Post Therasense: Why Supplemental Examination is Less Attractive

Eugene Perez and Chad Rink for World Intellectual Property Review

It is likely that Therasense is the main reason that supplemental examination filings are so low and may not ramp up any time in the near future.

Supplemental examination (SE) was created with the passage of the America Invents Act (AIA) in September 2011. A request for SE may be filed only by the patent owner (but not a third party) and may include the submission of any ‘information’ (ie, is not limited to submitting prior art).

Previous US case law held that inequitable conduct committed during prosecution of the application could not be cured by pursuing reissue or reexamination. In creating SE, Congress intended it to remedy the ‘plague’ of commonly asserting an inequitable conduct defence in patent litigation.

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