12.2 Ex Parte Reexamination & Supplemental Examination

Ex Parte Reexamination & Supplemental Examination

Post-grant administrative proceedings allow the USPTO to re-evaluate the patentability of issued claims. Two essential proceedings governed by MPEP Chapters 2200 and 2800 are Ex Parte Reexamination (enacted in 1980) and Supplemental Examination (created by the Leahy-Smith America Invents Act in 2012). While both proceedings can lead to reexamination of issued claims, they serve distinct purposes, have different standing requirements, and accept drastically different types of evidence.

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Ex Parte Reexamination (35 U.S.C. §§ 301–307 & MPEP Chapter 2200)

Ex Parte Reexamination permits any person—including the patent owner, a competitor, or an anonymous third party—to request that the USPTO reexamine an unexpired patent based on prior art.

Prior Art Limitations (35 U.S.C. § 301 & § 302)

Reexamination requests under 35 U.S.C. § 302 are strictly limited to prior art consisting of patents and printed publications. Ex parte reexamination cannot be based on:

• Prior public use or commercial sale evidence;
• Ineligibility under 35 U.S.C. § 101;
• Indefiniteness, lack of enablement, or inadequate written description under 35 U.S.C. § 112;
• Inventorship disputes or inequitable conduct allegations.

Substantial New Question of Patentability (SNQ)

Within three months of receiving an ex parte reexamination request, the USPTO Director must determine whether the cited prior art raises a Substantial New Question of Patentability (SNQ) (35 U.S.C. § 304 & MPEP 2240).

• An SNQ exists if a reasonable examiner would consider the prior art teaching important in deciding whether the claim is patentable.
• To constitute a new question, the prior art patents or printed publications must not have been previously considered during original prosecution or prior reexaminations, OR must present a new technical teaching that was not previously applied by the Office.

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|                       EX PARTE REEXAMINATION TIMELINE & STEPS                     |
+-----------------------------------------------------------------------------------+
| 1. Request filed under § 302 (Patents & Printed Publications only).               |
| 2. USPTO issues SNQ Determination within 3 MONTHS.                                |
|    -> If No SNQ: Request denied; portion of fee refunded; proceeding ends.        |
|    -> If SNQ Found: Order for Ex Parte Reexamination issued.                     |
| 3. Patent Owner Statement (optional, within 2 months of Order).                   |
| 4. Requester Reply (optional, within 2 months of PO Statement).                   |
| 5. Proceeding continues EX PARTE with special dispatch between USPTO & Patent Owner. |
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Conduct of Examination & Special Dispatch (MPEP 2261)

Once an ex parte reexamination is ordered, third-party requester participation terminates completely (unless a Patent Owner statement was filed, allowing a one-time third-party reply). The proceeding is conducted ex parte between the USPTO examiner and the Patent Owner with special dispatch (MPEP 2261).

Claim Amendments (35 U.S.C. § 305)

During reexamination, the Patent Owner may propose amendments to claims or submit new claims to distinguish over the prior art. However, 35 U.S.C. § 305 strictly prohibits any amendment that enlarges or broadens the scope of the claims. Reexamination claims may only be narrowed or maintained in scope.

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Supplemental Examination (35 U.S.C. § 257 & MPEP Chapter 2800)

Supplemental Examination was created under the America Invents Act (AIA) to give patent owners a mechanism to request that the USPTO evaluate, consider, or correct information believed to be relevant to the patent.

Key Differences from Ex Parte Reexamination

1. Standing: Only the Patent Owner may file a request for Supplemental Examination (35 U.S.C. § 257(a)). Third parties cannot request it.
2. Scope of Information: Unlike ex parte reexamination, information submitted in supplemental examination is NOT restricted to patents and printed publications. A patent owner can submit any information, including sales records, public use evidence, transcripts, § 112 enablement concerns, or expert declarations.

Statutory Procedure & Standard

• Within 3 months of receiving a request for supplemental examination, the USPTO must issue a Supplemental Examination Certificate indicating whether the submitted information raises an SNQ.
• If an SNQ is found, the USPTO Director will automatically order an ex parte reexamination of the patent (which will then proceed under the rules of ex parte reexamination).
• If no SNQ is found, the supplemental examination concludes, and a certificate issuing the determination is published.

Inequitable Conduct Safe Harbor (35 U.S.C. § 257(c))

A primary motivation for filing Supplemental Examination is to insulate a patent against future charges of inequitable conduct in district court litigation. Under 35 U.S.C. § 257(c):

• Information considered, reconsidered, or corrected through supplemental examination generally cannot support an inequitable-conduct holding under § 257(c).
• Pre-request allegations: The protection does not displace an inequitable-conduct allegation pled with particularity before the supplemental-examination request, or the statute’s specified pre-request drug-approval notice circumstances.
• Patent-owner enforcement: If the patent owner brings an infringement action, the supplemental examination and any ordered reexamination must be completed before that action is filed for the protection to operate there.

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Comparative Analysis: Reexamination vs. Supplemental Examination