CIVIL ENGINEERING & PATENT LAW  
This website illustrates how Civil Engineers may make greater use of the Global Patent System to Promote Progress in their Field.
The American Founders included Patent Rights in the United States Constitution to Promote Progress.
Supplemental Examination
U.S. Patenting
      In certain cases, supplemental examination may help the Applicant to protect a patent from invalidation due to nondisclosure of material information to the USPTO during patent prosecution.  Because patent prosecution is generally an ex parte proceeding between the Applicant and the USPTO Examiner, and not an adversarial proceeding as in litigation, the patent laws impose a duty of candor on the Applicant to disclose any information that might be material for patentability to the Examiner.  If the Applicant fails to disclose material information and violates this duty of candor (e.g., knows of an important reference that could affect patentability, but fails to disclose the reference to the Examiner), then an adversary may use the defense of inequitable conduct to invalidate the Applicant's patent in subsequent litigation.  In the years leading up to the 2011 Leahy-Smith America Invents Act, many alleged infringers relied on the inequitable conduct defense to invalidate an asserted patent and thus avoid infringement.  Supplemental examination provides a procedure to disclose previously undisclosed information, which should have been reported to the USPTO, to attempt to insulate an issued patent from later inequitable conduct attacks.    

     After an Applicant files a request for supplemental examination, along with the previously undisclosed information, the USPTO may take up to three months to determine whether the previously undisclosed information triggers a substantial new question of patentability (SNQP) requiring Ex parte Reexamination of the patent.  If the USPTO determines that an SNQP is raised by the information that should have previously been submitted by the Applicant, the Applicant's patent undergoes Ex parte Reexamination and could face possible invalidation by the USPTO.  Conversely, if the USPTO determines that the submitted information raises no SNQP, then Applicant's patent is shielded from inequitable conduct relating to that submitted information (though the patent could still be invalidated based on other undisclosed information or for other reasons).  Further, if the Applicant's patent survives Ex parte Reexamination without being invalidated, then it is likewise shielded from inequitable conduct.      

     Because an Applicant generally has little flexibility in participating in an Ex parte Reexamination (e.g., no RCEs are possible), some patent commentators have suggested initiating a reissue of the patent based on the previously undisclosed information prior to initiating supplemental examination.  Reissue affords more time and flexibility (e.g., RCEs) to the Applicant, as compared to Ex parte Reexamination, to amend the claims to overcome the prior art presented by the previously undisclosed information.  Of course, Applicant's optimal overall course of action is to always disclose all material information to the Examiner during original prosecution to avoid having to resort to procedures such as supplemental examination and reissue.     

    
The USPTO charges a substantial fee to the patent owner for initiating supplemental examination:  over $4,000 for filing the request (nonrefundable), plus over $12,000 if Ex parte Reexamination is ordered (refundable if the USPTO determines that the submitted information raises no SNQP).      

     As a final note, successful supplemental examination protects only the patent itself.  The Applicant and Applicant's representative may still be personally subject to adverse action based on withholding information from the USPTO, e.g., involving fraud.  Again, Applicants should disclose all material information to the USPTO during original prosecution to avoid having to fall back on supplemental examination and its potential ethical fallout.
Tappan Zee Bridge in New York
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