The America Invents Act (AIA) ushered in an era of Patent Office trials to adjudicate the validity of issued patents. The AIA, however, created an additional, lesser used, avenue to address patent validity. This procedure is known as Supplemental Examination under 35 USC 257.
Supplemental examination can only be requested by a patent owner, and no third party participation is permitted. Any type of information can be submitted on any ground of patentability. In the words of the Patent Office:
Unlike ex parte reexamination practice, the information that the patent owner may request to be considered, reconsidered, or corrected in a supplemental examination proceeding is not limited to patents and printed publications. The “information” may include any information that the patent owner believes to be relevant to the patent. For example, the information may include not only a patent or a journal article, but also a sales invoice, or a transcript of an audio or video recording. In addition, the information submitted as part of a request for supplemental examination may involve any ground of patentability, such as, for example, patent eligible subject matter, anticipation, public use or sale, obviousness, written description, enablement, indefiniteness, and double-patenting.
MPEP § 2801.
Once a request is filed, the Patent Office has three months to determine whether the information submitted raises a substantial new question of patentability (SNQ) and issue a certificate under 37 CFR § 1.625. Interviews and amendments are not permitted.
If a SNQ is raised, the Patent Office will issue a certificate and commence an ex parte reexamination, but without the traditional limitations to anticipation and obviousness over patents and printed publications. Interviews and amendments are permitted during the reexamination. If a SNQ is not raised, a certificate also will be issued, and the patent owner will benefit by having the information considered by the Patent Office.