Is the Patent Office Starting to Blink?

    By Kevin E. Noonan --

Among the many new requirements contained in the U.S. Patent and Trademark Office's recently-promulgated new rules on continuation application filing and claim number restrictions (see links below), the Office has imposed a deadline of February 1, 2008 for all pending applications to satisfy two reporting requirements.  First, applicants must identify (in every pending application) every commonly-owned application or patent that names at least one inventor in common and was filed or claims priority to an application that was filed within two months of the subject application.  Second, for every commonly-owned patent application sharing a common inventor and "substantially overlapping" subject matter, a rebuttable presumption will arise that there is at least one patentably-indistinct claim in each application (using a one-way obviousness test) (see new rules notice, p. 46,785).  Although reasons can be imagined for the purpose of these requirements, it is not unreasonable to assume that the burden imposed by these requirements may motivate applicants to simply cancel any application that is not sufficiently important to them to incur the expense of complying with the reporting requirements.  It is likewise not unreasonable to presume (in view of the Office's invocation of the "overwhelming" backlog of pending cases as justification for the new rules) that this economic disincentive to maintaining what are perceived to be "unnecessary" applications is precisely the intended purpose of these rules.

While heretofore strangely quiet on the subject of the new rules (see "Breaking A Very Long Silence"), recognition of the reality of the impending economic burden appears to have influenced the behavior of at least two major patent interest groups.  The Intellectual Property Owners (IPO) posted yesterday on their website the results of a survey of 37 member organizations relating to the extent of the burden these new rules would impose.  In addition, reliable sources have told Patent Docs that the Biotechnology Industrial Organization (BIO), joined by IPO and perhaps other groups, recently met with Patent Office officials to discuss the extraordinary burdens of complying with these rules.  As a result, these sources tell Patent Docs that the Office has promised to revisit this aspect of the recent rulemaking, and to either modify the rule or extend the deadline.  Although either would be welcome, the Office's acknowledgement of the justification of IPO's and BIO's complaints appears to contradict their representations to the Office of Management and Budget (and that Office's subsequent decision) that the rules imposed no significant economic impact.

It is unlikely that there will be any major retrenchment of the new rules absent court action (which the major organizations have abdicated to a sole inventor in a single action, and which has withdrawn a motion for an injunction or stay of implementing the rules) or a change in the administration.  The possibility that the rules will be relaxed is, however, consistent with this Administration's penchant for taking and pressing extreme positions with little factual justification, and retrenching only when faced with public pressure (political or otherwise).  This track record suggests that members of the patent community, including the patent bar, had better get busy if they will have any hope of adequately protecting U.S. patent rights in the face of a Patent Office administration that seems openly hostile.

For additional articles in this series, please see:

• "An Analysis of the New Rules: 37 C.F.R. § 1.142(c): Increasing the Chances of Submitting a Successful Suggested Restriction Requirement (SRR)," October 4, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.145: "Provoking a Restriction Requirement," October 3, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.78(d)(1)(i) & (vi): PCT Practice," September 23, 2007
• "An Analysis of the New Rules: USPTO Releases ESD Guidelines," September 17, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.265: Examination Support Document," September 13, 2007
• "An Analysis of the New Rules: Revisions to First Action and Second Action Final Practice," September 11, 2007
• "An Analysis of the New Rules: 37 C.F.R. §§ 1.78(d)(1) and 1.114: Streamlined Examination," September 10, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.117: Refund Due to Cancellation of Claims," September 10, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.142: Suggested Restriction Requirements," September 6, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.114: RCE Practice," September 5, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.75(b): 5/25 Limit on Claims," September 4, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.78(d)(1): Claims for Benefit of Prior-Filed Applications," September 3, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.78(f): Commonly Owned Applications and Patents," August 27, 2007

For additional information on this and other related topics, please see:

• "Breaking A Very Long Silence," October 1, 2007
• "It Ain't Necessarily So," September 28, 2007
• "Commissioner Doll Addresses ACI Biotech Patents Conference," September 26, 2007
• "Rules Challenger Amends Complaint and Withdraws PI Motion," September 11, 2007
• "Inventor Sues PTO to Prevent New Continuation Rules from Taking Effect," August 30, 2007
• "Patent Office Provides Recorded Web-Based Discussion of New Rules," August 30, 2007
• "New PTO Continuation Rules: Unfair to Biotech?" August 29, 2007
• "Proposed Agenda for September 12, 2007 Biotechnology/ Chemical/Pharmaceutical Art Group Meeting," August 24, 2007
• "The 'Word' on the New Continuation Rules (from the USPTO Webcast) - Part II," August 24, 2007
• "The 'Word' on the New Continuation Rules (from the USPTO Webcast) - Part I," August 23, 2007
• "New Continuation and Claims Rules Published," August 22, 2007
• "More on M.P.E.P. § 710.06," August 20, 2007
• "Patent Office to Hold Webcast on New Claim and Continuation Rules on August 23, 2007," August 20, 2007
• "Patent Office Announces that New Continuation and Claims Rules Will Be Published . . . Tomorrow," August 20, 2007
• "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

Comments

[Inquiring Mind]

Thanks very much for the PatentDocs post of September 28, alerting us to the new answer in the updated PTO FAQ which clarifies that divisional applications can not be filed for claims that have been examined in an IPER, apparently regardless of whether the claims have subsequently been restricted during the U.S. national phase examination. This means that in order to be able to prosecute these claims, we will need to file continuing applications before November 1 in a very large percentage of the application families in our portfolio, or we will lose the opportunity to prosecute these claims. This is going to require a large number of additional filings before the deadline--I hope we can make it. Thanks again for alerting us to (yet another) draconian aspect of these rules, as we had overlooked this even after several readings of the rules.