Changes to Implement the Supplemental Examination Provisions of the Leahy-Smith America Invents Act

On August 14, 2012, changes to implement the supplemental examination provisions of the America Invents Act were published by the U.S. Patent and Trademark Office.

The rules can be found here:
http://www.uspto.gov/aia_implementation/Supp_Exam_Rules.pdf

The changes in this final rule take effect on September 16, 2012.

The supplemental examination provisions permit a patent owner to request supplemental examination of a patent.

A request for supplemental examination must contain: (1) a list of each item of information that is requested to be considered, reconsidered, or corrected; (2) an identification of each claim of the patent for which supplemental examination is requested; (3) a separate explanation of the relevance and manner of applying each item of information to each claim of the patent for which it was identified; and (4) a summary of the relevant portions of any submitted document, other than the request, that is over fifty pages in length.

The cost for filing a supplemental examination is $5,140 for the initial request plus $16,120 for the ex-parte re-examination fee. Both the initial request fee and the ex-parte re-examination fee must be paid at the time of initial request.  The $16,120 ex-parte re-examination fee will be refunded if no re-examination is ordered. The rules also finalize the increase in the fee for filing a request for ex-parte reexamination at $17,750, a much higher amount than before.