What is supplemental examination and how does it relate to ex parte reexamination?
Supplemental examination is a proceeding introduced by the America Invents Act (AIA) that allows patent owners to request the USPTO to consider, reconsider, or correct information relevant to their patent. If a substantial new question of patentability is raised, an ex parte reexamination will be ordered. The MPEP explains: “Section 12 of the AIA added…
Read MoreWhat is the statutory basis for ex parte reexamination of patents?
The statutory basis for ex parte reexamination of patents was established on July 1, 1981, through sections 301-307 of title 35, United States Code, added by Public Law 96-517. The MPEP states: “Statutory basis for citation of prior art patents or printed publications in patent files and ex parte reexamination of patents became available on…
Read MoreHow does the prior art regime affect reexamination proceedings?
The prior art regime applicable to a reexamination proceeding generally depends on the filing date of the patent application. The MPEP states: “The prior art regime under which the application for the patent was examined (the first-inventor-to-file prior art regime, or the first-to-invent prior art regime) will generally be applied in the reexamination of the…
Read MoreWhat happened to inter partes reexamination under the America Invents Act?
The America Invents Act (AIA) replaced the inter partes reexamination process with inter partes review. According to the MPEP: “Effective September 16, 2012, section 6(c) of the Leahy-Smith America Invents Act (the AIA), Public Law 112-29, 125 Stat. 284, replaced the inter partes reexamination process that was established by the AIPA with an inter partes…
Read MoreHow did the America Invents Act (AIA) affect ex parte reexamination?
The Leahy-Smith America Invents Act (AIA), enacted on September 16, 2012, made several significant changes to ex parte reexamination: Expanded the scope of citable information to include patent owner statements filed in federal court or USPTO proceedings. Introduced estoppel provisions related to inter partes review and post-grant review. Established a first-inventor-to-file prior art regime, replacing…
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