Time is running short for actions to stop implementation of the USPTO’s “Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications,” 72 Fed. Reg. 161 at p. 46716 (Aug. 21, 2007).

Motions are scheduled to be argued on October 31 in the U.S. District Court for the Eastern District of Virginia regarding a temporary restraining order and preliminary injunction enjoining the United States Patent and Trademark Office from implementing the PTO’s new rules on continuations and claims. The rules go into effect November 1.

AIPLA has now filed an amicus brief in support of a pending motions. The filing addresses :

[T]he irreparable harm flowing from the retroactive application of the new Rules’ restriction on claiming and continuation practice. Implementing the new Rules will, as a practical matter, compel IP owners to (1) abandon pending patent claims, (2) abandon entire patent applications, and (3)surrender currently existing claim scope without adequate opportunity for consideration by the PTO.

The biggest issue, of course is that patent applicants frequently (knowingly or unknowingly) include a number of patentably distinct inventions in a single application.  While applicants will be allowed to seek relief from the retroactive impact of the unexpected limitation of the number of claims using one of the two procedures alluded to above:  by filing a Suggested Requirement for Restriction or by filing an Examination Support Document.  By using the first option (SRR), patent application owners can request that the PTO carve out separate applications and allow them to be prosecuted in parallel.

However, the PTO is not obligated to accept such requests.  Thus, the PTO would have the right to block from substantive consideration future claims to previously-disclosed inventions that application owners have up until now been entitled to present and have reviewed.   That change, as applied to existing applications, will cause irreparable harm to owners of patent applications.  If an examiner chooses not to permit the filing of separate applications, the applicant’s intellectual property — unprotectable by secrecy if the application has been published — will be effectively lost. 

Included with the AIPLA filing are declarations from IBM and from patent practitioners who detail the effects of the rules on pending applications for which they are responsible.  David Kappos, Chief of IP at IBM, filed a declaration in support of the AIPLA brief. Most noteworthy is that Kappos indicated that in order for IBM to comply with the retroactive requirements of Rule 78(f) and to review 30,000 related pairs of cases, IBM would incur over $10 million in legal fees and internal expenses — not including any loss of intellectual property rights.

To read the AIPLA amicus brief, click here.
To read the submitted declarations, click here.
To read the SmithKline memorandum, click here.

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