Post-GSK: Where Do We Go from Here? - Readers Propose Changes

    By Donald Zuhn --

Last November, on the heels of the Eastern District of Virginia's decision to preliminarily enjoin the new continuation and claims rules, we offered a number of proposals that might help remedy the problems facing the U.S. Patent and Trademark Office.  Among our proposed alternatives to the Patent Office's draconian continuation and claims rules package were the implementation of an annuity system, the tailoring of patent protection and examination to the claimed subject matter or an applicant's needs, the creation of regional patent offices, an increase in fees for continuation applications, the promulgation of the reporting requirements set forth in new Rule 78(f) (and as modified by the Office's October 10, 2007 clarification of this rule), the creation of Japanese-style deferred examination, and a modification of the accelerated examination procedure currently in use.

While we offered a few of our own solutions, we also invited you to submit your suggestions.  With the GSK case about to reclaim patent law's center stage, it seems like an approproate time to turn to your suggestions.  Among the solutions that Patent Docs readers proposed were the following (which we have attempted to group into a few categories):

Continuation/RCE and claims fees:

• Charge increasing fees for successive continuation or RCE filings (e.g., a second continuation or RCE would cost 125% of the standard filing fee, a third continuation or RCE would cost 150% of the standard fiing fee, and a fourth continuation or RCE would cost 200% of the standard filing fee).
• Charging increasing fees for additional claims or groups of claims (e.g., three independent and twenty total claims would be included in the standard filing fee, six independent and forty total claims would cost twice the standard filing fee, and nine independent and sixty total claims would cost three times the standard filing fee).
• Encourage the use of multiply dependent claims by reducing or eliminating the multiple dependent claim fee (currently $185-370).

Information Disclosure Statements:

• Charge increasing fees for additional references submitted with an Information Disclosure Statement (e.g., twenty references could be submitted at no additional cost, references 21-50 could be submitted at $25 a piece, and references 51 and above could be submitted at $100 a piece).  The reader making this suggestion also proposed exempting some references (e.g., those being cited in priority applications or those being cited in corresponding foreign applications) from such a fee schedule.
• Charge a "modest" fee (e.g., $5-10) for each reference submitted with an Information Disclosure Statement.
• Expand the Peer to Patent project whereby the public is invited to submit references to the Patent Office.
• Eliminate the duty to disclose references altogether.

Examination:

• Give examiners more time to examine applications that contain more claims.
• Charge a fee for additional time spent examining an application (akin to the billable hours with which patent attorneys and their clients are so familiar).  The reader offering this proposal also suggested that an applicant be permitted to pay a fee to obtain examination by a second examiner.
• Encourage examiners to conduct telephonic interviews to expedite prosecution rather than mail out repetitious Office actions.
• Outsource search and/or examination.
• Charge increasing fees for more complex and time-consuming searches.
• Fix the Patent Office's "count" system by which examiner performance is measured (e.g., award a count for the first action issued on a continuation but not for the abandonment of the prior-filed application, award a count for the first action issued on an RCE rather than for the filing of the RCE, and award two counts for abandoned applications or allowances that do not result in subsequent continuations).

Patent Office administration:

• The Director and Deputy Director must have five or more years of non-PTO experience as a patent and/or trademark professional prior to appointment.
• The Commissioner for Patents must have five or more years of non-PTO experience as a patent professional prior to his or her appointment.
• The Office of Enrollment and Discipline director must have five or more years of non-PTO experience practicing as a registered practitioner prior to appointment.

Other proposals:

• Eliminate fee diversion.
• Hire more examiners.
• Increase examiner salaries.
• Move from "first to invent" to "first to file" system.
• Eliminate fee reductions for small entities.
• Eliminate requests not to publish and publish all applications within one-month of filing, thereby improving the quality of pre-filing searches conducted for subsequently filed applications.

So, readers, what do you think about these proposals?

Comments

[me]

Like alot of these ideas, but hate the idea of 78(f). No offense, but the person proposing that must not be in house. At a large corp the number of relationships between deals, inventors, filings and subsidiaries making doing a rule 78 report nearly impossible and the amount gained would seem to be limited. If a corp is abusing the system and filing many nearly idetical aps those corps should be dealt with on a corp by corp, attorney by attorney basis.

[EG]

It would be good to prepare and keep a list of all these proposals for later. But expecting them to be considered or especially adopted by the PTO now is a pipe dream. Many of these same proposals have already been suggested and rejected/ignored by the current PTO hierarchy. We simply need to hope and pray that the GSK/Tafas suits stalls the current Rules mess until 2009 and the next administration comes in who will hopefully listen to the private patent sector, as well as put in a Director/Deputy Director who really meets the qualifications under 35 USC 3.

[kuppy kuppy the humble puppy]

"Encourage examiners to conduct telephonic interviews to expedite prosecution rather than mail out repetitious Office actions. "

Only if the entirety of those phone interviews is recorded/transcribed and made publically available.

FYI, Kevin -- see my comment in the most recent article.