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« Innogenetics, N.V. v. Abbott Labs. (Fed. Cir. 2008) | Main | Conference & CLE Calendar »

January 18, 2008


NIPRA has posted (another) sample letter to Congress regarding 35 USC 123 (USPTO requiring search etc.) at:


In part:

This Section, as written would be detrimental to the U.S. Patent System and it would hinder rather than promote the progress of science and the useful arts for at least five (5) reasons:

1) It gives too much discretion to the current U.S.P.T.O. Director (and to any future Directors who might not have professional background and experience in patent law) to make requirements that unduly burden patent applicants. The current U.S.P.T.O. Director (Jon W. Dudas) has already demonstrated a marked anti-patent (and anti-patent applicant) sentiment, as demonstrated for example his ill-conceived final "Claims and Continuations" rule-making which is currently under an injunction issued by the U.S. District Court in Alexandria. Specifically, Section 123 gives the Director "carte blanche" to promulgate whatever requirements he sees fit, regardless of whether those requirements might unduly burden patent applicants and the patent application process. For example, in the final "Claims and Continuations" rule-making, the Director has shown (in Rule 265) his desire to require patent applicants to not only perform a patentability search for every claim, but also to perform a technical assessment of the prior art, an analysis of the claims for legal support in the specification, and a patentability determination of how each element and limitation in each and every claim by its wording technically distinguishes over the prior art. In effect, the patent applicant is required by the Rule to do the totality of the work of the patent Examiner. It is apparent that one of the purposes of the workload burden of new Rule 265 is to discourage the applicant from filing applications which would come under its purview (i.e applications with more than 5 independent claims or 25 total claims). Of course, if Section 123 is passed, Rule 265 might apply to every patent application by this time next year without any recourse for patent applicants whatsoever.

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