Supplemental Examination in Context: Risks, Alternatives, and Opportunities
9 Pages Posted: 27 Jun 2012
Date Written: June 27, 2012
The option to use supplemental examination to have information considered, reconsidered or corrected by the U.S. Patent and Trademark Office provides patent owners with new strategic opportunities and challenges. Those opportunities and challenges are best analyzed by considering supplemental examination in context: in light of the law of inequitable as revised by Therasense and the available alternatives, including federal court litigation, reexamination and reissue. This detailed outline provides an overview of how supplemental examination will operate. It also illustrates how past “fraud” will apparently not bar or undermine the utility of supplemental examination for patent owners, identifies new litigation issues that supplemental examination will spawn, and discusses the key considerations that should guide patent owners who are considering whether to use supplemental examination or an alternative. It concludes by noting that supplemental examination may create new conflicts issues for owners and practitioners.
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