Archive for January, 2012

Supplemental Examination Decision Tree – Lots of Dead Branches?

Tuesday, January 31st, 2012

Well, I wish it were that simple, but I keep trying to conjure examples that would lead me to use supplemental examination to “purge inequitable conduct (IC)” that I discover after my patent issues, and which could provide the basis for a successful IC attack on the patent. (Even the Office doesn’t presume that charges of inequitable conduct will go away post-Therasense.)

Issues of hard-core fraud on the patent office (e.g., faked experimental data in declarations and the like) aside, it would seem that I would first need to become aware of deceptive/evil intent involved with submission or failure to submit an item of information (IOI). If there is not some level of deceptive intent (knowingly withholding an IOI or making an incomplete submission), there will be no finding of IC by the court, even if the IOI (e.g., the publication) is “but for” material.

Now the deciding gets more difficult. If the IOI is “but for” material, you are going to have to narrow the claims. So I see no need to do other than file a narrowing reissue application. Remember, there is no longer a requirement to state that the overly broad claims were obtained “without deceptive intent.” Likewise, if the IOI is “but for” material and there is no evidence of deceptive intent, narrowing reissue is certainly the way to go. An example might be a 102(b) reference that was discovered years after the patent issued.


PTO Proposes Supplemental Examination Rules – Extremely Expensive and Incredibly Complex

Thursday, January 26th, 2012

On January 25, 2012, the USPTO published proposed rules to implement the supplemental examination provisions of the America Invents Act (“AIA”). This procedure is intended to be utilized by patent owners to “clean up” patents of iffy validity before, say, asserting them in litigation or selling them. 77 Fed. Reg. 3666. This provision has been widely characterized as a way to purge inequitable conduct – or even an innocent failure to bring forth relevant information – that may have occurred during prosecution, by setting the record straight ex parte. If the petition for supplemental examination is accepted by the PTO as raising a substantial new question of patentability, the PTO will go on to order ex parte reexamination, which may, or may not result in the cancellation of claims. Alternatively, the PTO can refuse to order reexamination on the basis of the submitted information, and a certificate to that effect is attached to the patent. This sounds pretty straightforward but, or course, it is anything but.

To begin with, the fee for simply processing and treating a request for supplemental examination (“SA”) will be $5180. At the same time, the owner must pay a fee of $16,120 for an ex parte reexamination proceeding that may not occur. If reexamination is not ordered, the owner gets this fee refunded. There is no comment regarding any reduction for small or micro entities that I could find in my first read-through.


New Edition of EP/UK Guide to Patent Law Published

Wednesday, January 25th, 2012

The Chartered Institute of Patent Attorneys recently published the 7th edition of the CIPA “Guide to the Patent Acts”. This treatise is essential for practitioners seeking to track the correspondence between central themes of US and UK/EP patent law, such as patentable subject matter, utility (as we would call it),  enablement and the written description requirement, as well as to obtain a review of more specialized topics such as supplemental protection certificates and jurisdictional issues.


For more information, click here.


New Blog On AIA Aims For Co-Op Approach

Wednesday, January 18th, 2012

With a tidal wave of proposed regulations implementing the AIA poised to hit IP practitioners – ready or not – it seemed worthwhile to point out a new “Blawg” recently launched to help keep our heads above the murky legal waters to come. My firm, Schwegman Lundberg & Woessner, in cooperation with the IP group of the general practice firm Leonard Street and Deinhard, has opened a website, Patent RE-forum – Perspectives on the America Invents Act at This blog blends the patent prosecution expertise of SLW with the experience of the IP litigation team at Leonard Street, and has already posted a series of short essays on most of the sections of the AIA: “Breaking Down the AIA.” Members of the William Mitchell College of Law IP Institute have also been invited to contribute posts.

Since Patents4Life does not intend to follow the new regulations closely, except as they will affect life sciences/biotech practice, the site should be a good supplement to my musings. For example, on January 6, 2012, the USPTO published 21 pages of proposed regulations  in 77 Fed. Reg. at 982  “simply” to implement the changed requirements for an inventor’s oath and declaration in various applications. There is an entire column on the changes in the oath and declaration requirements in a continuing reissue application (!)  I tried to skim the changes but quickly got bogged down. The most useful nugget I unearthed is that the assignee can execute the oath and declaration on behalf of a deceased inventor. Emotional issues aside, this can be a big help to facilitate continued prosecution in situations in which the inventor’s estate has been closed and the personal representative does not want to reopen it in order to sign for the inventor. Oh, and after September 16, 2012, the assignee(s) can sign the reissue oath and declaration for a broadening reissue application IF the assignee(s) applied for the original patent. Don’t get me started!

Finally, I am  pleased to note that both Patents4Life and Patent RE-forum were recently picked as members of the top 25 Minnesota Blawgs in a survey sponsored by the Minnesota State Bar Association. Not a bad 3rd birthday present for Patents4Life!