Proposed Changes in U'S' Patent Practice

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Proposed Changes in U.S. Patent Practice
Roundtable presentation Association of Patent Law
Firms February 22, 2006 Kevin E. Noonan,
Ph.D. McDONNELL BOEHNEN HULBERT BERGHOFF
www.aplf.org
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Current law 35 U.S.C. 120

• An application for patent for an invention
  disclosed . . . in an application previously
  filed in the United Stateswhich is filed by an
  inventor or inventors named in the previously
  filed application shall have the same effect . .
  . as though filed on the date of the prior
  application, if filed before the patenting or
  abandonment of or termination of proceedings on
  the first application or on an application
  similarly entitled to the benefit of the filing
  date of the first application and if it contains
  or is amended to contain a specific reference to
  the earlier filed application.

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Current practice 37 C.F.R.

• 1.53 Application number, filing date, and
  completion of application.
• (b) . . . A continuing application, which may be
  a continuation, divisional, or continuation-in-par
  t application, may be filed under the conditions
  specified in 35 U.S.C. 120, 121 or 365(c) and
  1.78(a).

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Current practice 37 C.F.R.

• 1.114 Request for continued examination.
• (a) If prosecution in an application is closed,
  an applicant may request continued examination of
  the application by filing a submission and the
  fee set forth in 1.17(e) prior to the earliest
  of
• (1) Payment of the issue fee, unless a petition
  under 1.313 is granted
• (2) Abandonment of the application or
• (3) The filing of a notice of appeal to the U.S.
  Court of Appeals for the Federal Circuit under 35
  U.S.C. 141, or the commencement of a civil
  action under 35 U.S.C. 145 or 146, unless the
  appeal or civil action is terminated.

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Proposed Changes in Practice71 Fed. Reg. 48 61

• Limit the number of continuation applications
• Limit the time to file divisional applications
• Limit the number of claims examined in an
  application
• Require applicants to provide search report
• Require applicants to provide a patentability
  report

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Limiting Continuations

• Continuation applications limited to one as of
  right
• Includes Request for Continued Examination
• Additional continuations only granted by petition
  to the Commissioner of Patents
• For petition to be granted, applicants must show
  that the amendments, evidence or argument could
  not have been previously submitted

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Limiting Continuations

• Examples of situations that would qualify for
  additional continuations include
• in interference practice, where an Examiner/APJ
  suggests that claims not corresponding to the
  count be pursued in a continuing application 
• where data necessary to overcome a final
  rejection is not previously available
• a final rejection contains a new ground of
  rejection that "could not have been anticipated" 
  by the applicant AND the applicant needs to
  submit data not earlier available to overcome the
  rejection

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Limiting Continuations

• For continuation-in-part applications, applicants
  must designate for each claim whether the claim
  is disclosed (under 101 and 112) in the parent
  or c-i-p application
• Each claim given the appropriate priority date
• Continuation applications filed from c-i-ps
  entitled only to c-i-p filing date

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Limiting Divisionals

• Divisional applications permitted for all
  separately-patentable inventions subject to
  restriction requirement
• However, to retain earliest priority date, all
  divisionals must be filed during the pendency of
  the originally-filed application
• If not filed, subsequent divisional entitled only
  to filing date of then-pending application

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Limiting Examined Claims

• Applicant required to designate up to ten (10)
  claims as representative claims
• Should include all independent claims
• These claims will be examined
• If found allowable, remaining dependent claims
  examined for compliance with 101 and 112

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Requiring Patentability Reports

• Applicants can elect to have more than ten
  representative claims examined
• However, election requires applicant to
• Perform a patentability search according to PTO
  searching criteria, and
• Submit a patentability report distinguishing each
  claim from the art cited in the search report
• This will include identification of all claim
  limitations found in the prior art

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Identifying related applications

• Applicants required to identify any co-pending or
  co-owned patent or patent application having a
  common inventor or common assignee
• Requirement to be fulfilled within two months of
  application filing date
• These applications will be subject to
  obviousness-type double patenting restrictions

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Identifying related applications

• These applications will be under a rebutable
  presumption that they are patentably indistinct,
  and an applicant will have to affirmatively
  establish patentable distinctness or submit a
  terminal disclaimer
• Otherwise, the Office may merge any such claims
  into a single application (presumably the
  earlier-filed one).

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PTO Rationale for Changes

• Number of pending applications
• Increase in backlog of pending cases
• Excessive pendency in certain art units
• Need to increase examination quality
• Inability to solve these problems merely by
  increasing size of examining corps
• Changes effect small minority of cases

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Pending applications

• Presently 900,000 applications pending (20-40
  continuations)
• Based on new applications continuation/division
  al applications allowances abandonments
• Number of new applications increased by 8 in
  the past 2 years
• Results in a backlog of cases pending in the
  office

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Excessive pendency

• Pendency issues unevenly distributed in different
  art units in the PTO
• Pendency times range from 28 - 52 months
• Under current circumstances (no change in
  examining corps size), expected to take 36-130
  months to work through the backlog

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Unsatisfactory examination quality

• Measured quantitatively by separate
  re-examination (prior to Notice of Allowability)
• Acceptable error rates lt 4, whereas actual error
  rates are 4 8 (depending on art unit)
• Adding additional, inexperienced examiners
  expected to exacerbate this problem

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Increasing examining corps not enough

• PTO will hire additional 1,000 examiners in 2006
  (26 increase)
• New training regimen eight-month training in
  special examining school
• New hires will need to show proficiency before
  being allowed to examine live cases
• New hires will still be heavily supervised by SPEs

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Changes effect small minority of cases

• Less that 5 of all applications have more than
  10 independent claims
• Less than 15 of all applications have more than
  one continuation/RCE
• Office statistics that 23-28 of application
  examinations are rework (CON CIP RCE CPA)

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Consequences

• Greater number of appeals with less
  well-developed record
• Increased expense related to divisional filings
• Changes in patent claim strategy
• Reduced protection for highly-complex technology
  with difficult-to-predict applications
• Changes the balance of power with recalcitrant
  examiners

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Issues of Concern

• Characterization of certain applications as
  rework
• Preference given for new applications versus
  recycled applications
• Rule 56 implications of patent search and
  patentability reports

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Issues of Concern

• Disconnect between small number of applications
  affected by changes and need for these changes to
  solve PTO problems
• Reliance on treatment of patent matters by
  academic commentators with no experience with
  technology, patent practice or the PTO

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Issues of Concern

• PTO officials state that the Office does not
  think it proper to keep continuations pending to
  trap competitors attempts to design around
  (despite CAFC approval)
• PTO states that issuance of multiple patents from
  one application contrary to public notice
  function (contrary to PTO divisional practice)

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Does the PTO have the authority for these changes?

• 35 U.S.C. 2 Powers and duties.
• (b) SPECIFIC POWERS. The Office
• (2) may establish regulations, not
  inconsistent with law, which
• (A) shall govern the conduct of proceedings in
  the Office
• (B) shall be made in accordance with section
  553 of title 5
• (C) shall facilitate and expedite the
  processing of patent applications . . .

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PTO invites public comment

• For changes in continuation practice
• AB94comments_at_uspto.gov
• For changes in examination practice
• AB93comments_at_uspto.gov
• Deadline May 3, 2006

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Kevin E. Noonan noonan_at_mbhb.com
MBHB 300 South Wacker DriveChicago, Illinois
60606-6709312 913 0001 phone [phone]
fax www.mbhb.com
www.aplf.org