USPTO Proposes New Patent Re-Examination Rules

by Glen Shapiro, LawAndTax-News.com, New York

01 February 2012

The United States Patent and Trademark Office (USPTO) is proposing rules of practice in patent cases to implement the supplemental examination provisions of the Leahy-Smith America Invents Act (AIA) of 2011.

The USPTO is also proposing to adjust the fee for filing a request for ex parte re-examination and to set a fee for petitions filed in ex parte and inter partes re-examination proceedings to more accurately reflect the cost of these processes.

Section 12 of the AIA provides that a supplemental examination may be requested by the patent owner to consider, reconsider or correct information believed to be relevant to the patent, in accordance with requirements established by the USPTO. The information that may be presented in a request for supplemental examination is not limited to patents and printed publications, and may include, for example, issues of patentability.

“The supplemental examination provisions will permit a patent owner to request supplemental examination of a patent by the USPTO,” said Under Secretary of Commerce for Intellectual Property and Director of the USPTO, David Kappos. "These provisions could assist the patent owner in addressing certain challenges to the enforceability of the patent during litigation.”

Publication of the proposed rules for supplemental examination and re-examination fees in the Federal Register on January 25, 2012, has begun a sixty-day public comment period during which time the public may provide written input to the agency about the proposals.

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