Supplemental Examination: The Patent Savior

Intellectual property is vital to establishing and preserving the value of many start-up companies.  A company’s patents, for example, can be used to attract investors, exclude competitors from using the company’s core technology and generate new opportunities such as the ability to cross-license with competitors both big and small.  It’s no wonder, then, that many start-ups are thrilled with the issuance of their very first patent.

So what’s a company to do when it’s ready to assert its patent in litigation, only to realize that not all the i’s were dotted and t’s crossed during the original prosecution of the patent?  If the problems are so great that the company is worried about the enforceability of the patent, a new procedure established by the Leahy-Smith America Invents Act, known as supplemental examination, may save the day.  In a nutshell, the procedure allows the patent owner to request additional examination of the patent to correct errors in the original prosecution and thereby insulate the patent owner against a later finding in the litigation of unenforceability due to inequitable conduct.

While, at this point, the Patent Office has only established proposed rules for implementing supplemental examination, a final version of the rules will be published in the coming months and made effective by September 16, 2012.

This post on Patents and Intellectual Property was authored by Ken Radcliffe.


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