By Jason Rantanen
As Dennis writes below, tomorrow the USPTO will publish five final rules packages for implementing the America Invents Act. This post focuses on the Supplemental Examination Rules, available here. In large part, the Final Supplemental Examination Rules mirror the proposed rules, which I discussed in a previous post.
The biggest change from the proposed rules relates to the elimination of some of the specific content requirements. Originally, the rules articulated several very specific categories of information that the requestor was required to provide. The final rules are more streamlined, paralleling the content requirements for submitting an ex parte reexamination. They do, however, retain the requirement of a "A separate, detailed explanation of the relevance and manner of applying each item of information to each claim of the patent for which supplemental examination is requested." 37 C.F.R. § 1.610. (This requirement parallels the ex parte reexamination requirement of 37 C.F.R. § 1.510(b)(2).)
The PTO considered other potential changes, but in each case decided either to retain the original rule or concluded the change was mooted by its change to the content requirements. It slightly bumped up the limit on the number of items of information that could be submitted from 10 to 12.
The cost for filing a supplemental examination request remains steep: $5,140 for the initial request plus $16,120 for the ex parte re-examination fee. Both must be paid at the time of initial request, and the $16,120 will be refunded if no re-examination is ordered. The rules also finalize the substantial increase in the fee for filing a request for ex parte reexamination: $17,750. Initially the small- and micro-entity reductions will not apply to these fees, although the PTO's proposed fee structure under Section 10 of the AIA do allow for such reductions. (USPTO fee website).
Given these costs, together with the realities of how patent litigation actually works and how inequitable conduct claims are generally developed, I remain highly skeptical of the PTO's projection that it will receive about 1,430 requests for supplemental examination annually. Indeed, I suspect this number will actually be much, much smaller. Most information that might be submitted in a supplemental disclosure request will be discovered too late for supplemental examination to matter. For similar reasons, I am dubious of the PTO's prediction that supplemental examination will reduce the number of district court patent infringement cases in which inequitable conduct is plead as a defense.
