Earlier, I asked if anyone could provide insight into the U.S. Patent Office’s proposed rules to limit the number of continuing, CIP and RCE applications that can be filed by patent applicants. Mr. Roy Marsh, a European Patent Attorney in Munich with Hoffmann Eitle, writes:


I surmise that the USPTO is envious of EPO success in managing its pendency periods, and so thinks it a good idea to borrow the EPO’s tools, to the extent that this is feasible.

I detect in USA an adversarial relationship between Exrs and Applicants that is not usual in Europe, and I venture to suggest it’s because of your presumption of validity. Here in Europe, nobody defers after grant to the work of Patent Office Examiners before grant, and validity after grant hangs on the preponderance of evidence. Because of that, examination on the merits is a chance to fashion, with help from the Examiner, a patent that has a sporting chance of withstanding heavier, competitor-inspired attacks on validity after issue.

This relationship might explain why European patent attorneys start with claim sets in which the dependent claims are genuine positions of enhanced patentability, yet have no expectation of being unfairly restricted to those claims by the 3-member Examining Division.

This might also explain why only 1% of EPO Exrs have resigned within their first year, but 30% in the USPTO. As an Examiner, you get more respect in the EPO.

Looking at a typical patent family list, one is usually struck by the skewed distribution, geographically. One finds typically 10 to 20 USPTO publications but only one or two publications for each other jurisdiction in the ROW. Something special about the USA is causing these distributions. Even if the value of any single non-US patent were as high as that of a US patent, I cannot imagine us in Europe getting to the numbers of patent publications I regularly see as the US component of a patent family.

Any Patent Office has to serve the public, not just its Applicant community, with the public policy objective of nurturing the tender young shoots of innovation. Helping youngsters clear their way through the patent thickets of the established market leaders is going to foster innovation, isn’t it?

Of course, USPTO Rules on their own aren’t going to change the numbers on the patent families. Does anybody want less US items on a patent family list? If so, then they will need to convince the US of the need for deeper changes, in the US patent system.

Let us know your comments on the Proposed Rules.

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