UPDATE 1 November 2007: Late yesterday, Federal Judge James Cacheris of the U.S. Court for the Eastern District of Virginia ruled in favor of a motion filed by GlaxoSmithKline, which temporarily stops the U.S. Patent and Trademark Office from instituting new patent rules that were due to go into effect today. For a summary of what those rules changes could mean for your or your company's inventions, keep reading:
Sweeping changes to the United States patent process go into effect on 1 November 2007. The new patent rules, published in August in the Federal Register by the U.S. Patent and Trademark Office and known as the Claims and Continuations Rules, are intended to deal with a massive application backlog and patent quality problems. Some of the patent rule changes, including a new patent rule that limits the number of claims you can include in your patent application, apply retroactively to pending applications that have not yet received a first Patent Office action on their merits.
The magnitude of the patent rule changes should not be underestimated. Here’s what you should know:
Claims Limited to 25
Applicants may present no more than 25 claims in an application, with no more than five of them independent claims, unless an examination support document (ESD) is also filed. The ESD, which adds cost and complexity to applications, includes:
A pre-examination search statement, a document that provides information to the USPTO about the details of a search performed on the subject invention. A listing of references considered closest to the subject matter of each claim. An identification of claim limitations disclosed by each reference. A detailed explanation of patentability, pointing out how each of the independent claims is patentable over the cited references. A showing of where support of each claim is provided in the written description portion of the patent application.
A pre-examination search statement, a document that provides information to the USPTO about the details of a search performed on the subject invention.
A listing of references considered closest to the subject matter of each claim.
An identification of claim limitations disclosed by each reference.
A detailed explanation of patentability, pointing out how each of the independent claims is patentable over the cited references.
A showing of where support of each claim is provided in the written description portion of the patent application.
The ”5/25” claim threshold also counts all the claims present in other copending applications that, although they may be worded differently, describe the same invention. To determine what are considered patentably indistinct claims, the new rules require that applicants identify other commonly owned applications or patents that have an inventor in common with the application and a claimed filing or priority date within two months of the application’s claimed filing or priority date. If the claims in the common applications are considered patentably indistinct by the USPTO, it may then consider all or some of the claims of the copending applications as part of the count in the tally of total claims. The USPTO also may require an applicant to eliminate some or all of the allegedly indistinct claims.
That change applies to all new applications and to all pending applications for which the USPTO has not mailed a first action on the merits by 1 November 2007 . The USPTO says it will send a written notice regarding applications pending before 1 November that the pending application does not conform to the new rules. The notice sets a two-month time period to amend the application, which can be extended up to six months. To avoidabandonment of a pending application, an applicant may amend the application to contain no more than five independent and 25 total claims, provide an ESD, or provide a suggested requirement for restriction, which requests that only a subset of the total claims be examined. If an application filed after 1 November does not comply with the new claim rules, the USPTO says it will send a written notice with a two-month time period to reply; it cannot be extended. To avoid abandonment of a newly filed application that does not comply, an applicant may amend the application to contain no more than 5/25 claims or provide an ESD. The applicant has two months to take either action.
Continued Examination Filings
If continuations or continuation-in-part applications are used as part of your patent strategy, take notice. Applicants are now limited to two continuations or continuation-in-part applications and a single request for continued examination (RCE) in an ”application family”—the initial application and its continuation or continuation-in-part applications—without the need for justification. To file any additional continuing applications or RCEs in the application family will now require the filing of a petition (with a fee) and a detailed, written justification.
The new rule adds complexity and cost to the prosecution of a patent application. In addition, there is no guarantee that the petition will be granted.
The way a divisional application is filed is also changing. Applicants now may file a divisional application only if the previously filed application is subject to a requirement for restriction and the divisional application claims only a nonelected invention that has not been examined. Divisional applications may be filed in parallel or in series and are not required to be filed during the pendency, the period of time between the filing of a patent application and its issuance as a patent (or its abandonment by the applicant), as long as there is copendency that meets certain statutory requirements. The new rules also allow two continuation applications of a divisional application and a single RCE in the divisional application family. The applicant also may file any additional continuing application or RCE in the divisional family with justification in the form of a petition and showing as described above.
The new patent rules require that when patent applicants file a continuation-in-part, they identify the claims in the continuation-in-part that are entitled to the parent application’s filing date.
The new patent rules also permit an applicant to file one more continuing application before 1 November 2007 regardless of the number of continuing applications that person has filed in the past. After that, the applicant is governed by the new rules, which specify that he or she can file only two continuing applications.
Related Applications and Double Patenting
With the requirement that the applicant now identify other commonly owned pending applications, or any pending applications or issued patents that have a filing or priority date within two months of that of the application and that name at least one common inventor, the applicants must now explain how the claims in the applications are patentably distinct from each other. If the applicant cannot provide such an explanation, he or she may alternatively file a terminal disclaimer that reduces the term of any patent to issue. The USPTO also may require the applicant to consolidate all the patentably indistinct claims into a single application.
The rule changes are controversial, and unrest is brewing. Lawsuits have been filed against the USPTO that challenge the validity of the rules. One of the first was filed in August by Triantafyllos Tafas against Undersecretary of Commerce Jon Dudas in his capacity as director of the USPTO, and against the USPTO itself. Tafas is chief technology officer of Ikonisys, in New Haven, Conn., and an inventor who has coauthored six patents and contributed to more than 17 pending patents. The complaint, filed in the U.S. District Court for the Eastern District of Virginia, states that the new rules will prevent Tafas and similarly situated inventors from realizing the full economic potential of their work. More recently, on 9 October, GlaxoSmithKline also suedthe USPTO, on the grounds that the new rules extend well beyond the rulemaking authority of the Patent Office. Numerous other parties are lining up to file amicus briefs in these cases.
While the 25 claims limit has certainly riled many inventors, even more controversial is that the new rules are being retroactively applied to pending applications. For complex inventions, that might result in certain subject matter not being claimed and thus left unpatented and dedicated to the public. Some critics have even gone so far as to describe the scenario as the government taking property without compensation.
Basically, the goalposts have been moved during the game. It is critical to understand how to continue in the game given the new layout of the playing field. In addition to a careful review of the new rules provided by the USPTO on its Web site, a consultation with your patent practitioner makes good sense. Some opportunities to take beneficial actions are scheduled to close on 1 November. Prompt and intelligent actions may save you big headaches in the coming months.
About the Authors
IEEE Member Robert D. Gunderman of Patent Technologies (http://www.patentechnologies.com) and John M. Hammond of Patent Innovations (http://www.patent-innovations.com) are registered patent agents and licensed professional engineers, both in Rochester, N.Y. They advocate understanding of U.S. patent laws through their Web site at http://www.patenteducation.com.
To Probe Further
The Claims and Continuations Rules and related subject matter were published in the U.S. Federal Register , Vol. 72, No. 161, pp. 4671746843, 21 August 2007, and may be downloaded at http://www.patenteducation.com/resourcesarticles.html.
The USPTO has information on the rule changes at http://www.uspto.gov/main/homepagenews/bak2007aug20.htm.