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Friday Apr 27, 2012

The Role of Submission Limits in Timely Completion of Supplemental Examination

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos

This entry in our series on implementation of the America Invents Act (AIA) focuses on the proposed rules for supplemental examination.

The supplemental examination procedure was designed to provide patentees with a quick and decisive examination of items that were overlooked during the patent’s original prosecution. So quick in fact, that the AIA set a three-month period for us to conduct and conclude a supplemental examination after a request is filed. That’s just three months to determine if any of the items of information raise a substantial new question of patentability.

In order to meet this timeframe, we have proposed a limit of 10 items of information that a patent owner can submit to the USPTO for consideration in each request. The purpose of this limit is to strike a balance between the needs of the patent owner and the ability of the Office to timely conclude the proceeding. That said, we did not limit the number of issues that these 10 items of information can raise, nor did we limit the number of separate supplemental reexamination requests that a patentee can file.

Following publication of the proposed rules, the Office received a number of suggestions requesting us to accept more than 10 items of information in a single supplemental examination request. While we're still considering this and all of the other input we have received, I wanted to share with you the factors the Office took into consideration in proposing a limit of 10 submissions.

First, far fewer than 10 prior art documents form the basis for most inequitable conduct allegations. In fact, we are unaware of any publicly reported inequitable conduct dispute involving more than 10 items of information – if you know of one, please let us know. Second, in over 85 percent of the requests for ex parte reexamination, the requester cites 10 or fewer items for consideration by the Office. Third, the Office was very mindful of the time necessary for examiners to analyze the items of information submitted, particularly since the items are not limited to patents and printed publications, and each item may raise multiple issues.

Accordingly, limiting the number of items of information to 10 will help the USPTO establish a procedure that is not only practical, but also one enabling an examiner to fully, comprehensively, and timely analyze all submitted items of information and issues to accurately determine whether there is a substantial new question of patentability.

So, as is always the case with matters of balance, there is no definitive answer. But one thing is for sure: Congress mandated very fast action on supplemental examination. And that in turn calls for limits on what we all take on within the scope of a single proceeding.


An outspoken advocate for independent inventors, I support this limit. Ind. inventors want efficient prosecution. Please consider a per item fee and plus a lower basic fee to get to the same revenue to encourage fewer items and even greater speed and efficiency. I suggest you stepwise reduce the decisional time limit for less than 5 items submitted. For example to 10 weeks for 4 items, 8 for 3, 6 for 2, and 4 for 1 to the pressure on staff to be efficient. If 3 months (13 weeks) is sufficient for 10 items (i.e. 1.3 weeks/item) then 10,8,6,4 respectively for 4,3,2,1 items is quite fair, as computerization speeds the clerical work for all involved. 13 weeks for decision on 1 item of information is not good efficiency.

Posted by Bruce Burdick, Registered Patent Attorney 27,422 on April 28, 2012 at 10:19 PM EDT #

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