The United States Patent and Trademark Office (PTO) proposed new rules in 77 Fed. Reg. 3,666 for implementing the supplemental examination procedure authorized by the America Invents Act. Supplemental examination is a form of reexamination initiated by the patent owner after the patent issues. The new rule is set to take effect by September 16, 2012. A benefit of the supplemental examination procedure is that it can be used to minimize the potential of inequitable conduct by allowing the patentee to submit references that were not submitted during the original prosecution. A patent will not be held unenforceable on the basis of information that was considered, reconsidered or corrected during supplemental examination unless the claim of inequitable conduct was raised prior to the date of the request for supplemental examination. The PTO anticipates that supplemental examination proceedings will lead to a reduction in the number of district court patent infringement cases where inequitable conduct is pled as a defense. In addition, supplemental examination requests, unlike ex parte reexaminations, can include information other than patents and printed publications. The PTO is seeking comments from the public on the proposed rules by March 26, specifically comments on litigation cost savings and other benefits the public may expect to gain from implementation of supplemental exams.

The PTO originally stated that requesting a supplemental exam will cost $5,180, and any resulting ex parte patent reexam will cost $16,120, but has recently changed that to $7,000 and $20,000, respectively. And although post-grant reviews are designed to be a low-cost alternative to litigation, the PTO’s price plan is not inexpensive. Post grant review involving fewer than 20 claims will cost $35,800 and can increase to $125,300 for one with 60-71 claims, with $25,800 for every 10 claims after that. An inter partes review of a patent with fewer than 20 claims will cost $27,200 and can increase to $95,200 for one with 60-71 claims, with $27,200 for every 10 claims after that. In addition to setting fees for new procedures required by the America Invents Act, the PTO is increasing fees on most filings, including fees for filings, requests for continuing examinations, appeals, ex parte reexaminations, and maintenance fees. For example, the PTO plans to substantially raise the fee for filing a request for an ex parte re-exam from $2,520 to $17,750.