America Invents the Supplemental Examination, But Retains the Duty of Candor: Questions and Implications
6 Akron Intell. Prop. J. (forthcoming 2012) Akron Intellectual Property Journal, Vol. 6, 2012, Forthcoming
29 Pages Posted: 28 Mar 2012
Date Written: March 27, 2012
The America Invents Act (“AIA”) authorizes 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 further bars the federal courts from holding a patent unenforceable “on the basis of conduct relating to information” considered during supplemental examination. Supplemental examination will obviate inequitable conduct challenges even if patent applicants have withheld or misrepresented material information with the intent to deceive the USPTO.
The introduction of supplemental examination into the patent system raises a number of questions. In particular, the new law includes a requirement that the USPTO refer incidents of suspected prosecution-related fraud to the Attorney General for investigation if the USPTO becomes aware of such circumstances. Registered practitioners are not only duty-bound, however, to refrain from fraud. They, as well as inventors and others who participate substantively in patent prosecution and reexamination, have a broader duty of candor. Under pre-AIA law, both the patent owner and the responsible practitioner could be penalized as a result of an intentional violation of the duty of candor. Using supplemental examination, however, an owner can decouple the enforceability of the patent from a prior candor violation, leaving the practitioner who is alleged or suspected to have committed the violation to face any potential consequences. These changes create implementation issues for the USPTO, potential ethics and tactical issues for practitioners, and questions about the impact of the new proceeding on the patent system, generally. This paper considers these duty-of-candor-related issues — issues that the USPTO, the courts, patent owners, and patent challengers may face in the wake of the enactment of the AIA’s provisions relating to supplemental examination.
Keywords: patent, supplemental examination, America Invents Act, ethics, inequitable conduct
JEL Classification: K20, O34
Suggested Citation: Suggested Citation