How Often Is Supplemental Examination Used, and What Happens Next

When supplemental examination became available on September 16, 2012, commentators watched closely to see how patent owners would use it. Early observations focused on how many requests were filed and how often the Office found a substantial new question of patentability. The more useful questions today are what the possible outcomes are, where to find reliable current numbers and how to read them.

This article does not cite specific figures. Filing volumes and outcome rates change from year to year, and the USPTO is the authoritative source.

The possible outcomes

Every supplemental examination request that receives a filing date ends with a supplemental examination certificate under 35 U.S.C. § 257(a). The path from there depends on what the certificate says.

No substantial new question

If the Office concludes that none of the items of information raises a substantial new question of patentability, the certificate says so and the proceeding ends. No claims are changed. The information and the certificate become part of the public record, and the § 257(c) protection against unenforceability based on that information can apply, subject to the exceptions in § 257(c)(2).

Substantial new question found

If at least one item raises a substantial new question, the Office orders ex parte reexamination under § 257(b). The reexamination addresses each question identified, and it is not limited to patents and printed publications.

Results of the ordered reexamination

An ordered reexamination ends with a reexamination certificate. Claims may be:

• Confirmed without amendment;
• Amended, or new claims added, which can raise intervening rights; or
• Cancelled.

A single certificate can combine all three outcomes for different claims.

Stage	Possible result
Request filed	Filing date accorded, or request found defective
Supplemental examination	Certificate: no substantial new question, or substantial new question
Ordered reexamination	Claims confirmed, amended or cancelled

The procedure is covered step by step in supplemental examination procedure.

Where to find current data

The USPTO publishes data on reexamination and supplemental examination, including filings and results. Useful starting points are the USPTO’s Patent Trial and Appeal Board pages for its trial statistics and comparison data, and the Manual of Patent Examining Procedure, Chapter 2800, for how the Office processes requests. Reexamination and supplemental examination are handled by the Central Reexamination Unit rather than the Board, so their data may be reported separately from PTAB trial statistics.

For context on AIA trial volumes, see the site’s PTAB statistics hub.

How to interpret the numbers

A few cautions apply when reading any supplemental examination data:

• Small numbers. With low filing volumes, percentages can swing sharply from one period to the next.
• Selection effects. Owners tend to file when they believe the information is important. A high rate of ordered reexaminations may reflect what owners choose to submit, not how strict the Office is.
• Lag. Ordered reexaminations take time to finish, so outcome figures for recent filings will be incomplete.
• Patent-level versus request-level counts. One patent can be the subject of several requests, because each request is limited to twelve items of information.
• Outcome categories. “Claims amended” can mean anything from a minor clarification to substantial narrowing.

Why volumes are low compared with IPR

Supplemental examination has always been used far less than inter partes review. That is unsurprising, because the two serve different users: IPR is a tool for challengers, while supplemental examination is available only to patent owners who choose to expose their own patents to scrutiny.

Two further factors keep volumes down:

• Cost. The request fee and the reexamination fee, paid up front, are substantial, on top of professional fees for preparing a detailed explanation of each item.
• Therasense. Therasense, Inc. v. Becton, Dickinson & Co. (Fed. Cir. 2011) (en banc) made inequitable conduct harder to prove, reducing the main benefit supplemental examination offers. See why supplemental examination is less attractive after Therasense.

Owners also have other options, such as reissue, when they want to amend claims while new information is considered. For an overview of the procedure, see the supplemental examination guide.

Key takeaways

• Every request ends in a certificate stating whether a substantial new question of patentability exists.
• If one exists, ex parte reexamination follows, and claims may be confirmed, amended or cancelled.
• Current figures should come from USPTO data, read with attention to small numbers, selection effects and lag.
• Volumes are low relative to IPR because only owners can file, costs are high and Therasense reduced the benefit.