Are you ready to pull the trigger if necessary? If you haven’t yet thought about how the U.S. Patent and Trademark Office’s new rule packages might affect you, you might want to start. In brief, they are not pro-patent. Instead, they are an attempt by the US PTO to reduce the pendency and the number of applications submitted. The new rules will require patent applicants to exert significant effort early in the patenting process - instead of managing their portfolios as they mature.
Two new sets of “Final” rules were submitted to the Office of Management and Budget for review on April 10, 2007: RIN: 0651-AB93: Changes to practice for continuing applications, requests for continued examination practice, and applications containing patentably indistinct claims, and
RIN: 0651-AB94: Changes to practice for the examination of claims in patent applications.
There is a 90-day time limit for their review. Upon completion of the review, the US PTO will publish the Final Rules and rumor has it that there will be a 30-day window before implementation. Implementation could be as early as August – but more likely, September or October, 2007.
Note the word “rumor.” The initial Notice of Proposed Rule Making for both of these rule packages was published in January 2006 and is available at www.uspto.gov. However, the recently submitted “Final” rule packages are secret. There was a huge public outcry that the proposed rules were not only bad, but also contradicted US law. 29 organizations, 65 companies, 20 law firms and 228 individuals submitted written comments to the US PTO regarding the proposed changes to continuation practice. Thus, it is highly unlikely that the published rules will be implemented. What the final rules will look like, no one is saying exactly . . .
However, leaks/clues have been popping up from US PTO officials including John Doll, USPTO Commissioner of Patents. The following is a summary of what has been learned to date:
1) The rules regarding filing continuation applications will not be as harsh as originally sought. It is likely that at least one RCE and two continuations will be allowed. Also, an unlimited number of divisional applications will be permitted. However, the rules will likely be retroactive with the proviso that one additional continuation may be permitted, as a matter of right. But the rumors differ on this last point.
2) The rules may limit the number of claims to 25 (instead of 10 as initially proposed) which may include up to five independent claims. Additional claims will likely be permitted but only with the filing of an onerous “Examination Support Document.”
What should a patent applicant do? Patent applicants would be wise to consider the following action items:
1) Applications should be reviewed to determine which applications would likely require or currently have more than two continuations. Upon publication of the new rules or before, applicants should consider filing additional continuation applications;
2) Applications should be reviewed for those having more than 25 claims. It might be prudent to file additional continuation applications or amend claims in such applications immediately upon publication of the new rules, if not before; and
3) Applicants should keep informed of the status of the publication of the new rule packages.