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Supplemental Examination Under the Patent Reform Act of 2010



By Kevin B. Laurence and Matthew C. Phillips of Stoel Rives LLP

Kevin Laurence and Matt Phillips are partners at Stoel Rives LLP. They write a semi-annually updated treatise titled Patent Reexamination and Reissue Practice, from which they teach a multi-day course for Patent Resources Group. They can be reached at kblaurence@stoel.com and mcphillips@stoel.com.


INTRODUCTION

The Patent Reform Act of 20101 proposes a number of changes to the correction tools that will be available to a patent owner. Most significantly, the proposed Act introduces a new tool: supplemental examination. The Act also retains the correction tools that are available today,2 with some modifications. This article outlines those changes, principally supplemental examination.

BASES FOR SUPPLEMENTAL EXAMINATION

The proposed Act provides that "[a] patent owner may request supplemental examination of a patent to consider, reconsider, or correct information believed to be relevant to the patent."3 This is a significant change as it will provide a much broader basis for an owner to request reconsideration of patentability by the PTO than is available via ex parte reexamination or reissue.

Presently and under the proposed Act, owner-initiated ex parte reexamination can be based only on prior art that is limited to printed publications. In contrast, supplemental examination permits a patent owner to ask the PTO to consider or reconsider patentability based on any relevant information, which seemingly may be neither prior art nor printed publicatio...

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