Knobbe attorneys presented "Supplemental Examination Under the AIA" at a recent seminar held in Japan.

1. Supplemental Examination Under the AIA Irfan A. Lateef
October 19, 2012 Tokyo
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2. Request
• Patent owner may request supplemental examination of a patent to
consider, reconsider, or correct information believed to be
relevant to the patent
– If multiple owners, must be collective body of all owners
• Request may address any condition for patentability (e.g.,
patentable subject matter, anticipation, obviousness, double
patenting, definiteness)
• Information is not limited to patents and printed publications
• No third party involvement
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 2

3. Inequitable Conduct Immunization
• Information considered, reconsidered, or corrected
during supplemental examination cannot be the basis
for rendering a patent unenforceable
• There are Exceptions…
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 3

4. Inequitable Conduct Immunization: Exceptions
• Benefit of supplemental examination does not apply to:
– PRIOR ALLEGATIONS
• Allegations pled in a civil action prior to date of
supplemental examination request
• Notice (for abbreviated drug application) received by
patentee prior to date of supplemental examination request
– PATENT ENFORCEMENT
• Defenses in civil action or ITC proceeding, unless
supplemental examination and any resulting ex parte
reexamination is completed before the civil action is
brought
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 4

5. Contents of Request
• Identification of patent and each claim of patent for
which supplemental examination is requested
• List of items to be reviewed
– No more than 12 per supplemental examination request
• Detailed explanation and manner of applying items to
claims
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 5

6. Procedure
• Within 3 months of request
– PTO determines whether the items of information
raise a substantial new question of patentability
(SNQ)
• If no SNQ is raised
– Supplemental examination certificate will issue
• If an SNQ is raised by one or more items
– Ex parte reexamination is ordered
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 6

7. Costs – Proposed as of Sept. 10, 2012
• PTO Filing Fees
Large Small Micro
$18,000 $9,000 $4,500
• Refund if ex parte reexamination not
ordered (i.e., no SNQ raised)
Large Small Micro
$13,600 $6,800 $3,400
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 7

8. Practical Considerations
• Therasense decision likely decreased the importance of supplemental
examination
• Declaratory Judgment Actions (DJ)
– If aware of possible DJ against patent, consider filing before DJ is filed
• ANDA Litigation
– If patent will be listed in Orange Book, consider filing supplemental
examination as part of due diligence; or at a minimum, prior to
receiving notice
• Enforcement
– If planning to enforce the patent, consider filing supplemental
examination with sufficient time to complete any ex parte
reexamination before filing suit
© 2012 Knobbe, Martens, Olson & Bear, LLP all rights reserved. 8

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