USPTO rule change regarding continuation practice…hope you like it.

March 6, 2006 on 10:39 pm | In Legislation/Regulation, USPTO |

Matt Buchanan blogged earlier this year on PTO proposed changes to continuation and continued examination practice. The regulations that Matt were referring to were: 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)). In a nutshell, the proposed regulations would limit an applicant’s ability to file any more than one continuation (read Matt’s post for the scoop).

The USPTO’s Federal Register summary notes:

SUMMARY: Continued examination practice, including the use of both continuing applications and requests for continued examination, permits applicants to obtain further examination and advance an application to final agency action. This practice allow applicants to craft their claims in light of the examiner’s evidence and arguments, which in turn may lead to well-designed claims that give the public notice of precisely what the applicant regards as his or her invention. However, each continued examination filing, whether a continuing application or request for continued examination, requires the United States Patent and Trademark Office (Office) to delay taking up a new application and thus contributes to the backlog of unexamined applications before the Office. In addition, current practice allows an applicant to generate an unlimited string of continued examination filings from an initial application. In such a string of continued examination filings, the exchange between examiners and applicants becomes less beneficial and suffers from diminishing returns as each of the second and subsequent continuing applications or requests for continued examination in a series is filed. Moreover, the possible issuance of multiple patents arising from such a process tends to defeat the public notice function of patent claims in the initial application.

The Office is making every effort to become more efficient, to ensure that the patent application process promotes innovation, and to improve the quality of issued patents. With respect to continued examination practice, the Office is proposing to revise the patent rules of practice to better focus the application process. The revised rules would require that second or subsequent continued examination filings, whether a continuation application, a continuation-in-part application, or a request for continued examination, be supported by a showing as to why the amendment, argument, or evidence presented could not have been previously submitted. It is expected that these rules will make the exchange between examiners and applicants more efficient and effective. The revised rules should also improve the quality of issued patents, making them easier to evaluate, enforce, and litigate. Moreover, under the revised rules patents should issue sooner, thus giving the public a clearer understanding of what is patented.

The revised rules would also ease the burden of examining multiple applications that have the same effective filing date, overlapping disclosure, a common inventor, and common assignee by requiring that all patentably indistinct claims in such applications be submitted in a single application.

The changes proposed in this notice will also 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, and thus allow the Office to reduce the backlog of unexamined applications.

This will mean faster and more effective examination for the vast majority of applicants without any additional work on the applicant’s part. Additional resources will be devoted to multiple continued examination filings only where necessary.

Comment Deadline Date: To be ensured of consideration, written comments must be received on or before May 3, 2006. No public hearing will be held.

Recently, Greg Aharonian of the free PATNEWS newsletter covered a townhall meeting the PTO did on the proposed regulations. The writing style is distinctively Greg’s, but the points he makes regarding the impact on small entities turns my stomach.

20060302 PTO management admits desperation at Berkeley Town Hall

Tuesday afternoon, the PTO had a townhall at UCBerkeley, with regards to the proposed rules changes regards to continuations and claims. It was so surreal to the extent that I left the meeting pitying PTO management.

<snip>

- PTO management will be imposing the rules changes, no matter what

It was obvious from the comments made by PTO management that they are going to implement the rules changes no matter what. They have no other ideas on how to improve things. In the words of Patent Examination Director Jay Lucas, they are “desperate”. And they are.

<snip>

- The rules changes will hurt small entities financially

Many of the speakers were lawyers representing small and independent inventors. And pretty much all of them oppose the proposed rules because it will hurt their clients in terms of increased costs for appeals, divisionals, etc. But then who cares - small entities don’t have much money to be important anyway.


So…if Greg is right, you can count on the rules changes being implemented. If Greg is right, Matt predicts a surge in patent application filings like was experienced back in June of 1995.

Of course, you still have until May 3, 2006 to submit your comments to the rule…

[Update:  Dennis Crouch at PatentlyO has additional information of note.]

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4 Comments

  1. I was at the town hall meeting in Chicago, but not in Berkeley. Based on what was said in Chicago, and apparently also in Berkeley, the proposed continuation rule is not really about reducing the backlog, although the proposed rules notice reads like that’s the main purpose. Instead, the rule is intended to effect a policy change (preventing use of continuations to broaden claims), and the backlog is just a convenient justfication that enables the PTO to avoid the debate about whether that change in policy is appropriate. That’s disturbing.

    This rule will cripple the small inventor, who needs a patent that has a chance of withstanding litigation. Large entities use patents mainly for cross-licensing purposes where patent quantity, not quality, is important. And large entities are often the preferred targets of infringement suits by small inventors, so large entities would benefit from limiting small inventors’ ability to maximize the value of their patents. Undoubtedly it’s large entities who are behind the scenes lobbying the PTO to make this change.

    Comment by Anonymous — March 7, 2006 #

  2. “But then who cares - small entities don’t have much money to be important anyway. ”

    The above comment displays ignorance concerning recognized policy goals toward stimulus for the primary engine of economic growth in our economy.

    Comment by anonymous — March 7, 2006 #

  3. I was at the Berkeley townhall meeting. My take was a little different than these others. I heard the PTO saying, “The system is broken–it can’t be business as usual. This is what we’ve come up with–tell us what you think we can do to address the backlog problem.”

    Almost uniformly, there were no constructive suggestions from the patent lawyers–only criticisms to the proposed changes.

    As far as the proposed laws affecting small entities disproportionately–that may be true as far as needing to do appeals, rather than RCE’s (which are more expensive). But, I don’t really think it was the law’s original intent that people be able to look at other people’s innovations, and if it comes close to one of their pending applications–file a continuation to claim it as their own.

    One of the attorneys at the Berkeley meeting had the timerity to say that he represents small entities and they need more RCE’s because they often don’t know exactly what the invention is until several cycles into prosecution.

    Comment by Steve Guttman — March 8, 2006 #

  4. Hi,
    I am an Australian self filer with a US Prov in the Biotech field. I am unsure of my US filing options that best provide the earliest priority date for in vivo claims. I was hoping you could help me sort through the alternatives. I know it is off topic but I would very much appreciate the help. I wont hold you legally responsible for any suggestions your make.
    Here are the alternatives. What will be the priority date for in vivo claims?

    (1): US prov1 (September 2005) in vitro examples, in vivo prophetic examples –>PCT (September 2006)including in vitro examples + in vivo example –> US national phase.

    (2) US prov1 (September 2005) in vitro examples, in vivo prophetic examples –>US complete application (September 2006) including in vitro examples + in vivo example –> US national phase.

    I may file a second prov (US prov2) which includes in vivo data and claim priority from both provisionals in the complete application. Will this make any difference? What will be the priority date for in vivo claims?

    (3) US prov1 (September 2005) in vitro examples, in vivo prophetic examples + US prov 2 (April 2006) in vitro examples + in vivo example –>PCT including in vitro examples + in vivo example (September 2006)–> US national phase.

    (4) US prov1 (September 2005) in vitro examples, in vivo prophetic examples + US prov 2 (April 2006) in vitro examples + in vivo example –>US complete application including in vitro examples + in vivo example(September 2006)

    Thanks in advance,

    David.

    Comment by David — March 14, 2006 #

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