Patent Office Proposes Sweeping Changes to Examination Rules (Comments Welcome)

Buoyed by the evidence presented by professors Mark Lemley and Kimberly Moore, the PTO has proposed a set of sweeping changes to curb the “problem of continuation practice.” 

CHANGE IN CONTINUATION PRACTICE: The First proposed rule change would make the following changes: 

  1. Any second or subsequent continuation, CIP or RCE must include “a showing to the satisfaction of the Director as to why the amendment, argument, or evidence could not have been submitted prior to the close of prosecution after a single continuation, CIP or RCE”; and
  2. Multiple applications that have the same effective filing date, overlapping disclosure, a common inventor, and a common assignee must include either (i) an explanation to the satisfaction of the Director of how the claims are patentably distinct, or (ii) a terminal disclaimer and explanation to the satisfaction of the Director of why patentably indistinct claims have been filed in multiple applications.

CHANGE IN EXAMINATION OF CLAIMS: The PTO has proposed that examiners focus their initial examination solely on a set of “representative claims” that are designated by the applicant for initial examination.  According to the PTO,

The changes proposed in this notice will allow the Office to do a better, more thorough and reliable examination since the number of claims receiving initial examination will be at a level which can be more effectively and efficiently evaluated by an examiner.

Applicants that do not include designations of representative claims will be delayed.

The PTO has requested comments that can be e-mailed to and for the continuation practice changes and claim examination practice changes respectively by May 3, 2006.


20 thoughts on “Patent Office Proposes Sweeping Changes to Examination Rules (Comments Welcome)

  1. 20

    I have to agree with Skeptical Attorney. I am a patent agent with primary field of art in software and electronics. The quality of examination, especially initial examination will make some of the worst third world countries proud. The average quality of the examiner corps is dropping fatser than a speeding buleet (going straight down), and nowadays a restriction is in most cases a kneejerk reaction with over 90% of the cases I see. I suspect it is a side effect of the count system.

    If the Office wants to cut on “rework” there are two simple ways of achieving this goal, one of which will also achieve the goal of reducing the number of claims:

    1) Start following the law. Both 35 U.S.C and 37 CFR require that a restriction may only be placed when an invention is BOTH independent AND distinct. In ALL cases I have seen, and actually in the MPEP, the Office blatantly ignores this requirement and imposes restriction for inventions that are independent OR distinct. During public comments period the Office came out with four different methods to address the number of restriction requirements. one of them was to follow the law, and the Office explicetly stated that it is not a reasonable option and will refuse to consider it. Naturally I see that approach as extreme arrogance and an overstepping of its boundries. The Office should place itself UNDER the law, not above it. It may loby to change the law, but it can not reject the existing law wily nilly as it did. If it will try to change the law, my personal favorite is the unity of invention standard which it already accepted for PCT based applications.

    if less unjustified and ilegal restrictions will be issued, the Office will see less ‘rework’.

    2) For both reducing restrictions, rework and the total number of claims in an application, the Office should allow multiple dependent claim to depend from other multiple dependent claims ( will require change in 35 USC 112, but I think it will be a very minor one).

    There is nothing wrong (other than the issue of collecting more fees for extra claims, fees they say they do not want) with multi on multi claims. In Europe and other parts of the world this is done as a matter of course. The Examiner will examin the independent claims and each dependent claim as if it dependened on the claim directly closest to it in the claim dependency tree. This will allow practitioners to cut the number of claims by a factor of 10 or more while still providing decent protection to their clients (maybe even meet the 10 claim so desired by the Office), will not preclude good and easy examination, reduce examiner workload, and will not in any way hurt the clarity of the claim.

    The underlying problem is that there is a concerted assult on patents and patentee rights in the system, while strenghtening the copyrights. This effort has been going on since the “1999 Damn The American Inventor Act”. This attack has been carried out in two fronts – the legislative branch by chipping away at the capacity of a small inventor to gain proper protection (as to the person that claimed Mr. Reiley failed to show different effects for smal and large entity, have you considered the cost of the solution available only to the large entity? File 10 applications each with 10 claims? Do you consder that a fair option for the individual inventor that already compromises his protection because of extra claim fees?) and the PTO on the other. It culminatied with the previous lunatic we had for a commissioner, with his proposal for geometrically increasing fees claim fees, etc. Unfortunately it looks like his spirit is still alive and kicking in the halls of the USPTO as can be seen by the current proposed rule change.

    BTW, for those that may not have figured it out yet, I am somewhat opposed to the proposed rulling.


  2. 19

    I don’t see how the proposed changes could have any positive impact. My practice is primarily related to computer tech/software prosecution and I have found that nothing worthwhile is allowed in two office actions. Generally, the first action rejects the claims with questionable art, thus, forcing the practitioner to respond with arguments as to why the claimed invention is patentable over poorly applied art. To which I have found the Examiners simply cut and past their previous rejections and add arguments not persuasive. No serious consideration is given and there is no incentive for such consideration at that point in the process.

    So the practitioner is then left with little option but to attempt to further the prosecution via RCE in the hope of having an Examiner actually consider one’s points. Only upon filing an RCE do I find the Examiner is actually willing to review the cited art and then usually applies new, more relevant, art, thus, continuing the process again. So until the Examination process is improved, i.e., better art is initially applied and consideration given to applicants’ remarks, can a shortened examination prove successful.

  3. 18

    The underlying problem is the ability of the PTO to examine a large volume of patents, with consistly high quality of review. No proposed administrative or legal measure indicates that this trend will subside, thus this is a problem with 100% potential for further exacerbation over time.

    It is here that we should consider privatization of the examination process.
    Why not outsource patent examination?

    At the very least, it would force the PTO to come up with examination guidlines that are practical, learnable, and controllable.
    Patent examiners would become licensed via an examiner’s bar exam. Anyone with a license could apply to the PTO for examination work. Technology would ensure that examinations could be done 24/7 (alone 3 shifts adding vast capacity for examination). This would not only be faster, but much cheaper as well.

    Just my $0.02 worth of input.

  4. 17

    Regarding anonymous’ post, I believe the interference counter rules have changed, and do change from time to time, but the counter rules for appeals are the same as they have been since 1976 I believe. The examiner gets the counter when the Appeal Brief is entered into the system, not after it is decided.

    On the surface it may seem logical that reducing the number of continuations will somehow “free up” the examiner’s time to prosecute the new cases and as a consequence, reduce the backlog. This logic, however, is premised on the assumption that continuations somehow contribute to the backlog. They do not, and the patent office has not shown how they do. So even if you eliminate them entirely, you still won’t cure the backlog issue, which is caused by other reasons (e.g., its a new technology area (software, etc.), there is little prior art which makes it harder to examine, and there are a lot more new applications filed (the pipeline has not developed yet for continuations to be filed and reduce the backlog). Again, this has happened historically numerous times with every new technology, the backlog “problem” is the same in every instance, and the backlog goes away in 5-10 years every time. And through it all, the percentage of continuations filed per new case has remained about the same.

  5. 16

    With regards to the two previous posts, the issue of appeals and interferences is that those procedures do not lead to the second count, but rather delay prosecution (from the examiner’s perspective) until they are complete. After completion of the appeal, for instance, the examiner may allow the case or abandon the case and receive the second count. The office usually offers the examiner some time (not counting towards his or her production) to work on appeal, but no counts are given. In this way, it is easier to think of those actions as similar to a Final Rejection. Final Rejections also do not result in a count, but subsequent actions will.

    As for the relationship between continuations and office production, the issue is decreasing the overall number of continuations. If the office is capable of producing a set number of “counts” per year, then each case that requires less counts per completion increases the number of cases prosecuted in a year. This clearly shifts the emphasis on the applicant to prosecute cases more succinctly, and I can’t testify to whether it will lead to higher quality patents, but it certainly should increase overall production. Remember that a production increase of only 7% is still a substantial gain in the view of the office.

    Also with regards to the issue of what areas of the art are benefiting the most from the changes, the office does shift work laterally in cases where some groups are in a work shortage. That however, has rarely been the case.

  6. 15

    patentdood, the link is here (I think you added a period at the end):

    link to

    Particularly troubling to me is the lack of any guidance of what constitutes an acceptable reason for filing a continuation or similar application.

    This is yet another idea being thought up by someone who is not working in the trenches and for all of the reasons noted in the prior posts, I fail to see why it is helpful for anyone, particularly the US patent system. With this type of narrow minded decision making we got e-pave and the unfriendly, trap-filled, non-pdf electronic filing system.

  7. 14

    With respect to the above post, unless the quota system has changed since I left the PTO 15 years ago, an examiner receives the second counter upon disposal of the case, which means upon abandonment, allowance, or appeal (i.e., for an appeal of a rejection, or for an interference). A good explanation of the production quota system can be found at link to (I tried the link but for some reason it did not go through – sorry). I’m not sure who posted it, but it is pretty much as I remember it.

    Placing the counter issue aside, I still do not see a correlation between continuation practice and the backlog, or continuation practice and patent quality. In fact, an interesting article published by Cal Berkely entitled “Valuable Patents,” (which includes Lemley and Moore as authors), concludes that the most valuable patents resulted from more than 2 continuation applications (I can’t recall the exact number). Somehow, the authors conclude later in the article that the PTO should abolish continuation practice, despite their argument earlier in the article that patent policy should favor valuable patents – those resulting from multiple continuation applications.

    I also do not see how removing the second continuation application for most applicants, save for the select few who file the requisite petition, fee, and showing to the satisfaction of the Commissioner (bear in mind the statement in the proposed rules that an examiner’s refusal to enter an amendment, argument, or evidence will not, in itself, be a sufficient showing to the satisfication of the Commissioner)will somehow solve the backlog issue. Recall that these second continuations only account for less than 7% of all filings, most of which I suspect are not even in the arts where the backlog is the greatest (the backlog is in the newest technology areas where the patent application pipeline has not yet developed to the point of producing the average number of continuations). I do not have the data, however, so I could be wrong here.

  8. 13

    Some comments with regards to the above post.

    First there appears to be some errors with regards to the issues of “counters”. To the best of my knowledge, examiners only receive counts in two ways. A first count on the first action on the merits of the case (first rejection or first action allowance) and a second count on the disposal (abandonment or allowance – including a second count for a first action allowance). No counts therefore are presented for appeals or interferences independent of those for the listed situations.

    Second, with regards to the issue of counts and its effect on the backlog, giving an additional 2 counts per continuation to examiners just means that the examiner is then precluded from examining a separate invention for each continuation filed. Given a limited number of qualified examiners, this subsequently reduces the total number of inventions that can be examined per time period.

    The office has stated that even with the hiring of 1000 new examiners over the next 4 years, the increased production will not be enough to reduce the growth of the patent backlog, and the time from file to decision will grow beyond that which is reasonable and practical to encourage public disclosure. First thing of note, is that the goal of 1000 examiners per year was barely met over the past two years, when the economy was in greater distress. It is going to be difficult to maintain this level of hiring in a growing economy. Additionally the influx of examiners outstrips the offices ability to train those examiners. It would be unrealistic to think that this will not lower the overall production of the office; especially considering the office relies on the most experienced (and most productive) examiners to train new hires for periods of about 2 years each. Certainly the office could attempt to raise the pay of its examiners to increase its ability to hire and retain examiners, however the competition for those positions is the private sector, and their ability far out paces the public sector’s ability to increase pay. Further, any increase in pay would have to be approved by the federal govt. This seems unlikely.

    After the fee increase, the office has not made any comments that would lead one to believe it feels that money is the limiting factor in decreasing pendency. Fee diversion doesn’t appear to address the issues the office currently faces, though it certainly has contributed to them.

    Thirdly, there seems to be some confusion with regards to limiting the filing to ten representative claims. Filing more than ten claims is certainly not prohibited or requiring any statements by the applicant. Instead, the “examination” is limited to ten selected claims. If the case consist of 100 claims, of which 10 are independent, the case could still be allowed on first action if the 10 independent claims were found to be allowable.

    Finally, the office has stated that in order to file more than two continuations the applicant will be required to petition to the director his reasoning why the issues presented in the subsequent continuation could not have been presented at an earlier time. While not necessarily allowable under the statute, it certainly isn’t requiring the applicant to argue against interest as suggested.

  9. 12

    Not only are neither Lemley nor Moore registered patent attorneys (both professors of patent law I believe), but their article, and the articles they cite as authority, contains fundamental misunderstandings of patent prosecution. I was quite surprised to see the PTO, which apparently does understand patent prosecution, rely on the article. Here’s the misunderstanding. Citing J. Thomas’ papers, they assert that examiner’s only get a credit (“counter”) when they finally dispose of a case, which can only happen when they allow it (we patent practitioners know this to be false – you get a counter for an abandonment, appeal, and interference). Because professor Thomas wrote in a 2001 article that an examiner gets 2 counters per disposal, and that the examiners get one counter for the first action, they all incorrectly assume that applicants can repeatedly refile the same claims and arguments to eventually “wear down” the examiner until the examiner finally caves to get that second counter. Otherwise, the examiner will never get the second counter. Any registered patent practitioner or patent examiner would know this, but not necessarily a professor of patent law.

    Ironically, it is the examiner’s incentive system that makes it quite desirable for the examiner when an applicant files a continuation. The examiner gets a free counter for the abandonment, and then a counter for the first action, which typically takes very little time (Lemley, et al. and the PTO allege that examiners have to “rework” the application, but this also is not accurate). Any examiner would love the situation where an applicant just refiled the application with the same claims and arguments since it would require no work, and the examiner gets two counters (this scenario only happened to me once in 4 years as an examiner). Presumably, the PTO would not mind this either since it would increase its application fee income, which accounts for about 30% of all of the PTO fee income.

    The PTO also alleges that the increase in continuations poses a burden on the office and precludes examiners from acting on new cases, thereby contributing to the backlog. But I’ve researched issued patents back to 1970, and the average percentage of continuations filed (for patented cases anyways) was about 27.5%, and it has not changed that much. Moreoever, the backlog only exists in 2 technologies – software and electronics, which is not surprising to most patent practitioners – and the PTO has not provided any evidence that more continuations are filed in these technologies. The PTO faces backlogs like this whenever there is a new technology. In the 1950’s and 1960’s it was polymers, in the 1980’s and 1990’s it was biotechnology, and now its software. The backlog has nothing to do with continuation applications (interestingly, the Fed. Reg. notes that 2nd generation continuations only account for 3.7% of filings for continuations, and 3.1% for RCEs – so how does that contribute to the backlog, and how does elimination of these continuations get rid of the backlog?). New technologies with little prior art are harder to examine, and always create a backlog that takes the PTO 5-10 years to remove.

    The proposed changes will have the opposite effects of neary every anticipated effect stated in the Fed. Reg. Patents will take longer to issue b/c applicants will appeal everything now, petition every premature final rejection, file mandamus actions, etc. The relationship between examiner and applicant will become more acrimonious b/c applicants will not be willing to cave in to a rejection in hopes of filing a continuation to prosecute the broader invention. They will contest everything. The backlog will mount, and the PTO will start losing money.

  10. 11

    Why throw the baby out with the bathwater? (“fools who by trying to rid themselves of a bad thing succeed in destroying whatever good there was as well.”)

    I am a Registered Patent Agent (and former Patent Examiner). I first heard about the USPTO’s plans to restrict the supply of applications and claims at the Intellectual Property Owners (IPO) Association PTO Day in Washington in early December 2004. Specifically, the USPTO seeks to but barriers up for an Applicant who wishes to have more than two continuations, more than 10 independent claims and more than 25 references in an Information Disclosure Statement (I’m not sure if the USPTO is pursuing the latter).

    This is a stream-of-consciousness style response, but I hope it will facilitate discussion of this very important proposed rulemaking.

    Proposed change #1: “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.”

    Proposed change #2: “The Office is also proposing that if an application contains more than ten independent claims (a rare occurrence), or if the applicant wishes to have initial examination of more than ten representative claims, then the applicant must provide an examination support document that covers all of the independent claims and the dependent claims designated for initial examination.”

    A rare occurrence? That strikes me as irrelevant. It’s like saying, it’s rare for someone to want to have a 3,000 square foot home; therefore, if you want a 3,000 square foot home, you need to make an argument as to why you need a bigger home and why your application should be denied by our home application examiners, because we’re having trouble processing all these applications for 3,000 square foot homes. We think people who want average sized homes are getting a raw deal, so we’re going to punish people who want big houses.

    In order to file more than two continuations or more than 10 claims, the USPTO apparently wants Applicants to first go on the record and argue against the merits of their own invention. What does this do to the Doctrine of Equivalents when the Applicants are effectively forced to do an element-by-element analysis of every claim beyond 10? This requirement would seem to destroy any potential Doctrine of Equivalents for every claim element! I guess, if these rule changes go through, we can home for a reexamination of Festo and a broadening of the Doctrine of Equivalents, especially since such admissions would be effectively manditory.

    What’s the impetus? Congress passed the so-called “14/4/4/4/36” requirements with the American Inventors Protection Act (AIPA) a few years back, which put pressure on the Examining Corps to finish a first action in 14 months, to complete a reply in 4 months, to complete appeals and issuance related tasks in 4 months, and to complete prosecution in 36 months. A day-for-day term extension is granted if these goals are not met, minus any delay requested by the applicant. For term extension purposes, RCEs do not count as a new application; continuation applications such as DIVs so. Filing of a terminal disclaimer (often used to refute an obviousness type double patenting rejection based on an application or patent from a chain of related cases) eliminates the day-for-day term extension.

    Due to Congressional proclamation, the burden and pressure on the Examining Corps increased dramatically. The USPTO appears to be looking for ways to meet these goals. The global economy is successful and patent applications continue to increase. Rather than finding a way to handle the increased demand for U.S. patents, the USPTO instead chooses to try and find ways to limit the incoming supply of applications (and claims included in those applications).

    At the IPO’s PTO Day, the USPTO representatives said they can’t hire their way out of the problem, yet they hired over 900 Examiners last year and plan to hire about 1,000 more this year. I hear their new buildings in Alexandria, Virginia, are already nearly full. Improving the ability for Examiners to telecommute (the Trademark Office has had great success in this) and finding more office space are possible solutions.

    I don’t buy the “we can’t hire our way out of the problem” line. Sure, there are problems in training and retaining high quality Examiners, but, the patenting system in the U.S. is a fee-funded system and, it would seem, increased filings and fees should pay for an increase in capacity. It seems logical for the USPTO to grow with increasing demand, not interject artificial limits and artificially restrict the supply of applications and claims. If the USPTO is not charging enough to cover its costs, then fee diversion should end and, if necessary, fees should increase accordingly. If the USPTO is not paying a sufficiently high salary to retain excellent people, they should consider raising salaries and benefits.

    Lemley/Moore allege a problem with delay and uncertainty, and, apparently, they think the relatively new 20-year-from-date-of-filing term provisions (June 8, 1995) aren’t enough disincentive for applicants to conclude prosecution. It seems that limiting DIVs and RCEs to 2 without justification is an arbitrary limit without a clear objective other than to artificially limit applications.

    Proponents of the changes might argue that you can still file as many applications as you want, but they want you to jump through some interesting hoops to do so, including what appears to be some sort of self-examination, where you write imaginary self-rejections based on prior art known to the Applicants. Why should Applicants be forced to argue against their own patent? Why should Applicants have to do the Examiner’s job in order to file more than 2 continuations or 10 independent claims? Where is the logical connection between these arbitrary limits and the goal of reducing so-called “frivolous” applications?

    Speaking of allegedly “frivolous” applications, who are they targeting? Fakers who don’t invent anything and fill the system with things they haven’t invented on the hopes of suing someone? If so, we can all agree that’s a problem. But, this proposed solution doesn’t appear to be concerned with the fakers. The fakers will go on faking. Getting rid of fakers seems to be well handled by current law, particularly the requirements of § 112, first paragraph (written description requirement and support requirement).

    The USPTO relies on the Lemley/Moore article to support this assertion: “Commentators have noted that the current unrestricted continuing application and request for continued examination practices preclude the Office from ever finally rejecting an application or even from ever finally allowing an application.” First, this statement ignores the relatively new 20-year term provisions. As soon as you file your patent application, the 20-year clock is ticking against the Applicants. Also, the Examining Corps has no problem issuing Final Official Actions. If the case is revived with an RCE, the Applicant has paid a fee, which should be paying for the costs of a continued examination. If the RCE fee is too low, raise it. If the USPTO prevails in limiting the number of RCEs, then many more applications will wind up before the Board. What will the Board do with a flood of new appeals? Another rule change to follow this one?

    At the end of the day, the Patent Office is under pressure by Congress and they’re having trouble meeting the 14/4/4/4/36 goals, and the patent community needs to help the USPTO come up with good ideas to meet their goals. While the two proposed changes might discourage fakers, the rules also negatively affect the ability of very successful, inventive businesses to protect their hard-earned inventions.

    What are the real problems? Who gets to define the problems? The inventors or the USPTO? Congress? What is a narrow solution that fits? What’s a better solution to the problem? More Examiners? Loosen the 14/4/4/4/36 goals? Raise fees?

  11. 10

    “Search of the PTO’s registered attorney and agent roster returns the following result for both professor Mark Lemley and professor Kimberley Moore: ‘No matching entries found.'”

    Professor Moore has a BS and MS from MIT in EE, but, apparently, has never taken the Patent Bar. Interesting.

  12. 9

    Another comment would appear in order – going to the merits of this proposal.

    It would seem that any increase (though the increase is modest) in the filing of continuations is likely attributable to the massive restriction of DOE and to Johnston v. RES. How does one expect the patent bar to react to these decisions? If DOE is so restricted and if unclaimed subject matter is lost if no continuation is filed, what is the natural consequence? You guessed it – file more continuations to capture what must be claimed and claimed literally.

    I find it absolutely disingenuous for Lemley to complain about the number of continuations filed without properly taking into account the impact of these court decisions.

    Want fewer continuations? then restore DOE and overrule Johnston.

    Furthermore, the changes to the Patent Act which created the 20 year term were Congress’s answer to Lemelson’s seeking of an unlimited term for his patents. Ok, that is the law now. Congress addressed the issue and made the change.

    Somehow, though, this change is not good enough for Lemley. The new proposal smacks of incrementalism, i.e., change the law a little, then complain that it’s not enough, then change it a little more. Death by a thousand cuts.

    It’s time to say enough is enough.

  13. 8

    I respectfully disagree with Mr. Miller, regarding the PTOs authority to promulgate these rules. If Congress had intended for the Director to have authority to make certain rule changes that might prevent the filing of a continuation, then the statute would say so. For example, the Director has specific statutory authority to establish procedures for accepting an unintentionally delayed submission of an amendment claiming the benefit of an earlier filing date. If Congress intended for the Director to have the authority to establish procedures for filing continuations, it could have said so, but did not. Furthermore, the broad grant of authority under section 2, allows the PTO to set procedures, as long as they are not inconsistent with law. Refusing to accept a continuation or an RCE because of an “inadequate justification” is inconsistent with the law. Nothwithstanding any procedure, the PTO simply cannot refuse the filing of a continuation or an RCE.

    Finally, Bogese does not stand for the broad proposition that the PTO can promulgate rules with regard to the acceptance of continuations. Only that notice must be given if there is no attempt in good faith to move the matter being prosecuted forward.
    Providing new claims in a continuation application is clearly beyond the scope of prosecution laches described in Bogese and Symbol Tech., the latter being quoted below.

    “Moreover, one might legitimately refile an application containing rejected claims in order to present evidence of unexpected advantages of an invention when that evidence may not have existed at the time of an original rejection. Commonly, and justifiably, one might refile an application to add subject matter in order to attempt to support broader claims as the development of an invention progresses, although entitlement to an earlier filing date for any claimed subject matter may of course be necessary to avoid a statutory bar created by intervening events outlined in 35 U.S.C. §§102 and 103. One may also refile an application even in the absence of any of these reasons, provided that such refiling is not unduly successive or repetitive.”

  14. 7

    Search of the PTO’s registered attorney and agent roster returns the following result for both professor Mark Lemley and professor Kimberley Moore:

    “No matching entries found.”

  15. 6

    Patents, trademarks and copyrights are fundamental to the sword and shield of the First Amendment as visualized by the First Amendment, which in 1793 displaced the first patent act of 1790 and its aborted attempt to edit patent applications for “important” inventions. The result under the First Amendmentt is always a stringent test for what can be suppressed prior to publication by a government editor. Obviously, falsehood and fraud as to the identity of an inventor’s claim to be the true, first inventor of the subject matter claimed is frowned on by the Supreme Court. The public policy of the First Amendment is clearly to protect the government’s awarding of their imprimitur as to the identity of the true, first inventor. Inventorship not ownership is protected in the U.S. as opposed to what is protected in foreign countries. In the U.S. anything under the sun made by man is available under the sword of the First Amendment for a claim of inventorship and a government imprimitur to prove it.

    Moreover, it is a well established, long standing principle of the law and public policy that the Patent Office is charged with encouraging the use of the Patent Act sword for the freedom of speech by what has turned out to be the largest, most active publisher and publishing system in the world. The administration of the interference proceedings by the patent office is but only one device used by the patent office to help determine the identity of the inventor of a claimed invention. The use of some similar device or procedure, possibly a parallel proceedure, would be much better for sorting the claims for publication, rather than the editing system proposed. Government sponsored editing of First Amendment speech is always suspect.

  16. 5

    I think both the PTO proposals are disastrous, and I have posted my comments to the PTO using the e-mail addresses provided. I don’t see where Mr Riley has shown it would affect small entities any differently, but nor do I see any proof that examination would be speeded up. My belief is that it would have the reverse effect, i.e. piecemeal examination of representative claims would slow things down, as would either petitions accompanying RCEs or regular continuations replacing RCEs. This is an attempt by the PTO to releive the backlog created by fee diversion, but it has no chance of succeeding if adopted, and will place more burdens on applicants for no good reason.

    Alun Palmer, Patent Agent

  17. 4

    link to

    Mr. Miller, the point is that the office does not have to deal with “frivolous” filings because the issue goes to the court which is better equipped to deal with the issue justly. In this manner the USPTO only has to deal with the issue again if the court determines that it is not “frivolous”.

    And this creates a check on the PTO who appears in at least some cases to do what is politically expedient. History has demonstrated again and again the merits of checks and balances on all bureaucracies.

    Ronald J Riley, President
    Professional Inventors Alliance
    Change “at” to @”
    RJR Direct # (202) 318-1595

  18. 3

    I respectfully disagree with Mr. Diepenbrock on the question whether the PTO has the power to promulgate these regulations as part of its power to govern the conduct of proceedings in the Office. (He appears to focus on the proposed rules on continuation practice, and I’ll do the same.) The Notice of Proposed Rulemaking, which I’ve read fully only once, actually discusses this very question at some length. I think the PTO shows, quite persuasively, that the new rules, which will not limit the absolute number of continuations an applicant may file, fall well within the PTO’s regulatory power (under 35 USC 2, and In re Bogese). And, as a substantive matter, these proposed rules are highly positive; they vindicate the public’s interest in seeing that patent examination is fair, full, and FAST.
    And Mr. Riley’s comment shows disappointing shortsightedness. As the Notice of Proposed Rulemaking makes quite clear, with concrete summary statistics, the overwhelming majority of applicants will get faster (dare we hope better?) examination as the Office is spared the trouble of repeatedly dealing with what would, in any other legal context, be frivolous filings.

  19. 2

    The Director has no statutory authority to make these changes. The rules promulgated in the Federal register would conflict with the statute, which places no such requirement on the filing of a continuation. If such a change is to be made, it must be done by Congress.

    Furthermore, RCEs are NOT continuations and may be necessary for the submission of newly discovered prior art.

  20. 1

    Continuations are important to the essence of the patent system. Short term oriented big businesses who are pushing a multitude of patent system changes which weaken patents are making a huge mistake.

    All bureaucracies try to increase their power and decrease accountability for their deficiencies. The USPTO is no exception. Our organization has been hearing many complaints from inventors and patent practioners for the last decade about the USPTO’s handling of certain matters. It seems that when a small entity crosses swords with a well heeled company that they suddenly start having considerable difficulty with prosecution of both pending patents and any reexamination procedures. We have had feedback from USPTO staff confirming that they see a similar trend.

    It is very important that innovators always have the right to take their cases to the courts. Otherwise we will face ever increasing arrogance from the agency.

    I think that the one thing we can all agree on is stopping fee diversion. This should be coupled with an independent oversight organization to make sure that the funds are used wisely and to return any unused funds to innovators. Taxation of innovation is very poor public policy.

    Ronald J Riley, President
    Professional Inventors Alliance
    Change “at” to @”
    RJR Direct # (202) 318-1595

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