Supplemental Examination: BIO Comments on Patent Reform

From BIO’s perspective, Supplemental Examination may have significant benefits, because patents that undergo this process are expected to be stronger, clearer, and can be better relied on for investment, product development, and commerce.

In general, BIO believes that the PTO’s proposed Rules put forward a basically sound framework. However, in a number of particulars BIO also believes that the proposed Rules create disincentives that could, in practice, severely limit the usefulness and actual utilization of the proceeding. The proposed proceeding carries a relatively high price tag, incorporates uncertain elements that generate unnecessary legal risk, and appears to require Supplemental Examination requests to be modeled along the the lines of what is required for an ex parte reexamination request without appreciating that the two types of request serve different purposes...