IP: U.S. Patent Office interprets the America Invents Act

New provisions deal with the supplemental examination process

Who is in the details of the America Invents Act?

Some people say that the devil is in the details. Others say that God is in the details. It probably depends a lot on how you view the details. Do the details make things better (for you personally), or worse?

Second, the supplemental examination will require the patentee to characterize the information. The patentee cannot simply present the information, as it would in an Information Disclosure Statement. Instead, the patentee is required to:

  • Identify each issue raised by each item of information
  • Explain how each item raises the issue identified
  • Explain why each item does or does not raise a substantial new question of patentability

Third, the supplemental examination will not even be ex parte—it will be conducted without patentee input after the request is filed. Once the request is filed, the patentee must sit and wait. There will be no ability to interview the examiner and provide further explanation, and there will be no ability to propose amendments.

Contributing Author

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Paul Craane

Paul Craane is a partner at Marshall, Gerstein & Borun LLP in Chicago, Illinois. For nearly twenty years, Paul has been prosecuting patent...

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