Patent Applicants Beware: The Rules Are Changing (Again) - Part 1

    By Kevin Noonan --

The U.S. Patent and Trademark Office has proposed sweeping changes in patent prosecution practice rules that were discussed at a "townhall" meeting held in Chicago on February 1st with Patent Commissioner John Doll and General Counsel James Toupin.

The rules would limit so-called "continuation" practice to one per application, and require applicants subject to claim restriction (based on claiming more than one invention in a single application) to lose the right to pursue the restricted claims after the original application grants.

The consequences of these changes are stunning.  At present, an applicant has the right to control the application process by accepting claims of more limited scope to get a patent and pursuing non-allowed claims in as many continuations as necessary.  Further, applicants who have the Office divide their claims into several "inventions" can pursue the claims serially, to disperse costs over time and to be able to adapt to their business needs.  This is not inequitable, since the applicant is losing patent term that cannot be recovered for all these prosecution decisions.

The proposed rule changes strip all such discretion from the applicant, and place applicants at the mercy of a patent examining corps that the Office admits is overburdened and without sufficient time to properly examine applications.  Indeed, Part 2 of this article will address additional proposed changes directed towards improving examination quality.

The inexorable consequence of these changes will be to increase dramatically the number of applications that languish in an appeals process that even today delays patent grant by several years.  It is difficult to discern how the proposed changes will help to solve the purported problems in the Patent Office, but it is clear that the changes will hurt innovation by at best delaying and at worst frustrating applicants in securing U.S patent rights.

Disturbingly, the presenters suggested that the practice of keeping a continuation "alive" to provide the basis for submitting a claim that would ensnare a competitor's efforts to "design around" were improper and contrary to the patent grant.  This practice has been countenanced by over a century of Supreme Court precedent, and it is questionable whether the Office has the authority to make changes on this basis.

Comments on the proposed changes are being accepted until May 3, 2006 at [email protected].  Prudence suggests that practitioners, and their clients, let the Office know their views on these changes.

Additional discussion of this topic can be found in Dr. Noonan's February 3, 2006 article on Patently-O.