By Kevin E. Noonan --
The U.S. Patent and Trademark Office today announced, by
press release, the broad contours of its long-anticipated new rules regarding
continuation applications. The rules
themselves will be published tomorrow in the Federal Register, pursuant to the
requirements of the Administrative Procedures Act.
According to the press release (and inquiries from
reporters, who received advance notice last week not only that the rules would
be published on Tuesday but apparently regarding the rules themselves), Applicants will
have the right to file two continuation applications and one request for
continued examination. Applicants seeking additional continuations will need to
explain why the request is necessary. Patent Docs will have more on the rules
when they are published tomorrow.
Management at the Patent and Trademark Office took full advantage of premature disclosure of the rules to selected news outlets (a move that seems in violation of the spirit if not the letter of the APA). The Office stressed the necessity for the rules in view of the backlog of unexamined applications, despite their own admission in public meetings that the rules, even in their more draconian original form, would at best merely reduce the increase of pending applications. Also reported is the Patent Office position that continuations are a form of gaming the system, an accusation originating in a misguided academic paper by Lemley and (now CAFC Judge) Moore, which asserted the fantasy that applicants could "wear down" an Examiner and obtain an undeserved patent. Another practice asserted as justification for the new rules is the alleged practice (without any statistical back-up) of later-filed claims being presented to ensnare competitors' efforts to design around patent claims. Despite the fact that this practice has never been prohibited by the CAFC (or its predecessor, the CCPA), the Patent Office believes it harms innovation. Lost from their calculus is the requirement that patent claims, whether originally presented or otherwise, must satisfy the provisions of 35 U.S.C. § 112, first paragraph. It is unclear (and the Office has presented no data) how much this is a problem and how much just a convenient straw man for the new rules.
One interesting side-note is that the Office has chosen
Margaret Peterlin (at left), Deputy Under Secretary of Commerce for Intellectual Property
to be their spokesperson. Ms. Peterlin
is the subject of a lawsuit filed by Greg Aharonian, who contends that
her appointment is in violation of the statutory requirement that the Under
Secretary have patent experience. Perhaps reflecting this lack of experience, Ms. Peterlin expressed the
opinion that the Office was unconcerned that it lacked the statutory authority
to promulgate these rules. This is an
interesting position, since under 35 U.S.C. § 2(b)(2) any such regulations cannot
be "contrary to law," and Congress has not amended 35 U.S.C. § 120 to
limit the number of continuations. According to Ms. Peterlin, informal communications with the Office of
Management and Budget (who have general oversight but no direct knowledge or
regulatory authority over the Patent Office) and members of Congress are the
basis for this confidence. It will be
interesting to see what the District Court in D.C. has to say about the matter;
perhaps (as in the domestic spying cases) the Administration believes it can
obtain post hoc approval from Congress at some time in the future if need be.
Patent Docs will publish more on these rules when they are revealed to the rest of us tomorrow.
For additional information on this topic, please see:
- "Procuring Patent Protection from the Present USPTO," August 15, 2007
- "New Continuation and Claims Rules to Be Published in Late Summer," July 25, 2007
- "They Just Don't Get It - 'Patent Reform' at the USPTO," April 11, 2007
- "Patent Applicants Beware: The Rules Are Changing (Again)" Part 1 and Part 2, November 6, 2006
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