Sweeping New PTO Rules Become Effective November 1, 2007
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)
