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ARTICLE · 26 SEPTEMBER 2013

Take A Chance On Supplemental Examination

Finnegan, Henderson, Farabow, Garrett & Dunner LLP
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Supplemental examination requests the USPTO "consider, reconsider, or correct information believed to be relevant to the patent." 35 U.S.C. § 257(a).

United StatesIntellectual Property
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Edited by Anthony A. Hartmann

Supplemental examination (SE) requests the USPTO "consider, reconsider, or correct information believed to be relevant to the patent." 35 U.S.C. § 257(a). SE is one of the most undervalued AIA provisions. Academics criticize SE as a patent amnesty program because it may immunize patentees against inequitable conduct allegations. Patent practitioners largely write it off as redundant in view of ex parte reexamination and reissue, or unnecessary in view of Therasense. As of August 2, 2013, only 33 requests were filed, even though the USPTO had predicted in August 2012 that all patentee-filed ex parte reexamination requests (about 110 filed annually) would soon be replaced by SE. Despite the lukewarm response to SE in the past year, patent owners should take a second look at it.

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