They Just Don't Get It - "Patent Reform" at the USPTO

    By Kevin E. Noonan --

As has been reported elsewhere (see Patently O: "Rumors Continuations & Claims"), the U.S. Patent and Trademark Office appears to be ready to issue "final rules" on changing continuation application practice, said PTO's Commissioner of Patents John Doll today at a meeting of the District of Columbia Bar Association.

According to Commissioner Doll, the Patent Office has delivered the "final rules" to the Congressional Office of Management and Budget (OMB), which will take a minimum of 90 days to review the proposed rule changes.  Thereafter, the rules will be published in the Federal Register.

The extent of the good news associated with this announcement is the concession by Commissioner Doll that the unprecedentedly large (and unprecedently negative) public commentary submitted in response to the rules as initially proposed has had an effect.  Commissioner Doll hinted that the final rules have been modified, explicitly in response to some of the comments.  Among the modifications alluded to in his comments were changes in the proposed "representative claim" proposal as well as increased limits on the numbers of independent and total claims.  Also purportedly changed is the rule that all divisional applications be filed at the same time to retain the initial priority date, and the limits on the number of continuing applications that will be permitted.

Readers of this space will recall some of the more draconian portions of the proposed rules (see below).  These include limiting continuations to one per application, and depriving applicants subject to claim restriction (based on claiming more than one invention in a single application) of the right to pursue the restricted claims after the original application grants.  The number of claims the Office was willing to examine was limited to ten "representative" claims chosen by the applicant, including all independent claims.  Claims restricted from an application by Patent Office determination that they were independently-patentable inventions would be required to be filed during the pendency of the restricted application in order to retain the priority right.  And the Office proposed requiring applicants to identify and characterize prior art with particularity regarding individual claim limitations, without any concomitant changes in Rule 56 to shield patent counsel from later accusations of inequitable conduct.

Commissioner Doll is scheduled to address the American Bar Association's Intellectual Property Section meeting in Washington over the next three days (April 12-14, Arlington VA).  It will be interesting to see whether Commissioner Doll is more forthcoming in his remarks during this meeting.  Continued strict secrecy is likely to be a harbinger that the "modified" rules are not much better than the original rules deemed by many to be extremely unsatisfactory.  If so, litigation over the competency of the Patent Office to make such sweeping incursions on applicants' statutory rights is possible.

For additional information regarding this topic, see:

• "Patent Applicants Beware: The Rules Are Changing (Again) - Part 1," Patent Docs, November 6, 2006

• "Patent Applicants Beware: The Rules Are Changing (Again) - Part 2," Patent Docs, November 6, 2006

• "USPTO Continuation Practice Rules," Patently O, April 11, 2007

Comments

[Brad Crawford]

If attorneys have to characterize the prior art, there will be an explosion of inequitable conduct claims filed with the courts.