Patent Applicants Beware: The Rules Are Changing (Again) - Part 2

    By Kevin Noonan --

The Patent and Trademark Office has proposed sweeping changes in "continuation' practice (see Part 1) as well as how claims are examined, which were the subject of a "townhall" meeting held in Chicago on February 1st with Patent Commissioner John Doll and General Counsel James Toupin.

At present, an applicant can file as many claims as they believe are necessary to properly encompass her invention.  Under the proposed changes, the Office will be required to examine only ten "representative" claims, which should include all independent claims, and the applicant will have the burden to designate which claims are "representative."  If those claims are deemed allowable, then the Office will examine undesignated claims dependent on any of the designated representative claims.  Examination of these claims will be limited to Sections 101 (utility) and 112 (written description/enablement/best mode).

An applicant will retain the right to have all claims examined on the merits, but in that case they will be required to perform a search, using US PTO searching criteria, and then submit a patentability statement that identifies all claim limitations present in the prior art (with specificity) and explains how the representative claims are patentable over the prior art.  The decision on whether to submit representative claims or the search/patentability information can be changed during prosecution at applicant's election.

Although the Office is also considering changes to Rule 56 regarding the duty of candor, under present law the requirement to perform a search and submit a patentability statement is fraught with potential liability under the inequitable conduct doctrine.  This doctrine, widely used, provides the opportunity for a patent infringement defendant to have a patent found unenforceable for violation of Rule 56 and the duty of candor.  Requiring applicants to submit search results and a patentability report greatly increases the opportunities for second guessing and unfounded charges of prosecution malfeasance that have been a "plague on the patent law" for almost a generation.

The Patent Office, insulated from these considerations (which occur only in patent litigation) thus wants to impose a requirement on patent applicants that further erodes the type of business certainty that CEO's, in-house patent counsel, and the Federal Circuit Court of Appeals have all said is a proper goal of the patent system.

Comments on the proposed changes were accepted until May 3, 2006 at [email protected].  The Office received a far greater number of responses than anticipated, and they were reported to be predominantly negative.  For now, the Office has not moved to promulgate these rules, and in view of the firestorm they set off there is some doubt about whether these changes will ever be implemented.

Additional discussion of this topic can be found in Dr. Noonan's February 3, 2006 article on Patently-O.