Supplemental Examinations to Consider, Reconsider, or Correct Patent-Related Information: A Tangled Web Indeed

Abstract

A pending legislative proposal would authorize the U.S. Patent and Trademark Office (USPTO) to undertake a “supplemental examination” of an issued patent to “consider, reconsider, or correct information believed to be relevant to the patent.” It would further bar the federal courts from holding a patent unenforceable “on the basis of conduct relating to information” considered during supplemental examination. The obvious intent of the proposal is to constrain the federal courts’ power to entertain inequitable conduct-based challenges. Its emergence is unsurprising, given the mounting dissatisfaction with the courts’ application of the inequitable conduct doctrine. However, because the bill proposes to provide patent owners a forum for effectively purging the taint associated with intentionally undermining the integrity of the patent procurement process, it raises a number of interesting questions. This essay examines ethics-related implications of the supplemental examinations proposal. “Ethics” is broadly defined here to extend beyond potential ethics and discipline-related considerations for practitioners to related implications for the USPTO, the courts, and the patent system generally.