Supplemental Examination:
Potential Benefits vs.
Guaranteed Risks
By Eric R. Moran, Aaron V. Gin, Ph.D.,
and Sanat Bhole
The America Invents Act of 2011 introduced
supplemental examination of patents as a post-
grant process intended to limit expensive and
unpredictable inequitable conduct litigation1
and improve patent quality.2 As codified,
35 U.S.C. § 257(c)(1) states:
A patent shall not be held unenforceable
on the basis of conduct relating to
information that had not been considered,
was inadequately considered, or was
incorrect in a prior examination of the
patent if the information was considered,
reconsidered, or corrected during a
supplemental examination of the patent.3
The statute allows the owner of an issued
patent to provide to the U.S. Patent and
Trademark Office (“USPTO” or “Office”) items
of information (e.g., patents, publications,
or other materials) that were not previously
considered in an effort to “inoculate” itself
against future charges of inequitable conduct
and build a stronger case for validity.
For all of its potential benefits, however,
supplemental examination may also introduce
new risks and uncertainties. By analyzing
USPTO data about the number of requests, the
pendency of proceedings, and the frequency
of finding a substantial new question of
patentability (“SNQP”), this article seeks to
identify trends that will help patent owners
thoughtfully weigh the risks and rewards of
supplemental examination.4
The Procedure
A supplemental examination requires a patent
examiner to make a threshold determination
as to whether a new item of information raises
an SNQP. A new item will raise an SNQP
if, “a reasonable examiner would consider
the prior art, patent, or printed publication
important in deciding whether or not the claim
is patentable.”5 If the examiner determines
that the new material raises an SNQP, the
examiner orders an ex parte reexamination to
A review of developments in Intellectual Property LawSummer 2016 Vol. 14, Issue 3
(continued on page 2)
Page 10
Challenges Facing Spotify,
Tidal, and Other Media
Streaming Services
Page 5
Trade Secrets
in the Spotlight Again:
the EU Directive
Page 12
Intellectual Property
and the Venture-Funded
Startup
Page 8
The Impact of 3D
Printing on Intellectual
Property Rights
