Supplemental Examination Requests: Benefits and Limitations, Strategic Use

Assessing Enforceability of Patent Portfolios, Evaluating the High Burden

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


Conducted on Wednesday, May 9, 2018

Recorded event now available

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Program Materials

This CLE webinar will guide patent counsel on supplemental examination requests generally and specific to chemical patents. The panel will examine the supplemental examination successes and its limitations. The panel will also provide insight on the strategic use of supplemental examinations.

Description

Supplemental examination permits patent owners to submit prior art and explanatory statements to the USPTO after patent issuance. Ushered in by the America Invents Act, under 35 U.S.C. §257 patent owners may file a request for supplemental examination and have a determination within three months as to whether the information presented raises a substantial new question of patentability and warrants re-examination. By statute, anything considered by the USPTO in the supplemental examination is barred as the basis for a later finding of inequitable conduct.

There are limitations and potential downsides. A supplemental examination request is not available if the basis was already raised as an inequitable conduct allegation in a patent litigation or in a paragraph IV notice letter. Moreover, any cleansing effect of a supplemental examination occurs only once the supplemental examination proceeding and any ex parte re-examination ordered therefrom has drawn to a close. There also is a steep fee for the procedure, and the USPTO requires patent owners to make, on the record, what may turn out to be fairly substantial admissions regarding putative errors made during prosecution.

Counsel to pharmaceutical inventors may be able to reasonably predict when they will receive patent validity challenges, leveraging the interplay between the patent system and regulatory approval of new pharmaceutical products. As a result, pharma patent owners may benefit by submitting a supplemental examination request well before their patents become the subject of litigation.

If used strategically, supplemental examination may provide a powerful tool for patent owners. Counsel should evaluate the enforceability of valuable patent portfolios to determine whether such a request for supplemental examination is an appropriate strategy.

Listen as our authoritative panel of patent attorneys examines supplemental examination requests filed to date, both generally and with a focus on chemical patent supplemental examination requests. The panel will discuss the limitations of supplemental examinations and the outcomes of completed requests. The panel will also provide guidance on the strategic use of supplemental examinations.

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Outline

  1. Supplemental examination requests to date
    1. Generally
    2. Chemical patents
  2. Limits on supplemental examination requests
  3. Guidance on the strategic use of supplemental examination requests

Benefits

The panel will review these and other critical issues:

  • How should counsel balance the benefits and limitations of supplemental examination before filing a request?
  • What are the burdens for patent owners considering a request for supplemental examination?
  • How can pharma patent owners leverage the patent system along with the drug approval process? What is the impact on supplemental examination?

Faculty

Irving, Thomas
Thomas L. Irving

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Irving has 35 years of experience in the field of IP law. His practice includes due diligence, patent prosecution,...  |  Read More

Browning, Paul
Dr. Paul W. Browning

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. Browning focuses on patent litigation and appeals. He has led teams as first chair at trial, at Markman...  |  Read More

Murphy, Amanda
Amanda K. Murphy, Ph.D.

Partner
Finnegan Henderson Farabow Garrett & Dunner

Dr. Murphy focuses her practice on client counseling and patent prosecution for a range of clients. She prepares new...  |  Read More

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