Supplemental Examinations to Consider, Reconsider, or Correct Patent-Related Information: A Tangled Web Indeed

24 Pages Posted: 29 Jul 2010 Last revised: 7 Dec 2014

See all articles by Lisa A. Dolak

Lisa A. Dolak

Syracuse University - College of Law

Date Written: July 29, 2010

Abstract

A pending legislative proposal would authorize the U.S. Patent and Trademark Office (USPTO) to undertake a “supplemental examination” of an issued patent to “consider, reconsider, or correct information believed to be relevant to the patent.” It would further bar the federal courts from holding a patent unenforceable “on the basis of conduct relating to information” considered during supplemental examination.

The obvious intent of the proposal is to constrain the federal courts’ power to entertain inequitable conduct-based challenges. Its emergence is unsurprising, given the mounting dissatisfaction with the courts’ application of the inequitable conduct doctrine. However, because the bill proposes to provide patent owners a forum for effectively purging the taint associated with intentionally undermining the integrity of the patent procurement process, it raises a number of interesting questions.

This essay examines ethics-related implications of the supplemental examinations proposal. “Ethics” is broadly defined here to extend beyond potential ethics and discipline-related considerations for practitioners to related implications for the USPTO, the courts, and the patent system generally.

Keywords: Patent, Inequitable Conduct, Supplemental Examination, Ethics, Discipline

JEL Classification: K39, K41, 034

Suggested Citation

Dolak, Lisa A., Supplemental Examinations to Consider, Reconsider, or Correct Patent-Related Information: A Tangled Web Indeed (July 29, 2010). Available at SSRN: https://ssrn.com/abstract=1650648 or http://dx.doi.org/10.2139/ssrn.1650648

Lisa A. Dolak (Contact Author)

Syracuse University - College of Law ( email )

Syracuse, NY 13244-1030
United States

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