Supplemental Examination

Supplemental examination is a new procedure under the AIA that allows a patent owner to have the PTO supplement its examination based upon information relevant to any question of patentability, including eligible subject matter, anticipation, obviousness, written description, enablement, best mode, and indefiniteness.  The standard for granting the request is whether one or more items of information raise a substantial new question of patentability.  The supplemental examination procedure is viewed as a way to allow a patent owner to address possible inequitable conduct challenges before filing a lawsuit, thus potentially “cleansing” the patent and removing a basis for a challenge to the enforceability of the patent.  Supplemental information is available for any issued United States patent.  The PTO fees for supplemental examination as of January 1, 2014 are $4,400 for a supplemental examination request, an additional $12,100 upon examination being ordered, $180 for consideration of non-patent documents having 21-250 sheets, and $280 for each additional 50 sheets of non-patent documents.  Small entity and micro-entity discounted fees are available.

< back