What Is a Post-Grant Supplemental Examination?
Okay, so today we’re going to talk about something we don’t usually associate with excitement—patent post-grant supplemental examination. But before your eyes glaze over, let me tell you—it’s more than just legal jargon. It’s a second chance, a safeguard, and sometimes, the hero of the story when things don’t go quite right.
So, what is post-grant supplemental examination? Let me paint you a picture. Imagine you’ve been granted a shiny new patent. It’s your intellectual baby. Let’s call it the Toast-O-Matic—a toaster that butters your bread, sprinkles cinnamon, and even sings show tunes. Life is good, right? But then one day, your conscience whispers, “Hold up—wasn’t there already something like this?”
This is where post-grant supplemental examination comes in. It’s like hitting the replay button at the U.S. Patent and Trademark Office (USPTO) to take a second look at your patent. Maybe there’s some prior art—meaning existing technology or publications—that wasn’t considered before. Maybe you accidentally forgot to disclose something during the original application process. And maybe that new information changes everything.
Why Would Anyone Want to Do This?
There are several pros to going through with a supplemental examination.
First, strengthening your patent: If you’re confident your invention is still original and strong, reexamination can clear up any doubts. You get a more rock-solid patent, which means fewer lawsuits, less stress, and more singing toasters in happy kitchens everywhere.
Here’s another big one—avoiding potential fraud on the Patent Office. Sometimes, during your original patent application, you might have accidentally withheld some information—maybe a similar product or document. If this comes to light later, it can look really bad and could result in your patent being invalidated or even lead to penalties. Proactively requesting a reexamination helps you correct any mistakes and keep everything above board. It’s a chance to make things right before someone else catches you. No harm, no foul—just a better, cleaner patent.
How the Supplemental Examination Works
Now let’s talk about how post-grant supplemental examination works—step by step. It’s not exactly a rollercoaster ride, but it does have its ups and downs.
The process starts when you file a request for supplemental examination with the USPTO. This request needs to provide specific reasons—called substantial new questions of patentability (or SNQs)—as to why the patent claims might not be valid. Usually, this includes evidence like prior art that wasn’t considered during the original examination.
Now, you don’t actually say that your patent might not be valid. Instead, you phrase it in terms of “new questions of patentability” and submit information that might be relevant.
You submit a detailed explanation of why a reexamination is needed. The USPTO reviews the request and decides whether it raises significant enough questions to merit a full reexamination. If yes, the process continues. If no, the patent remains as is, and you can breathe a sigh of relief.
Determining the Scope of Reexamination
Next, the patent office reviews the claims of your patent alongside the newly submitted prior art. The examiner’s job is to determine whether the claims still hold up in light of this new evidence.
This is your chance to submit arguments explaining why your patent should remain intact. You can also amend your claims to make them more specific or narrow to avoid conflicts with the prior art.
The examiner carefully weighs the new evidence and your defense. They then determine whether the patent claims should stay as they are, be changed, or be invalidated entirely.
Possible Outcomes
After reviewing everything, the patent office makes a decision. There are a few possible outcomes:
• Claims Confirmed: Your patent stays exactly as it is. Congratulations! Your Toast-O-Matic lives to butter and sing another day.
• Amendments Required: The patent office may require you to make changes. Maybe you have to give up the singing feature but get to keep the cinnamon-sprinkling function. Not ideal, but better than losing everything.
• Claims Canceled: Worst-case scenario—your claims are canceled, and your patent is no longer enforceable. The Toast-O-Matic becomes just a regular toaster, and the world suddenly seems a little less magical.
Appealing a Bad Decision
If the decision doesn’t go your way, don’t worry—it’s not the end of the road. You can appeal the examiner’s decision to the Patent Trial and Appeal Board (PTAB), and if you’re still not satisfied, you can escalate to the federal courts. It’s like asking for a second—and third—opinion.
How This Differs from Other Types of Review
So, supplemental examination is like a reality check for your intellectual property. It’s a proactive move to strengthen your patent, avoid the dreaded “fraud on the Patent Office,” or fend off competitors trying to rain on your invention parade.
Now, there is something similar called ex parte reexamination, which is used if someone else wants to try to invalidate your patent. The procedures are a little similar, but supplemental reexamination is for when you want the USPTO to reexamine your own patent.
If you want to learn more about ex parte reexamination or inter partes review, you can go back and listen to Episodes 77 and 78 of this podcast.
Final Thoughts
Whether the reexamination goes well or not so well, one thing’s for sure—it’s better to have everything scrutinized and validated now than to be blindsided later. I’m Adam Diament—and keep on inventing!