2003.01 Disclosure After Patent Is Granted [R-07.2022]
Where a patentee or any member of the public (including private persons, corporate entities, and government agencies) has certain information which they desire to have made of record in the patent file, they may file a citation of such information with the Office pursuant to 35 U.S.C. 301 and 37 CFR 1.501. Such citations will be entered in the patent file without comment by the Office. Information which may be filed under 37 CFR 1.501 is limited to prior art patents, printed publications or written statements of the patent owner filed by the patent owner in a proceeding before a federal court or the Office in which the patent owner took a position on the scope of any patent claim. Any citations which include items other than those items expressly enumerated in 37 CFR 1.501 will not be entered in the patent file. See MPEP § 2202 through § 2208.
II. BY EX PARTE REEXAMINATION
Where any person, including patentee, has prior art patents and/or printed publications which the person desires to have the U.S. Patent and Trademark Office consider after a patent has issued, such person may file a request for ex parte reexamination of the patent (see 37 CFR 1.510 and MPEP § 2209 through § 2220). Patent owners or third party requesters may bring information, including prior art and incorrect or inconsistent positions, to the attention of the USPTO through ex parte reexamination.
III. BY SUPPLEMENTAL EXAMINATION
Where a patent owner desires that the Office consider, reconsider, or correct information, including prior art and incorrect or inconsistent positions, believed to be relevant to the patent, the patent owner may file a request for supplemental examination. See 37 CFR 1.601–1.625 and MPEP Chapter 2800. Supplemental examination became available on September 16, 2012, as a result of section 257 of Title 35, United States Code, which was added by Public Law 112-29, enacted on September 16, 2011, known as the Leahy-Smith America Invents Act (AIA). In particular, 35 U.S.C. 257(c)(1) states that “[a] patent shall not be held unenforceable on the basis of conduct relating to information that had not been considered, was inadequately considered, or was incorrect in a prior examination of the patent if the information was considered, reconsidered, or corrected during a supplemental examination of the patent.” Therefore, a patent owner may insulate the patent from being held unenforceable based on information submitted in a properly filed supplemental examination request.
Unlike ex parte reexamination practice, the information that the patent owner may request to be considered, reconsidered, or corrected in a supplemental examination proceeding is not limited to patents, printed publications, and patent owner written statements under 35 U.S.C. 301. The “information” may include any information that the patent owner believes to be relevant to the patent. For example, the information may include not only a patent or a journal article, but also a sales invoice, or a transcript of an audio or video recording. In addition, the information submitted as part of a request for supplemental examination may involve any ground of patentability, such as, for example, patent eligible subject matter, anticipation, public use or sale, obviousness, written description, enablement, and indefiniteness.
IV. REISSUE
Patent owners may bring information, including prior art and incorrect or inconsistent positions, to the attention of the USPTO through reissue applications. If any reviewed document is material to the patentability (i.e., those submitted to another Government entity) of a pending matter before the Office, such as reissue application, there is a duty to submit the information to the USPTO. 37 CFR 1.56 and 11.18(b)(2). See MPEP § 2015.