Monday, August 20, 2007

New rules on continuing patent applications to appear on internet August 21

A number of blogs (e.g., PatentHawk) are talking about the new rules on continuing applications, to be available on the internet tomorrow. Consistent with earlier rumors, it appears there will be a (2+1) limit (ie, 2 cons and 1 RCE as of right), more liberal than the initial proposal, but still not obviously consistent with the words of the statute.

Will the limit hold up in court? The rules got through OMB, making this look somewhat like a done deal. One law review note concluded: The Note concluded that, if the rule is promulgated and if its validity is challenged, the CAFC should invalidate the rule under the "hard look" standard of review. Within the Note, one has: Under the "hard look" standard, a court sets aside an agency action if it determines that the agency failed to take a "hard look" at the significant considerations contrary to its position. n46 In fact, of the three review standards, the "hard look" standard is the least deferential to the agency. n47 The case in question is Motor Vehicle Mfrs. Ass'n v. State Farm Mut. Ins. Co., 463 U.S. 29, 43 (1983). [22 Berkeley Tech. L.J. 193 (2007)]

The following comment was submitted to The Scientist on 23 August:

The comment of Carl E. Gulbrandsen may correctly identify the prime motivation for the rules change (reduce backlog) but may be overly optimistic in the belief that backlog will be significantly improved because of the rules change.

Data of the USPTO for FY 2005 showed that there were 63,000 continuing applications, which included 44,500 cons/cips and 18,500 divisionals. Of these, 11,800 were second, or subsequent, applications. Separately, there were 52,000 RCEs, of which 10,000 were second, or subsequent. Thus, 21,800 applications of 384,228, were second or subsequent, which is 5.7%. As for FY2004, RCEs were the single most abundant “continuing” form, 52,000 of 384,228 [13.5%]. All “continuing” forms combined constituted 115,000 of 384,228 [30%].

One notes that the "target" of the initial rules change (second or more filings of continuing applications) comprised only 5.7% of all filings. The modified rules will impact still fewer filings. Separately, the major continuing application form is the RCE. RCE's are filed when the examiner and applicant can't reach agreement over the claims as presented. That is where the major problem is.

There has been a lot of misinformation about the underlying reasons for the rule changes (see 88 JPTOS 743 for discussion of faulty reporting by Science). Separately, it is quite possible that there will be a legal challenge to the new rules.
(for example,


Blogger Lawrence B. Ebert said...

Note the following:

USPTO Webcast on New Claims and Continuations Rules Thursday, August 23rd

Date: Thursday, August 23, 2007

Time: 1:00 p.m. (EST)


The U.S. Patent and Trademark Office (USPTO) will hold a special
webinar on Thursday, August 23, 2007, at 1:00 p.m. (EST) on new claims and continuations rules that will allow the agency to continue to make the patent examination process more effective and efficient by encouraging
applicants to use greater clarity and precision in describing the scope of their inventions. The new rules will be published in the Federal Register available at> after noon on August 21, and will be effective on November 1, 2007.

5:46 AM  
Blogger Lawrence B. Ebert said...

HEATHER CHAMBERS of the San Diego Business Journal wrote an article Biotech Firms Wary of Changes to Patent Application Regulations that included a quote:

“People are trying to change the current mechanisms that are in place and many of the changes have unintended consequences that might make the process even more complicated and lengthy,” said John Benassi, an intellectual property attorney in the San Diego office of Heller Ehrman.

More interesting was text at the end of the Chambers article:

The reason behind all the changes? The patent office says the new restrictions will improve the effectiveness and efficiency of patent examination.

Currently, the number of patent applications pending has reached 750,000, according to Rankin Byrne. She says the agency has had to limit the number of patents it allows each year.

5:52 AM  

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