PTO Announces Proposed Rules for Supplemental Examination

Patent Law Blog (Patently-O):
By Jason Rantanen
Yesterday, the United States Patent and Trademark Office announced the proposed rules for supplemental examinations and proposed revisions to ex parte reexamination fees.  These proposals detail the supplemental examination process, including the information that requesters must submit, as well as the substantial fees that will be associated with post-grant review in the future.  The PTO will accept comments on the proposed rules until March 26, 2012. 
The relevant Federal Register section is here: http://www.uspto.gov/aia_implementation/77fr3666.pdf.
Major points include:

  • The request must be filed by the patent owner.  Only the patent owner will be permitted to participate in the supplemental examination or any reexamination ordered as a result. (§ 1.601)
  • Each supplemental examination request may identify up to ten items of information to be considered, reconsidered, or corrected.  Multiple supplemental examination requests may be filed at one time. (§ 1.605)
  • The cost for filing a supplemental examination request is steep: $5,180 for the initial request plus $16,120 for the ex parte re-examination fee. (§ 1.20(k))  Both must be paid at the time of initial request, and the $16,120 will be refunded if no re-examination is ordered in the supplemental examination certificate.  (§ 1.26(c))  In addition, there are substantial fees associated with documents over 20 pages, as well as with petitions filed in connection with the proceeding. 
  • The supplemental examination request must include ((§ 1.610(b)):
    1. a cover sheet;
    2. an identification of the patent for which supplemental examination is requested;
    3. a list of each item of information and its publication date, if applicable;
    4. a list identifying any other prior or concurrent post patent Office proceedings involving the patent to be examined;
    5. an identification of each aspect of the patent to be examined;
    6. an identification of each issue raised by each item of information;
    7. a separate, detailed explanation

    • …

Published:
27.01.12
Category:
IP News