Saturday, October 06, 2007

The burdens imposed by the USPTO's new rules on continuing applications

In a post Is the Patent Office Starting to Blink?, Kevin Noonan discusses two new reporting requirements created by the new rules of the USPTO on continuing applications:

First, applicants must identify (in every pending application) every commonly-owned application or patent that names at least one inventor in common and was filed or claims priority to an application that was filed within two months of the subject application. Second, for every commonly-owned patent application sharing a common inventor and "substantially overlapping" subject matter, a rebuttable presumption will arise that there is at least one patentably-indistinct claim in each application (using a one-way obviousness test) (see new rules notice, p. 46,785).

Noonan mentions the IPO survey: The Intellectual Property Owners (IPO) posted yesterday on their website the results of a survey of 37 member organizations relating to the extent of the burden these new rules would impose. (...)the [PTO]'s acknowledgement of the justification of IPO's and BIO's complaints appears to contradict their representations to the Office of Management and Budget (and that Office's subsequent decision) that the rules imposed no significant economic impact.

Noonan suggests action by the patent community to point out the problems with the rules: This track record suggests that members of the patent community, including the patent bar, had better get busy if they will have any hope of adequately protecting U.S. patent rights in the face of a Patent Office administration that seems openly hostile.

Noonan's blink post contains links to other relevant posts he has made on the new rules.

Separately, James McEwan summarizes some of strategic pre-November responses, and patently-o has Rule Changes Triage.


Blogger Lawrence B. Ebert said...

by Gregory E. Upchurch & Bryan K. Wheelock as posted on patent docs:

Before the new rules, one New Jersey inventor amassed 394 patents with more than 5 independent claims, 21 of which had more than 25 total claims. This, of course is now prohibited by 37 CFR 1.75(b)(1). Furthermore, this same inventor slid by without filing any of the 7,326 separate statements about co-pending applications that are now required by 37 CFR 1.78(f)(1)(i), or any of the 243 terminal disclaimers under 37 CFR 1.78(f)(2)(ii)(A) or explanations under 37 CFR 1.78(f)(2)(ii)(B) for the applications filed on the same day with the exact same title. While this inventor did not file any continuation application, 67 times he obtained more than three patents with identical titles - once obtaining 37 different patents with the exact same title, with a total of 188 claims. 286 times he obtained patents with the same titles with more than 15 total independent claims, and 53 times he obtained patents with the same titles with more than 75 total claims, which would now be nearly impossible under 37 C.F.R. 1.75(b)(1). THANK GOODNESS that Commissioner Dudas has put a stop to the likes of Thomas Alva Edison.

10:28 AM  

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