Imagine a scenario in which your company has obtained a valuable US patent, but it is later discovered that a material prior art reference was inadvertently not submitted to the United States Patent and Trademark Office (USPTO) during prosecution for consideration by the examiner. What should you do?

In a troubling scenario such as this, two possible options that should be considered for having the prior art reference considered by the examiner are (i) the filing of a reissue application and (ii) the filing of a request for supplemental examination.

Reissue: One option for having the prior art reference considered by the examiner is to file a reissue application along with an Information Disclosure Statement which cites the prior art reference that you want to have considered.

In order to file a reissue application, it is necessary to identify at least one “error” in the patent. While such an “error” could be an independent claim in the patent that is either too narrow or too broad, the “error” may also be directed solely to the failure to previously present a narrower dependent claim in the patent. Thus, a reissue application can be filed in which the only change made to the claims is the addition of a new dependent claim.

Supplemental Examination: Another option for having the prior art reference considered by the examiner is to file a request for supplemental examination, which is a relatively new procedure at the USPTO that was introduced by the America Invents Act (AIA). Supplemental examination enables a patent owner to request that the USPTO consider information (e.g., a prior art reference) believed to be relevant to the patent.

When a request for supplemental examination is filed, the information is analyzed by the USPTO in order to determine whether the information raises a substantial new question of patentability (SNQP). If the USPTO determines that a SNQP has been raised, then the USPTO will order ex parte reexamination of the patent, which is conducted in a similar manner to a regular ex parte reexamination proceeding. On the other hand, if the USPTO determines that a SNQP has not been raised, then the supplemental examination procedure ends.

Supplemental Examination v. Reissue: A benefit of supplemental examination is that, under most circumstances, a patent cannot be held unenforceable in a later court proceeding based upon information that was submitted in the request for supplemental examination. Therefore, supplemental examination can be used to cure inequitable conduct.

Accordingly, in a situation in which a patent owner is concerned with the possibility of an allegation that inequitable conduct occurred during prosecution (e.g., someone with a duty of disclosure to the USPTO knew of the prior art reference, knew that it was material, and made a deliberate decision to withhold the reference from the USPTO), then the filing of a request for supplemental examination may be the preferred course of action for having the prior art reference considered by the USPTO.

However, in a situation in which the failure to submit the prior art reference during prosecution was merely an accidental oversight, and there was no intent to deceive the USPTO, then the filing of a reissue application offers several benefits over the filing of a request for supplemental examination.

One benefit of filing a reissue application over a request for supplemental examination is that a reissue application provides the patent owner with much more flexibility during examination. For example, if a final rejection is received in a reissue application, then a Request for Continued Examination (RCE) can be filed in order to continue prosecution. In contrast, during the examination stage of supplemental examination, the applicant has only one opportunity to amend the claims, and if a final rejection is received, an RCE cannot be filed.

Another benefit of filing a reissue application is that the USPTO filing fees are much lower for a reissue application than for a request for supplemental examination. Currently, the USPTO fee for filing a reissue application is only US$3,040, whereas the USPTO fee for filing a request for supplemental examination is US$16,500.

As should be evident from the discussion above, for any patent owner that is attempting to decide between the filing of a reissue application and the filing of a request for supplemental examination, the ultimate decision is often one that is very fact specific. As such, we recommend that a patent owner faced with such a decision contact an experienced US patent attorney for further guidance.

Wenderoth, Lind & Ponack, L.L.P.

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