New Supplemental Examination: USPTO Outlines New Rules

Navigating the New Mechanism to Cure Inequitable Conduct

Recording of a 90-minute CLE webinar with Q&A

Conducted on Tuesday, February 14, 2012
Recorded event now available

This CLE webinar will provide guidance for counsel to IP owners and inventors on the supplemental examination process under the new America Invents Law. The panel will review the mechanics of the procedure and outline approaches to handle the ethical risks presented by the process.


Supplemental examination is among the many changes coming in 2012 as a result of the enactment of the America Invents Act. The new procedure provides patent applicants with a mechanism to “consider, reconsider, or correct information believed to be relevant to the patent.”

Supplemental examination provides that a patent cannot be held unenforceable based on the information provided during a supplemental examination. Only supplemental examination will provide patent owners this new statutory immunity from inequitable conduct-based challenges.

Examining the new proceeding in the context of the other available post-grant proceedings is the best way to evaluate the advantages and opportunities offered by each, including relating to potential inequitable conduct defenses. Counsel must consider the ethics-related implications of supplemental examination.

Listen as our authoritative panel of patent practitioners discusses the new supplemental examination proceeding, the mechanics of the procedure and the considerations that may govern decisions to use it over other post grant options. The panel will also examine the ethics implications, including questions that must await USPTO and judicial developments relating to supplemental examination.


  1. Supplemental examination
    1. Mechanics
    2. Therasense “but for materiality”
    3. Considerations in selecting supplemental examination
    4. Ongoing rulemaking considerations
  2. Potential ethics-related implications of supplemental examination and open questions
    1. Governing candor obligations
    2. Candor-violation consequences
    3. Potential conflict-of-interest considerations
    4. Inequitable conduct-related implications


The panel will review these and other key questions:

  • What are the mechanics of using the supplemental examination process?
  • What are the primary factors for deciding whether to use supplemental examination to consider, reconsider, or correct information relevant to a patent?
  • What are the ethical risks that can arise in the supplemental examination process—and how can counsel avoid ethics violations?


Scott A. McKeown, Partner
Oblon Spivak McClelland Maier & Neustadt, Alexandria, Va.

Mr. McKeown focuses on post-grant counseling, litigation and related prosecution issues. He leads the Reexamination/Reissue team responsible for electronics, wireless communications, software and computer-related inventions and business methods. He handles post-issuance proceedings at the USPTO including reissue applications, ex parte and inter partes reexamination proceedings and appeals to the BPAI.

Lisa A. Dolak, Angela S. Cooney Professor of Law
Syracuse University College of Law, Syracuse, N.Y.

Her research interests include issues at the intersections of patent law and judicial procedure, patent law and the media, and patent law and legal ethics. Her research projects focus on media coverage of the U.S. patent system, the effects of the evolving inequitable conduct doctrine on the practice of patent law, and a reconsidered theory of subject matter conflicts.


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Mark P. Wine



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