Patent Reform Act of 2007 - Update (Part 7)

Posted on September 23, 2007 by Brian Wm. Higgins

Summary: The House version of the Patent Reform Act of 2007 would bar submission of search reports prepared by non-U.S. citizens.


     H.R.1908, the Patent Reform Act of 2007, was introduced in the House of Representatives on April 18, 2007. As proposed, the Bill did not include Section 12, entitled "Additional Information," which made its way into the legislation when the House debated, and eventually passed, H.R.1908 on September 7, 2007. The table below, left column (after the jump), shows the original language of the provision, which would add a new Sec. 123 to Title 35 U.S.C. and grant the PTO authority to require prior art search reports. House Report 110-314 describes the measure as follows:

"The USPTO has discussed the need for some sort of examination support document [ESD] or applicant quality submission to improve the examination process. It may include a thorough search of the art in the field of the invention and in related fields in which one skilled in the art pertaining to the invention would expect to find information applicable to the invention. It is also expected that the information discovered by the search that is material to the patentability of the claimed invention be disclosed to the USPTO along with an analysis of how the information relates to the claimed invention and how the claimed invention is distinguished over the prior art information."

 

 

     During the House debate over H.R.1908, Section 12 was apparently amended, as shown in the table above, right column, to include a new provision that would limit prior art searches requested by the PTO to those conducted by U.S. citizens.

     Ostensibly, Section 12 could curtail the practice of outsourcing prior art search work to India, China, and other countries, a practice that seems to be gaining acceptance by U.S. law firms who are increasingly feeling pressure to reduce costs associated with patent legal services. However, it is not clear whether Section 12, if enacted, would be relied upon by the PTO to require that prior art searches, prepared in accordance with the PTO's new "Claims and Continuations Practice - Final Rule," effective November 1, 2007, be done by U.S. citizens. Currently, the PTO's "Guidelines For Examination Support Documents Under 37 C.F.R. § 1.265" does not mandate that prior art searches, conducted as part of ESD submissions, be performed only by U.S. citizens.
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Sweeping New PTO Rules Become Effective November 1, 2007

Posted on August 24, 2007 by Brian Wm. Higgins

Summary:  New rules will curb the practice of filing multiple continuation applications at the PTO, force inventors and their patent counsel to be selective in how they claim inventions, and potentially increase the cost of obtaining patents.  Final Rule:  72 FR 46716 (Aug. 21, 2007)


     For those of you who have frequented this and other blogs the last two days hoping to learn more about the PTO's extensive new rules promulgated August 21, 2007, I have unwelcome news:  it will take time to dissect and analyze the 129-page rule and the PTO's 109-slide "summary" (??!!) of the same.  In the meantime, the PTO has provided plenty of useful information about the so-called "Claims and Continuation Practice Rule" on its web site, enough to keep those interested busy reading for weeks.

     The official rules are entitled "Changes To Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications."  Yesterday, the PTO held a special webcast to present the rules to the public.  After an introduction by Margaret J.A. Peterlin (Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the PTO), Robert W. Bahr, Esq. (Sr. Patent Counsel at the PTO) led a lengthy presentation and Q&A session covering the highlights of the new requirements, which become effective November 1, 2007.  Here are some of the major points presented during the webcast.

  • The new rules apply to new applications and applications entering national stage filed on/after November 1, 2007
  • The new rules are intended to improve quality and efficiency of prosecution, with a goal of ensuring the U.S. patent system is "the best in the world"
  • The new rules are designed to "encourage applicants to use greater clarity and precision in describing the scope of their inventions"
  • The new rules will force applicants to submit "focused claims," and, if more claims are submitted, the burden of searching and analyzing those claims shifts to the applicant
  • Applicants will be allowed to file up to 5 independent claims and 25 total claims (i.e., the 5/25 limit) in an application
  • Applicants will be allowed to file up to 15 independent/75 total claims (i.e., 15/75 limit) per invention without justification or an Examination Support Document (ESD)
  • The 15/75 limit applies to an initial and two continuation or continuation-in-part applications, plus one Request for Continued Examination (RCE) application 
  • An applicant may file additional claims above the 5/25 or 15/75 limits, but must submit an ESD, which must be submitted before a first office action on the merits (FAOM) 
  • For commonly owned applications having at least one patentably indistinct claim, the PTO will treat each application as having the total number of claims present for purposes of determining whether each application exceeds the 5/25 limit
  • An ESD must include
    • A preexamination search statement,
    • A list of references deemed most closely related to the subject matter of the claims,
    • An identification of all claim limits that are disclosed in each reference,
    • A detailed explanation that particular points out how each of the independent claims is patentable over references, and
    • A showing of where each limitation has 35 U.S.C. sec. 112 support in the specification.

  • Applicants must file a supplemental ESD if amended claims are not covered by the original ESD analysis, or if applicant files an IDS with new reference closely related to the claims
  • ESD practice affects patent term adjustment calculation
  • Existing applications that have not received a FAOM before November 1, 2007, and that have more than 5/25 claims, will require either an ESD, a suggested restriction requirement (SRR), or an amendment that reduces the number of claims to 5/25

Comments: 

  • No sooner had the ink dried on the new rules, then an inventor with pending applications (Dr. Tafas) challenged the new rules by filing a lawsuit against the PTO in the E.D. Virginia (see Peter Zura's blog post here)

  • The new rules may have the goal of increasing efficiency, but part of that efficiency is obviously the result of shifting much of the analysis of the patentability of claims to applicants who submit more than 5/25 claims in an application, and by curtailing what had been an applicant's right to file multiple continuation applications

  • Preparing Examination Support Documents (ESD) will obviously add to the costs applicants pay to obtain patents (to add insult to injury, the PTO announced yesterday new higher government fees associated with obtaining patents; see Final Rule "Revision of Patent Fees for Fiscal Year 2007", which will become effective September 30, 2007)

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