After some persistence, the PTO revealed the substance of the new continuation rules to Dow Jones reporter Stuart Weinberg:
Applicants will have the right to file two so-called continuations and one request for continued examination. Applicants seeking additional continuations will need to explain why the request is necessary. Current practice allows applicants to file an unlimited number of continuations. . . . [The PTO also] plans to limit the number of claims an applicant may include in an initial application to 25. Applicants that include more than 25 claims will be required to include a prior-art search, a detailed report that explains how their invention differs from what’s already in the public domain. The new rules, which will be published on the PTO’s Web site Tuesday [August 21], are scheduled to go into effect Nov. 1.
…The number of continuation requests has been rising in recent years. In 2006, almost 30% of applications were devoted to continuation requests, up from 27% in 2005 and 25% in 2004, Peterlin said. . . . Peterlin alluded to misuse of continuations when discussing the pending rule changes. “What we have found is, sometimes, people engage in a little
post-filing research,” she said, adding that, while this may make good business sense, it doesn’t make for an effective patent system.
Although we have not seen the final rules, it appears that applicants will not be losing rights at the time the final rules are published. Rather, the new rules will become effective on November 1, 2007. Do expect the rules to be retroactive in that they will apply to pending applications.
U.S. Patent Office To Unveil New Continuation Rules Monday
By Stuart Weinberg
Of DOW JONES NEWSWIRES
TORONTO (Dow Jones)–The U.S. Patent and Trademark Office will unveil Monday
long-awaited, and controversial, rules that limit the number of times patent
applicants can seek reexamination of patent claims.
Applicants will have the right to file two so-called continuations and one
request for continued examination. Applicants seeking additional continuations
will need to explain why the request is necessary. Current practice allows
applicants to file an unlimited number of continuations.
The change is part of a broader initiative to make the patent-application
process more efficient and reduce the PTO’s application backlog, which stands at
about 750,000, according to the PTO. For instance, the PTO will also say Monday
that it plans to limit the number of claims an applicant may include in an
initial application to 25. Applicants that include more than 25 claims will be
required to include a prior-art search, a detailed report that explains how
their invention differs from what’s already in the public domain. The new rules,
which will be published on the PTO’s Web site Tuesday, are scheduled to go into
effect Nov. 1.
“We have an obligation to make sure the system is efficient from start to
finish,” Margaret Peterlin, Deputy Under Secretary of Commerce for Intellectual
Property, told Dow Jones.
Continuations are typically filed by patent applicants when an examiner
rejects some or all of the claims in an application. For instance, if an
application has 20 claims and an examiner approves the first 10 claims, but
rejects the second 10, the applicant can file a continuation arguing the
validity of the rejected claims. A request for continuing examination allows
applicants to reopen an examination after a final rejection has been issued.
In addition to allowing applicants to state their case, continuations allow
applicants to retain their original application date. In other words, if an
applicant submits a patent application in January 2007 and subsequently files
several continuations that take years to process, the ensuing patent – assuming
one is granted – takes the January 2007 filing date. This is important because
it allows the invention to predate other inventions that may have been created
in the interim.
The number of continuation requests has been rising in recent years. In 2006,
almost 30% of applications were devoted to continuation requests, up from 27% in
2005 and 25% in 2004, Peterlin said.
Original Proposal Generated Strong Reaction
The proposal to limit continuations was first issued in December 2005. The
original proposal gave applicants the right to file only one continuation, no
matter what form the continuation took. It generated strong reaction, both
positive and negative, from various industries that rely on the patent system.
The “PTO’s proposed rule changes will adversely impact innovation, especially
in the biotechnology sector by inhibiting the ability of innovators to obtain
adequate coverage on their inventions and to attract financing for products that
often take a relatively long time to reach the market place,” the Biotechnology
Industry Organization, which represents more than 1,100 U.S. biotech companies,
wrote in a May 2, 2006 letter to the PTO.
The Business Software Alliance, whose members include Microsoft Corp. (MSFT),
International Business Machines Corp. (IBM) and Apple Inc. (AAPL), supported the
changes. “As frequently noted by legal scholars there is no other mechanism in
the U.S. legal system that provides endless bites at the apple,” the BSO wrote
in a May 3, 2006 letter to the PTO. “The terrible truth is that the current
system provides no finality to the review process, encourages unlimited chains
of applications and anticompetitive market place abuses.”
The letter doesn’t delve into specifics, but several patent-law experts told
Dow Jones that companies sometimes use the benefit of hindsight afforded by
repeated continuation filings to extend the scope of their inventions to cover
Peterlin alluded to misuse of continations when discussing the pending rule
changes. “What we have found is, sometimes, people engage in a little
post-filing research,” she said, adding that, while this may make good business
sense, it doesn’t make for an effective patent system.
Critics of the original proposal expressed concern that the limits on
continuations and claim filings would stifle innovation, as inventors would be
forced to narrow the number and scope of their patent claims and have just one
chance at a continuation. The changes could also make it more costly for small
inventors and start-ups to submit applications, particularly if an in-depth
prior-art search is necessary, critics said. It remains to be seen whether the
right to file a second continuation will mollify their concerns.
Critics also said the new rules don’t offer clear guidelines as to what
justifies a legitimate request for additional continuations. Furthermore, they
question whether the proposed changes will reduce the PTO’s backlog or simply
lead applicants to seek other means of prosecuting their patents. For instance,
the number of appeals to the PTO’s Board of Patent Appeals and Interferences is
sure to rise, critics said.
Some critics also argued the PTO doesn’t have the right to change the law,
claiming this right resides with U.S. Congress. Peterlin poured cold water on
this argument, saying the PTO consulted with members of Congress and with the
Office of Management and Budget before proposing the changes. “It’s not as if
the PTO would just rush out with something that we weren’t allowed to,” she
said. “That being said, do I expect people to challenge us? Absolutely.”
Company Web Site: http://www.uspto.gov
-Stuart Weinberg, Dow Jones Newswires; 416-306-2026;
(END) Dow Jones Newswires
Copyright (c) 2007 Dow Jones & Company, Inc.
|August 20, 2007
USPTO to Publish Measures to Improve Patent Quality
The Department of Commerce’s United States Patent and Trademark Office (USPTO) will publish tomorrow in the Federal Register new rules that will allow the agency to continue to make the patent examination process more effective and efficient by encouraging applicants to use greater precision in describing the scope of their inventions. The new rules will be effective on November 1, 2007.
“Patent quality is the shared responsibility of applicants and the USPTO,” noted Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office. “Higher quality applications result in a more effective examination. These rules better focus examination and will bring closure to the examination process more quickly, while ensuring quality and maintaining the right balance between flexibility for applicants and the rights of the public. The U.S. patent system plays a tremendous role in motivating innovation, and these changes to examining patent applications will help ensure that America remains on the leading edge in the knowledge driven global economy.”
The new rules have been modified, relative to the rules that were originally proposed early last year, in response to the extensive comments the USPTO received from the public. Under the new rules, applicants may file two new continuing applications and one request for continued examination as a matter of right. Also, under the new rules, each application may contain up to 25 claims, with no more than five of them independent claims, without any additional effort on the part of the applicant. Beyond these thresholds, however, the new rules require applicants to show why an additional continuation is necessary or to provide supplementary information relevant to the claimed invention to present additional claims.
Placing conditional boundaries on a previously unbounded process provides for more certainty and clarity in the patent process. The result is that application quality will be improved and piecemeal or protracted examination will be avoided, enhancing the quality and timeliness of both the examination process and issued patents.
The new rules are available today to anyone who visits the Federal Register office and will be available tomorrow, August 21, 2007, no later than noon, on the USPTO Web site — www.USPTO.gov . In the coming weeks, the USPTO will be conducting outreach on these new rules to better inform external stakeholders of their content and to answer questions. A webinar on the new rules is scheduled for Thursday, August 23, 2007. For more information on this webinar and other upcoming information sessions, go to www.USPTO.gov