America Invents the Supplemental Examination, But Retains the Duty of Candor: Questions and Implications

This paper considers these duty-of-candor-related issues-issues that the USPTO, the courts, patent owners, and patent challengers may face in the wake of the enactment of the AIA's provisions relating to supplemental examination, But first, by way of background, Part II presents an overview of the legislation relating to supplemental examination and explores how supplemental examination might operate, in light of its apparent goals. Part III considers questions relating to the overlay of supplemental examination on the existing U.S. patent application and enforcement regime, with particular focus on its interplay with the applicant's duty of candor. As that section illustrates, the focal point of that examination is the supplemental examination request. Accordingly, Part III introduces the discussion of the candor-related questions raised by supplemental examination by considering the range and nature of information such requests may contain.

Part IV concludes.