused infringer with patent infringement becomes aware of unsubmitted prior art that the accused infringer could use as a basis for rendering the patent unenforceable under inequitable conduct, the patent owner may wish to file a request for supplemental examination (and wait for the proceeding(s) to conclude) before initiating a patent enforcement action. Supplemental examination provides patent owners an avenue to address potential grounds of patent unenforceability before an accused infringer raises these grounds of unenforceability at trial but cannot be used to cure inequitable conduct once inequitable conduct is formally raised by the accused infringer.

The America Invents Act further states that the “making of” a supplemental examination request or the “absence thereof” shall not be relevant to the enforceability of a patent. Thus, accused infringers cannot accuse a patent owner of inequitable conduct for failure to file a request for supplemental examination.

Reexamination Orders Based on a Supplemental Examination Request

A patent owner seeking supplemental examination of a patent to cite prior art risks putting the patent into reexamination. Reexaminations are very often ordered based on SNQs raised in a request for reexamination by a third party. However, the PTO rarely introduces claim rejections based on art cited by the patent owner in an IDS submitted during reexamination. On the one hand, this supplemental examination proceeding involves a “request,” which the PTO may be tempted to “rubber stamp” for reexamination. On the other hand, supplemental examination is essentially an avenue for a patent owner to submit an IDS after issuance of a patent, and the PTO understands that much of the art submitted in an IDS is submitted out of an abundance of caution and not because the patent owner believes the art actually renders the claims of the patent anticipated or obvious. Thus, it remains to be seen how often the PTO will order reexamination of patents under supplemental examination in practice.

Strategies and Potential Impact of Supplemental Examination

Supplemental examination can also be used by a patent owner to address potential grounds of invalidity based on the prior art cited in the request for supplemental examination before these grounds of invalidity can be raised by an accused infringer. For example, if an accused infringer informs a patent owner of potentially invalidating prior art, the patent owner may file a request for supplemental examination to have the PTO consider this prior art (within three months of the filing of the request) before the accused infringer can attempt to use it -- either in litigation or in a proceeding before the PTO.

A tactic growing in popularity is the use of the so-called “pocket reexamination.” To use this tactic, an accused infringer drafts a reexamination request but does not file it at the PTO. Rather, the accused infringer uses this unfiled reexamination request as leverage in settlement negotiations. A patent owner can file a supplemental examination to preempt the accused infringer’s reexamination request (or to preempt a request for another post-grant review proceeding). This option may be especially attractive if negotiations break down, and the patent owner expects the accused infringer to file a request for reexamination (or other post-grant review proceeding) in the near future. A patent owner can reasonably expect a higher probability of a favorable outcome from a proceeding initiated by the patent owner than one initiated by a reexamination request filed by an accused infringer.  

Of course, the accused infringer can still file the reexamination request once the supplemental examination has concluded. If the references raise a substantial new questions of patentability (ex-parte reexamination) when viewed in a “new light,” the PTO can order the reexamination. However, the PTO would probably be less likely to order the reexamination once the art has already been considered, and the earlier supplemental examination proceeding(s) could give the patent owner an extra “leg up” in the reexamination proceedings initiated by the accused infringer if the patent owner prevails in the supplemental examination proceeding(s).  

Moreover, supplemental examination proceedings may give the patent owner the right to file arguments with the request explaining why the cited art does not render the patent anticipated or obvious. These arguments could be beneficial in a number of ways: (1) they could give the PTO a good reason to conclude the supplemental examination proceeding without ordering a reexamination; (2) thorough arguments against the prior art could be used to preempt any possible argument by the accused infringer that the same art can support a “new light” argument in a reexamination; and (3) they could give the patent owner an extra “bite at the apple” to argue that the claims should be found patentable over the cited art without amendment. Because a patent owner has a limited number of chances to present arguments before the PTO in reexaminations and other post-grant review proceedings, this extra “bite at the apple” could prove to be a potentially powerful advantage for a patent owner.  

Because of the potential advantages of supplemental examination for patent owners discussed above, some patent owners may want to consider filing a request for supplemental examination if they are aware of prior art that an accused infringer may cite in a litigation or PTO proceeding. Likewise, accused infringers may want to consider the possibility that a patent owner may file a request for supplemental examination if the patent owner becomes aware of the accused infringer’s “best” prior art. Thus, this proceeding may cause accused infringers to be more reluctant to disclose their “best” prior art to the patent owner during settlement negotiations.

We will be better able to gauge the full impact of supplemental examination proceedings after the Director of the PTO has issued regulations governing these proceedings. In the meantime, patent owners should be aware of the new options available to them as a result of the supplemental examination provisions of the America Invents Act.