Patent Bar Review AIA Exam Question of the Week

The WaxLike Company (WLC) applied for a patent back in 2013 and the patent issued several weeks ago. A copy of the patent was received in the company’s legal department and copies were forwarded to the company officers and each one of the three inventors and the chief engineer. WLC owns the patent and it has not been assigned or licensed to any other party. All of the parties that received a copy of the patent were asked to review the patent and forward an email to the legal department if they realize there is any problem. The legal department received three emails.One of the inventors admitted that he failed to disclose several relevant patents when he was asked to disclose any and all information relating to the invention at the time the legal department was drafting an IDS for submission in order to meet their legal duties under 37 CFR 1.56. The prior art was never found by the examiner.The chief engineer admitted that she had signed the oath submitted with the application for one of the inventors that was on vacation on the day of the signings.The company president admitted that he coerced the chief engineer to include an inventor who was a supervisor and had nothing to do with the invention.WLC realizes that they may be subject to a lawsuit relating to the validity of the patent in the near future. What should WLC do?(A) File a reexamination to correct the deficiencies listed above.
(B) File a reissue to correct the deficiencies listed above.
(C) File a certificate of correction to correct the deficiencies listed above.
(D) File a supplemental examination to correct the deficiencies listed above.
(E) None of the above.

ANSWER: (D).

A patent owner may request supplemental examination of a patent in the Office to consider, reconsider, or correct information believed to be relevant to the patent. If the certificate issued indicates that a substantial new question of patentability is raised by 1 or more items of information in the request, the Director shall order reexamination of the patent. See MPEP 2802 and 35 U.S.C. 257(a)-(b).

The information presented in a request for supplemental examination is not limited to patents and printed publications, and may include, for example, issues of patentability under 35 U.S.C. 101 and 112.

Note that 37 CFR 1.620(g) provides that, if the Office becomes aware, during the course of a supplemental examination or of any ex parte reexamination ordered under 35 U.S.C. 257 as a result of the supplemental examination proceeding, that a material fraud on the Office may have been committed in connection with the patent requested to be examined, the supplemental examination proceeding or any ex parte reexamination proceeding ordered under 35 U.S.C. 257 will continue. The matter will be referred to the U.S. Attorney General in accordance with 35 U.S.C. 257(e).

Also refer to MPEP 2823 for information on the differences between a reexamination and a reexamination ordered in a supplemental examination.

An SE may be used to allow the USPTO to review possible charges of inequitable conduct during the examination of the patent application (and immunize the patent owner from charges of inequitable conduct), which is not available in any other post-grant proceedings.

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