The Director of the U.S. Patent and Trademark Office, David Kappos, has issued a new rule rescinding widespread rule changes proposed earlier by the Office restricting the number of continuation applications, requests for continued applications, and claims that a patent owner could pursue. The Office announced it will join with plaintiff GlaxoSmithKline in filing a motion to dismiss federal court litigation aimed at preventing the proposed rules from taking effect.
Since assuming the role of Director, Kappos, most recently with IBM, has given a variety of signals that he is willing to make changes to work cooperatively with patentees and patent applicants and move away from policies that have been unpopular with intellectual property owners. Kappos was nominated to the position of Director by President Obama in June, and confirmed by the Senate in August.
In addition to rescinding the unpopular proposed rule changes, Kappos has proposed significant changes to internal patent office procedure that could streamline the examination system to issue well-examined patents in a shorter time frame. Briefly, the proposed changes encourage early interviews between Examiners and patent applicants and reduce credits given to Examiners in applications that have experienced significant churn within the office.
Rescinding the rules restricting continuations, RCEs, and claim counts along with the proposed changes to the examiner incentive system appear to signal Kappos’ willingness to work with the patent owning community in improving patent quality and decreasing frustration with the Office.
Rescinding the unpopular proposed rules and exploring changes to Examiner incentives signals an imminent end to an era where the Patent Office contributed to delay and expense in obtaining intellectual property rights. Going forward, pursuing intellectual property rights in a manner consistent with the Office’s announced goals and incentive structure, there may be opportunities to increase the amount of intellectual property obtained for the dollars spent.