Promote the Progress

Our Patent and Trademark Office has taken a decidedly activist bent over recent years, single-handedly elevating itself from patent system administrator to patent policy maker. Today's injunction against the new rules is the first serious wound inflicted on this new animal, and now we must all wait to see if it's a mortal one...or a mere flesh wound that might, in the long run, make the beast stronger.

Responsible activism would probably be welcome. No one disputes that the Office has serious backlog and quality issues that must be addressed. The patent community - all sides of it - would no doubt welcome carefully planned and fully contemplated changes to the administrative process that are designed to increase efficiency and quality. Indeed, this is the pipe dream many stakeholders bought into years ago when lending support to a significant fee increase.

But, unfortunately, the Office has seemingly decided that its role in our patent system is much greater than it actually is. Placing limits on an applicant's ability to protect his or her fully disclosed invention is the province of Congress and the democratic process, not that of the regulators and notice and comment rulemaking. This is especially true when the explanation offered by the Office for the need for the rules is the fabled 'continuation abuse' and not the old-reliable problem of the application backlog.

Making matters worse, the attitude of the Office during this nearly two year affair has been nothing short of brash and arrogant. From the early "you'll have to sue us" comments regarding the Office's authority to limit continuation filings to the final decision that dropped the biggest patent prosecution deadline since the GATT date squarely on Halloween - a holiday celebrated immediately after 'normal' business hours, not in the morning - the Office has repeatedly shown a new air of arrogance to the patent community. The end result will likely be - and probably already is - an evaporation of the sense of partnership that seemed to exist just a few years ago. Pity.

The new attitude shows itself even today - at the time of writing this post - nearly two and a half hours after the first blog post on the issuance of the injunction, the Office still has not put any information regarding the injunction on its website. Surely the administration knew an injunction was a possibility (unless the arrogance runs so deep that they couldn't fathom the possibility of a loss). Surely they knew that a surge of deadline-inspired filings was coming (and already in process). Surely they appreciated the fact that every minute, on this day, was critical. Surely they didn't mean to shirk their administrative responsibility to disseminate information relating to the patent prosecution process. Surely they weren't going for political effect when they chose to talk to the Wall Street Journal before talking to their own customers.

The injunction is nothing short of a watershed moment that will - in time - tell us if this new animal lives or dies. Patent reform appears to now be focused on the question 'what is the proper role of the Office in our patent system?'

Posted by J Matthew Buchanan at 02:25 PM | Permalink

word has it that an injunction was just issued on the new rules.....

KUDOS to PLI's live blogging of this important event.

Posted by J Matthew Buchanan at 12:33 PM | Permalink

No one has time to discuss the new rules in depth today (my two sons send a special thank you to USPTO policy makers for picking a holiday as new-rules-eve), so I thought we could just give a brief moment of silence to 35 U.S.C. s.120:

"An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this section."

Posted by J Matthew Buchanan at 10:56 AM | Permalink

Our patent system has two primary purposes -

1. To encourage disclosure of inventions, and

2. To encourage development of new ideas by fostering design around efforts

Seems to me our great, world-leading patent system is now failing to achieve these purposes in at least two regards...with a third complication on the horizon:

1. - The Old. The "bury your head in the sand and don't read patents" effect of our duty to disclose provisions is legendary around the globe, basically encouraging our best and brightest to avoid reading patents (and other technical references) in fear of having knowledge that they later forget to disclose in an application that might bear only a marginal relationship to the subject matter of the ignored patents. Combine this with the guarantee of an inequitable conduct charge - well-founded or not - should the resulting patent ever be litigated, and you can understand why some technical folks shudder at the sight of patents. Poof! So much for sparking new ideas.

2. - The Now. That which is disclosed in a patent application and not claimed is, of course, dedicated to the public. Our shiny new Patent Office rules now place arbitrary limits on the number of claims that can be obtained for a disclosed invention, which has our brightest inventors telling their patent attorneys "naw...let's not disclose that embodiment right now...I'm afraid I won't be able to claim it. " After carefully considering the best mode requirement, many inventors are, I suspect, sending many wonderful alternative embodiments straight to the cutting room floor. So much for encouraging disclosure.

3. - The Future. Combine #2 with an elimination of the best mode requirement - which has been the subject of patent reform bills for the last several years - and you'll get a glimpse of our system of the future. Rubber stamped, narrow protection that fails to encourage much of anything. Ouch.

How's that for promoting progress?

Posted by J Matthew Buchanan at 02:36 PM | Permalink

I suppose they wanted to make sure they read the new rules twice before actually filing the lawsuit against the Patent and Trademark Office.

Posted by J Matthew Buchanan at 11:35 PM | Permalink

Dennis Crouch and Hal Wegner have done some excellent work on tracking the status of the USPTO proposed rules, including the proposed rule that would place an arbitrary limit on the ability to file continuation applications. Since their initial publication, the rules have been the subject of a great deal of debate which, thanks to the Office's secretive handling of the rules following the notice and comment process, has been reduced to rumor and gossip of late.

Now, Dennis and Hal have tracked the rules to the Office of Management and Budget. Following standard procedure, the Office has submitted the rules package to OMB for regulatory review before publication of the final rules.

Here's the real gold star - Dennis even uncovered the details on the process for submitting comments to on the rules to the OMB, which apparently has a policy "to meet with any party interested in discussing issues, whether they are from State or local governments, small business or other business or industry interests, or from the environmental, health or safety communities."

Yep..it's not too late to voice your concerns over the proposed rules. Unfortunately, we have no clue as to the content of the rules package as submitted to OMB thanks, again, to the Office's behavior (one report had a PTO official characterizing them as 'privileged'). In this light, it seems appropriate to assume that the rules haven't changed and that comments to the OMB should focus on the proposed version and the Office's secretive practices following their publication.

Posted by J Matthew Buchanan at 10:04 AM | Permalink

The Court of Appeals for the Federal Circuit recently considered whether arguments made during prosecution of a parent application operated as a disclaimer against a relatively broad claim scope in a subsequently filed continuation application. Judge Newman authored the Court's opinion that, in essence, trimmed claim scope from the continuation claims based on the parent.

While the ability to file the continuation application was not squarely at issue, Judge Newman addressed it with a single sentence that includes some very interesting language:

"Hakim had the right to refile the application and attempt to broaden the claims." (emphasis added)

Characterizing the ability to refile an application to seek broadened claim scope as a right is certainly interesting, considering that the legal status of the Patent Office's proposed rules that would limit the ability to do so remains in limbo and the subject of rumors.

Read the FedCirc.us analysis of the Federal Circuit's opinion in Hakim v. Cannon Avent Group for more detail on the case and opinion.

Posted by J Matthew Buchanan at 06:39 AM | Permalink | Comments (3)

Late last week, the Court of Appeals for the Federal Circuit made it clear that, under current law and judicial interpretation, a patent holder has no Fifth Amendment remedy against the United States government for unauthorized use of a patented invention.  By denying a petition for rehearing en banc in Zoltek v. United States [.pdf], the Court quietly let everyone know that it believes the Fifth Amendment has no place in patent law.  A dissent by Judge Newman and a concurrence by Judges Dyk and Gajarsa helpfully document the issue and, as Crouch points out, possibly help frame it for consideration by the Supreme Court.

With Zoltek as backdrop, these tough questions seem like great food for thought on a Friday morning:

If there is no Fifth Amendment property interest in an issued patent, can there be one in an application for patent?

Can the Patent and Trademark Office commit a Fifth Amendment regulatory taking by finalizing the proposed rule on continuation and RCE limits that essentially eliminates the ability to claim, through continuation practice, properly disclosed inventions in currently pending applications?

While patent holders still have 28 U.S.C. s.1498 as a remedy against the government for unauthorized use of a patented invention, what remedy, other than the Fifth Amendment, does a patent applicant have against the government for arbitrarily limiting his ability to seek protection on his properly disclosed invention?

Is the Patent and Trademark Office celebrating in the wake of Zoltek?

Should we clarify the property interest issue before we finalize the proposed rule?

Posted by J Matthew Buchanan at 07:31 AM | Permalink | Comments (1)

I think he'd tell the Office to focus on its core business...patentability.

Everyone knows that the Patent and Trademark Office is readying its proposed continuation rule for final.  It appears that, soon, we'll be living in a world that is very different than the one we know today.

At first glance, the rule seems like an aggressive attempt by the PTO to address its suffocating backlog.  Remember, though, that John Whealan, Solicitor and USPTO General Counsel for Intellectual Property, has indicated that the rule is not specifically designed to deal with the backlog.  Rather, it's designed to address the problem of 'continuation abuse.'

While we don't know exactly what constitutes 'continuation abuse' yet, I think most people would agree that it relates to repeated use of continuation filings to obtain relatively broad claims long-after the filing date. The practice allows patentees to wait for a technology to be developed by others and then draft claims that cover the commercial embodiments. In essence, the patentee gets the benefit of seeing the commercially developed embodiments and ensuring that his later-filed claims cover the technology.

If it is determined that 'continuation abuse' is a problem that must be dealt with, is the Patent and Trademark Office the proper body to deal with the issue?

In this light, the following dicta from the CCPA's opinion in In re Hogan 559 F.2d 595 (CCPA 1977) is quite interesting. When rejecting a PTO argument asserting that an Examiner should be able to employ evidence of a later state of the art to determine compliance with the enablement requirement, Chief Judge Markey stated:

"The PTO position...reflects a concern that allowance of Claim 13 [a later-added, relatively broad claim] might lead to enforcement efforts against the later developers. Any such conjecture, if it exists, is both irrelevant and unwarranted. The business of the PTO is patentability, not infringement." (emphasis added)

Placing the proposed limits on continuation practice is a drastic move that has significant consequences, both for patent system stakeholders and society at large. Independent of the authority question, it seems to be a sufficiently significant issue that warrants both an investigation to assess the reality of the perceived problem and, if the existence of the problem is confirmed, a political debate on the issue of how best to deal with it.

The Patent and Trademark Office should focus on its business and leave patent reform to Congress.

Posted by J Matthew Buchanan at 02:05 PM | Permalink | Comments (1)

Yesterday, the Senate unanimously confirmed the appointment of Professor Kimberly Moore as a judge for the Court of Appeals for the Federal Circuit. Crouch has a post with several interesting links surrounding Moore and the confirmation vote.

Here are a few things to think about when considering the significance of Professor Moore's appointment and confirmation:

* Professor Moore is not a registered patent attorney. Presumably, that means she has never drafted a patent application, never considered the effects of various prosecution alternatives (e.g., filing a Request for Continued Examination or a continuation application v. filing a Notice of Appeal), never interviewed or dealt directly with an obstinate Examiner, and never helped a client develop an overall prosecution strategy to protect an invention.

* She was recently ranked third on Hal Wegner's list of the Top Ten Activist Patent Professors for 2005-2006. Judge Moore was bested only by Professor Mark Lemley of Stanford and Professor John Thomas of Georgetown.

Judge Moore on continuations "...the world would probably be a better place if continuation applications were abolished."* In 2004, she co-authored a paper with Professor Lemley that is viewed as a genesis of the 'continuation abuse' phenomenon. The conclusion of that paper makes for interesting reading in light of the controversy surrounding the proposed rules:

"Continuation applications have led to abuse of the patent prosecution process. They serve very little useful purpose, and what benefits they confer may be outweighed by their potential for mischief. The world would probably be a better place if continuation applications were abolished. Recognizing, however, that the abuse of continuation practice is not as pervasive as some might think, we propose a number of means by which Congress and the courts could strengthen existing rules designed to limit their abuse while preserving the practice."

I wonder if Judge Moore will ever use the "the world would probably be a better place" rationale to support a conclusion in a Federal Circuit opinion.  We'll have to wait and see...

Posted by J Matthew Buchanan at 08:23 AM | Permalink | Comments (12) | TrackBacks (1)

Now let's see who's really paying attention....did you catch this one? This morning, the Patent and Trademark Office released the list of new appointees to the Patent Public Advisory Committee. Among the new advisors is Mr. David Westergard, a patent attorney with Micron Technology in Boise, ID.

If the name sounds familiar, it should...Mr. Westergard, I think, is becoming the poster boy for the software patent reform agenda. He's been in the public spotlight on a few occassions. Most notably, he recently presented the "need for reform" underlying the proposed rule that would place limits on RCE and continuation practice, stating, in essence, that 'continuation abuse' must be stopped.

John Whealan, Solicitor and USPTO General Counsel for Intellectual Property, spoke at the same meeting and explicitly agreed with Mr. Westergard that 'continuation abuse' is an issue that must be addressed. Interestingly, Whealan noted that the proposed rule has nothing to do with addressing the backlog of pending applications and everything to do with 'continuation abuse.'

Under this new appointment, Mr. Westergard will serve a three year term as an advisor to the Office. While this new advisory role for Mr. Westergard was just announced this morning, I'm betting that he's been advising the current administration for some time, particularly on the evils of 'continuation abuse' and the plague it presents to our society.

Posted by J Matthew Buchanan at 07:21 AM | Permalink | Comments (2)

It's become quite clear over the last several weeks that the Patent and Trademark Office intends to make final the proposed rules relating to initial claim limits and limitations on continuation practice. In Boston a few weeks back, John Whealan, Solicitor and USPTO General Counsel for Intellectual Property, told the IP section of the American Bar Association that the final rules would be made effective in either August or January. Hal Wegner now reports that Jay Lucas, Deputy Commisioner for Patent Examination Policy, announced today at a George Mason program that the final rules package woud be published sometime between Thansgiving and Christmas.

Happy Holidays.

The final content and scope of the rules is still unknown. At this stage, though, it appears that two things are certain - the implementation of the rules, and a lawsuit against the Director questioning the authority to place limits on continuation practice.

Posted by J Matthew Buchanan at 03:32 PM | Permalink

The Patent and Trademark Office's proposed rule that would place limits on RCE and continuation practice has certainly sent shockwaves throughout the patent community.  As we await the Office's response to the comments on the proposed rule, a serious question about the authority to implement such a rule remains.

...does the addition of specific authority to limit continuation applications in the Patent Act of 2005 imply the absence of such authority under current law?There is no question, though, that the Office sees RCE and continuation practice as significant contributing factors to the current backlog of applications.  The Office has been trying to secure appropriate statutory authority to place limits on continuation practice for some time.  Consider Section 8 of the Patent Act of 2005, which would allow the Director to limit the circumstances under which an application is entitled to the benefit of an earlier filing date under 35 U.S.C. section 120, so long as resulting regulations don't "...deny applicants an adequate opportunity to obtain claims for any invention disclosed in an application for patent." (emphasis added)

Here's an interesting thought - does the specific granting of this authority to the Director in the Patent Act of 2005, which is the most significant legislative attempt at comprehensive patent reform to date, imply that the current law does not include such a grant of authority?

E-mail me any comments or questions you have.



For convenience, 35 U.S.C. section 120 and Section 8 of the Patent Act of 2005 are each reproduced below:


35 U.S.C. Sec. 120. Benefit of earlier filing date in the United States
An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this section.

The Patent Act of 2005 (109 H.R. 2795) - SEC. 8. CONTINUATION APPLICATIONS
(a) In General- Chapter 11 is amended by adding at the end the following:
`Sec. 123. Limitations on continuation applications
`The Director may by regulation limit the circumstances under which an application for patent, other than a divisional application that meets the requirements for filing under section 121, may be entitled to the benefit under section 120 of the filing date of a prior-filed application. No such regulation may deny applicants an adequate opportunity to obtain claims for any invention disclosed in an application for patent.'.

Posted by J Matthew Buchanan at 11:48 AM | Permalink | Comments (1)

If you don't yet believe that the fight to make fundamental change to our patent system is moving beyond Congress and onto new battlefields, consider the following observation that a reader, who wishes only to be identified as a Palo Alto patent attorney, submitted to me this week:

The Patent and Trademark Office has published some of the comments that have been submitted in connection with the proposed rule changes.  As of today, April 21, 2006, the listing of comments relating to the proposed limits on continuation and request for continued examination practice includes comments from several individuals.  No comments from corporations have been published. 

The list includes published comments from four law firms.

...four law firms supporting the proposed rules, one common letter...In stark contrast to the comments received from individuals, the comments from each of the law firms are submitted in favor of the proposed rule that would place limits on continuation and RCE practice.  All of the law firm comments share several paragraphs of identical language.  The similarities are so striking that it becomes immediately clear that they very likely arose from a common template.

Is there a common denominator amongst the law firms?

Maybe.  Here's one possibility.  Two of the firms have a significant number of issued patents under their name that are assigned to Intel (14/14 for one; 23/24 for the other).  The third firm has a small group of its patents assigned to Intel (7/253).  Nota Bene - the fourth firm only has two issued patents, neither of which are assigned to Intel.

The source isn't as important as the underlying issue...four letters of support for the new rules are, in essence, one.

It's interesting to note that three of the four published comments include the following statement:

"Unlike individuals expressing their personal views and bar associations stating a consensus position, we also represent our clients' interests who both own patents and have to deal with assertions." (emphasis mine)

The battle for fundamental change is on.  It's on in Congress, it's on in the Supreme Court, and, apparently, it's on in the Patent and Trademark Office as well.

Posted by J Matthew Buchanan at 11:32 PM | Permalink

Comments on the USPTO proposed rules placing limits on continuation practice and on the number of claims for initial examination are due on or before May 3, 2006.  Struggling over the idea of preparing extensive comments?  Don't fret....they've made it easy.  And brief comments are fine.

You can e-mail comments on the proposed continuation rule to AB93Comments@uspto.gov.  Comments on the proposed representative claims rule can be e-mailed to AB94Comments@uspto.gov.

Remember, there will not be any public hearing on either of the rules.  Written comments will be critically important as the Office determines its next moves on these controversial issues (all signs continue to indicate that it prepares to move forward with the proposals....).

Still wondering about the potential effects of these rules?  Start here (continuation limit) and here (representative claims).

Posted by J Matthew Buchanan at 08:43 AM | Permalink

Steve Nipper has summarized views recently expressed in Greg Ahorian's PATNEWS newsletter about the rule changes recently proposed by the Patent and Trademark Office.

Greg's views are certainly interesting. Thanks Steve for presenting them to the blog readers of the world.

Posted by J Matthew Buchanan at 08:13 AM | Permalink

The patent community is still digesting the potential effects of the PTO proposed rule placing limitations on continuation and continued examination practice. The rule stands to have sweeping effects on patent practice, particularly in the industries that rely heavily on these aspects of patent prosecution.

One thing is clear - if the proposed rule is adopted, a surge in application filings is likely to occur just before the effective date as applicants seek to file claims and avoid the dreaded "justify your existence" petition for filing continuing applications. A small surge in filing of Requests for Continued Examinations might also be seen as ripe cases are accelerated to avoid tripping the petition requirement.

It is difficult, if not impossible, to predict the magnitude of the surge that might occur. These exercises can help you gain an appreciation for what might occur:

First, ask yourself what would happen if every single patent applicant was forced to review their pending application(s) for unclaimed subject matter.

Second, ask yourself what advice you will give to your clients that have pending patent applications as the effective date of the new rule approaches (assuming it is adopted, of course).

Third, ask yourself what subject matter is disclosed in, but not yet claimed by, every single patent application for which you are responsible.

As you consider these questions, remind yourself that the standard for the "justify your existence"" petition, as created by the proposed rule, is completely undefined and seemingly arbitrary.

Worrisome, to say the least.

Here's another exercise that helps. The closest real-world example of an application surge is the GATT-induced surge in filings of June, 1995. I pulled some data from the PTO website to create the graph below, which shows the number of applications filed on June 7 of every year from 1990 to 2000. Note that the graph does not illustrate the complete surge because it only includes applications that matured into patents. I presume that many more applications were actually filed.



Over 10,000 applications were filed on June 7, 1995, nearly twenty times the average for June 7 of the other years between 1990 and 2000. The impact of this surge on industry, both in terms of workload and expense, was enormous. The impact of the coming surge, I believe, would rival or even best the GATT surge.

Posted by J Matthew Buchanan at 04:51 PM | Permalink

Several friends have shared their experience and insight from the Patent and Trademark Office Town Hall meeting in Chicago last week. The meeting focused on the rule changes proposed by the Office earlier this year.

A good friend provided the slides from the presentations of John Doll (Commissioner for Patents) and James Toupin (General Counsel) from the meeting. John Doll graciously granted permission for me to make the slides available on the blog.

You can view and/or download a .pdf of the slides here.

I haven't had a chance to review them in detail, but will soon. Feel free to e-mail me with any comments you have on the information presented.

Posted by J Matthew Buchanan at 07:56 AM | Permalink

The Patently-O blog has an excellent review of last week's Patent and Trademark Office Town Hall meeting held in Chicago. The Office held the meeting to present background information regarding the two rule changes it proposed earlier this year. If you're following the development of the radical changes proposed by the Office, the Patently-O post is required reading -- Kevin Noonan, the author, attended the meeting and provides a detailed, blow-by-blow review.

Posted by J Matthew Buchanan at 11:17 PM | Permalink

Quick - how many inventions are disclosed in your portfolio of patent applications currently pending before the United States Patent and Trademark Office? How many of those inventions have actually been claimed? Do you have claims on file of proper scope to cover your current commercial products? Your next generation products? Your competitor's products?

If you can't even come close to answering those questions, don't worry...yet. You're not alone. It's common practice to disclose multiple inventions in a patent application and then use legitimate continuation practice to seek protection on those inventions in subsequent applications that claim priority to the original application. It's also common to use continuation practice to seek claims of varying scope. These uses of continuation applications are especially common in the biotechnology, pharmaceutical and medical device industries where inventions are typically complex, commercial viability is difficult to predict, and product development lifecycles are frequently long.

But the USPTO's proposed rule limiting continuation practice could put an end to these strategies.

Now you can worry.

To make matters worse, the proposed rule would apply to applications filed on or after the effective date of the rule, if adopted. What does that mean? In essence, beginning on the effective date of the rule, any application that is a third or subsequent application in a chain must be accompanied by a petition providing justification for its existence. Oh, and another thing...the standard for the justification you must provide...it's perfectly undefined.

Now you can really worry.

If adopted as proposed, the new rule would force all companies that make use of legitimate continuation practice to review their entire portfolio of pending applications and determine which continuations should be filed before the effective date of the rule. This would result in great expense and administrative burden and would likely translate into a massive surge in filings during the weeks, days, and months before the effective date of the rule. If a company elects to avoid the time and expense of reviewing the portfolio and filing continuations, it will risk losing the ability to seek protection because the burden that must be satisfied under the proposed "justify your existence" petition is not known.

So, for corporate counsel, the proposed rule creates a largely unpredictable expense and a tremendous fear of the unknown.

Now you can really, really worry.

What should you do?

First, understand the proposed rule and its potential effect on your patent application filing strategy. Biotech, pharma, and medical device companies should pay particular heed. You can view and/or download the Federal Register Notice of the proposed rule here.

Second...contact your intellectual property trade association of choice and get involved with its coordinated effort on the issue.

Third, consider filing comments on the proposed rule. Written comments can be sent by e-mail to AB93Comments@uspto.gov and must be received on or before May 3, 2006.

Fourth, cross your fingers. This is, after all, administrative rule-making.

Posted by J Matthew Buchanan at 07:14 AM | Permalink

Earlier this month, the PTO released a proposed rule presenting major changes to continuation and continued examination practice. In Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims (Fed. Reg. 71: 48-61 (January 3, 2006)), the Office proposes to require justification for filing of second and subsequent continuations (and Requests for Continued Examination - RCE's). In essence, the proposed rule limits the ability of an applicant to file third and subsequent applications in a chain.

If the proposed rule is adopted in current form, an applicant must submit a petition, and a fee, that includes a showing to the satisfaction of the Director that the amendment, argument, or evidence to be pursued in the continuation or RCE could not have been submitted prior to the close of prosecution in the application. The proposed rule does not give criteria or examples of showings that would satisfy the burden. It does, however, specifically indicate that a refusal to enter an amendment submitted after prosecution is closed will not qualify.

For RCE's, new section 1.114(f) is the crux of the proposed rule change:

"An applicant may not file more than a single request for continued examination under this section in any application, and may not file any request for continued examination under this section in any continuing application...unless the request for continued examination also includes a petition accompanied by the fee set forth in 1.17(f) and a showing to the satisfaction of the Director that the amendment, argument, or evidence could not have been submitted prior to the close of prosecution in the application."

The same burden is placed on applicants for continuation applications by changes made to section 1.78.

It's difficult to fully assess the effect the proposed rule will have on continuation and RCE practice without knowing the extent of the burden that must be satisfied for third and subsequent filings in a chain. The preamble indicates that one of the purposes behind the proposed rule is to "allow the Office to focus its patent examining resources on new applications instead of multiple continued examination filings that contain amendments or evidence that could have been submitted earlier." Based on that, it seems safe to assume that the required "showing" will carry a relatively high burden.

It is, however, relatively easy to see some of the effects the proposed rule might produce in other areas. First, if the rule is adopted, it's probably safe to assume that appeals would increase. The PTO anticipated this effect and addressed it in the preamble with a discussion of recent changes made to bolster the appeal process ("..the appeal process offers a more effective resolution than seeking further examination before the examiner."). Second, at least initially, a flood of petitions would likely be filed until the extent of the burden is truly known.

Finally, given that the proposed rule would be applicable for all continuation applications and RCE's filed on or after the effective date of the final rule, an enourmous bolus of continuation applications would likely be filed in the months, weeks, and days before the effective date of the rule. This surge in application filings would likely rival or even exceed the surge of June 7, 1995 when applicants raced to the Office to avoid the new patent term measured from the filing date instead of the issue date. Undoubtedly, the surge would significantly increase the backlog of applications currently present in the Office.

Comments on the proposed rule must be received by May 3, 2006. You can view and/or download a .pdf of the proposed rule here.

Posted by J Matthew Buchanan at 04:14 PM | Permalink