Changes To Patent Practice (Pt. 1)

Seeing applicants as just a bunch of bad boys and girls filing (and paying for, of course) just far too many applications (including both continuing applications and requests for continued examination) the Office is taking everyone to the woodshed for a lesson in not asking the Office to do too much work.

The United States Patent and Trademark Office (Office) is continuing its march towards world domination by revising the rules of practice in patent cases relating to continuing applications and requests for continued examination practices, and for the examination of claims in patent applications.

The Office is revising the rules of practice to require that any third or subsequent continuing application that is a continuation application or a continuation-in-part application, and any second or subsequent request for continued examination in an application family, be filed to obtain consideration of an amendment, argument, or evidence, and be supported by a showing as to why the amendment, argument, or evidence sought to be entered could not have been previously submitted.

The Office is also revising the rules of practice to provide that an applicant must provide an examination support document that covers all of the claims in an application if the application contains more than five independent claims or more than twenty-five total claims and is revising the rules of practice with respect to multiple applications that have the same claimed filing or priority date, substantial overlapping disclosure, a common inventor, and common ownership.

I spoke with Courtenay Brinckerhoff at Foley & Lardner briefly about the new rules and she expressed the concern that the rule changes may be especially problematic for the chemical, pharmaceutical and biotech arts. The concern is more directed to the limitation on requests for continued examination in that in the chem./bio arts, such continuations are used in essentially every application.

This is due to the fact that, in chem/bio applications, it is extremely difficult to either (a) carefully craft claims that adequately describe the full claim scope to which the applicant is entitled to and (b) the difficulty in fully analyzing the prior art such that the claims can be drafted in a manner that does not overlap with the known art.

The Patent Office believes that continued examination filings diverts patent examining resources from the examination of new applications disclosing new technology and innovations, to the examination of applications that are “a repetition of prior applications that have already been examined and have either issued as patents or become abandoned.”

What the ^$^#@! does that snide comment mean?

Even while admitting that while only a small minority of applications are a third or subsequent continuing application, the Patent Office has the misguided opinion that “Applicants should not rely on an unlimited number of continued examination filings to correct deficiencies in the claims and disclosure that applicant or applicant’s representative could have corrected earlier.”

The question becomes whether or not such filings really are inconsistent with an applicant’s and practitioner’s duty under 37 CFR 10.18(b)(2)(i) not to submit an application or other filing to cause unnecessary delay or needless increase in the cost of prosecution before the Office.

Like a paranoid schizophrenic, the Patent Office sees misuse in every continued examination practice letting a few bad apples taint its view of the whole landscape. As Brinckerhoff points out, it is often necessary to add an amendment or to get in a declaration proving therapeutic utility in the course of prosecution – hardly misuse.

In the Continuing Applications Proposed Rule, the Office proposed to change the rules of practice to require that:

(1) Any second or subsequent continued examination filing (continuation or continuation-in-part application or request for continued examination) include a showing that the amendment, argument, or evidence could not have been submitted prior to the close of prosecution after a single continuation or continuation-in-part application or request for continued examination; and

(2) multiple applications that have the same claimed filing or priority date, substantial overlapping disclosure, a common inventor, and a common assignee include either an explanation of how the claims are patentably distinct, or a terminal disclaimer and explanation of why patentably indistinct claims have been filed in multiple applications.

The Office expects that the changes to the rules of practice in this final rule will: (1) Lead to more focused and efficient examination, improve the quality of issued patents, result in patents that issue faster, and give the public earlier notice of what the patent claims cover; and (2) address the growing practice of filing (by a common applicant or assignee) multiple applications containing patentably indistinct claims.

The Office goes on at length describing as much bull about how 35 U.S.C. 111(a) and 120 constitute the real statutory basis for continuing application practice and how the practice of filing continuation applications arose early in Office practice “mainly as a procedural device to effectively permit the applicant to amend an application after a rejection and receive an examination of the ‘amended’ (or new) application.” Conspicuously absent from the discussion is how the only reason there is such a great need for continuing applications is the Patent Office itself.

That is, since the Office automatically gives a Final Office Action on second action and refuse to hear arguments or enter amendments unless a continuation is filed (read: a disposal for the Examiner and yet more fees for the Office), the applicant has no choice but to file continuing applications in order to secure their rightful claims.

With the new rules, the balance of power and right has shifted from a legal “right” to gain a patent to a system where the Patent Office hold the applicant at its mercy – and holds all the cards. The Patent Office can effectively back the applicant up against a wall and the applicant will have to accept the claims the Examiner offers – no matter how much they fall short of the true scope of the invention as allowed by law.

Now, the Patent Office will have you believe that the changes do not set a per se limit on the number of continuing applications but merely require that applicants who file multiple continuing applications from the same initial application show that the third and following applications, and any second or subsequent request for continued examination in an application family, be filed to obtain consideration of an amendment, argument, or evidence that could not have been previously submitted.

Nice. Just how can one “prove” a negative like that? A note from your mother? What action could not have been taken earlier if you somehow had the world’s time and resources at your disposal?

One group likely to suffer greatly in all this will be universities (and other research institutes) that often license technology out to third parties. As often is the case, licensees are more interested in particular claims that cover their product or field of use. Traditionally, universities have used continuing applications to pursue claims that were not secured earlier by the licensee. Now, expect greater tension between licensors and licensees as they battle over who gets to use up the very limited right to continuations.

Also expect much, much longer prosecution times for applications – exactly the opposite effect that the Patent Office seems to think will happen under the new rules. Applicants often use continued examination practice to obtain further examination rather than file an appeal to avoid the delays that historically have been associated with the appeal process. While the Patent Office believes that it has taken appropriate steps to eliminate such delays, this will cause a tsunami-like tidal effect of appeals the likes of which have never been seen before. Patent practitioners will not use up such a limited and valuable resource like a continuation and will most certainly appeal cases instead.

These changes will go into effect November 1, 2007. Get ready for a real backlog.
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Summary of Changes

The Office is revising the rules of practice for continuation applications, continuation-in-part applications and requests for continued examination. Under these revisions, an applicant may file two continuation applications (or continuation-in-part applications), plus a request for continued examination in the application family, without any justification. An application family includes the initial application and its continuation or continuation-in-part applications. Applicant may file any additional continuation application, continuation-in-part application, or request for continued examination with a justification.

Specifically, the Office is revising the rules of practice to require a justification for any third or subsequent continuing application that is a continuation application or a continuation-in-part application, and any second or subsequent request for continued examination in an application family. The third or subsequent continuing application or request for continued examination must be filed with a petition showing why the amendment, argument, or evidence sought to be entered could not have been previously submitted.

The Office is also revising the rules of practice for divisional applications. Under these revisions, an applicant is permitted to file a divisional application of an application for the claims to a non-elected invention that has not been examined if the application was subject to a requirement for restriction. The divisional application need not be filed during the pendency of the application subject to a requirement for restriction, as long as the copendency requirement of 35 U.S.C. 120 is met. Thus, applicant may file the divisional application during the pendency of the application that was subject to a requirement for restriction or the pendency of any continuing application of such an application. Applicant may also file two continuation applications of the divisional application plus a request for continued examination in the divisional application family, without any justification. A divisional application family includes the divisional application and its continuation applications. In addition, applicant may file any additional continuation application or request for continued examination in the divisional application family with a petition and adequate justification.

The Office is also revising the rules of practice for the examination of claims in an application to provide that if the number of independent claims is greater than five or the number of total claims is greater than twenty-five, the Office will require the applicant to help focus examination by providing additional information to the Office in an examination support document covering all of the claims (whether in independent or dependent form) in the application.

The Office is also revising the rules of practice with respect to multiple applications that have patentably indistinct claims and a common assignee by either requiring that all patentably indistinct claims in such applications be submitted in a single application or effectively treating the multiple applications as a single application.

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See the Blawg-Storm here:

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2 Comments

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    Your foaming rant here accurately reflects the self-righteous outrage of much of the patent prosecution bar (particularly in the biotech/pharma area). But the patent prosecution bar has been increasingly isolated from reality since the mid-1990s, when the practice of filing 1,000-page fill-in-the-blank “template” applications with thousands of sequences and hundreds of claims became commonplace. With few exceptions, the biotech/pharma patent bar has abandoned all attempts to (and apparently has forgotten how to) define a real invention, within the statutory requirements. Have you actually read some of the garbage that passes for a biotech/pharma patent application these days? What do you expect the PTO to do with this stuff? Anyone who says the biotech/pharma patent bar has not been systematically abusing the system for the past decade has his or her head in the sand. The abuse has been so widespread for so long that it now passes for normal. Many of today’s biotech/pharma patent practitioners have never known any other way of practicing. But let’s forget about the PTO for a moment. What about the public? Have you done a freedom-to-operate search in the biotech/pharma area lately? Even the most carefully tailored search yields dozens of hits that consist of published applications containing hundreds (or even thousands) of pages, thousands of sequences and hundreds of claims, all of which are non-starters. Even though these ridiculous template applications are almost never worth the paper they’re printed on, professional prudence requires an FTO opinion writer to plod through mountains of this garbage to properly verify that it is indeed garbage. Publication of these absurd applications is a public nuisance. And in the aggregate, the plague of these bogus applications constitutes a huge burden on the public, even if not one of them ever leads to an issued patent. Some form of relief from this abuse of the system is needed by the public, as well as the PTO. As for the new continuation rules, has the patent prosecution bar ever heard of the basic legal principle known as res judicata? The public is entitled to know at some point that an application is dead. The ability to achieve a reasonable level of business certainty regarding any given application within a reasonable amount of time is essential to the health of the biotech/pharma industry. Too much of the patent prosecution bar operates with an ivory tower mentality that is blissfully unaware of such real world considerations. While there may be justifiable criticism of certain details, the new rules package represents a long-overdue wake-up call to the patent prosecution bar. The system is broken — and to blame it all on the PTO is delusional.

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