By Douglas Agopsowicz & James G. McEwen
On Jan. 3, 2006, the USPTO proposed sweeping changes to the rules governing patent claim drafting and examination practice in an effort to increase the efficiency of the examination practice. The two most significant proposed rule changes: (1) limit the number of continuations allowed to be filed by the applicant as a matter of right to one, and (2) require the applicant to designate no more than ten representative claims, otherwise the applicant must file an examination support document. The proposed rule changes also create an automatic rebuttable presumption that similar, commonly-owned applications filed within two months share at least one patentably indistinct claim.
PROPOSED CHANGES TO CONTINUATION PRACTICE
Continuations Limited To One As A Matter Of Right
A proposed rule change (proposed in 48 Fed. Reg. 71) modifies 37 C.F.R. part 1 by limiting the number of continued examination filings to one as a matter of right. This rule applies to continuation applications as well as requests for continued examination (RCEs). The USPTO plans on implementing this proposed rule in order to reduce the backlog of applications (over 900,000 cases currently pending in early 2006) and improve the quality of issued patents by making the exchanges between examiners and applicants more efficient.
The proposed rule requires an applicant to support a second or subsequent continued examination filing with a showing as to why the amendment, argument or evidence presented in the second or subsequent filing could not have been previously submitted. Examples of a sufficient showing include:
(1) the final rejection contains a new ground of rejection that could not have been anticipated by the applicant;
(2) the applicant seeks to submit evidence which could not have been submitted earlier
- e.g., data necessary to support a showing of unexpected results just became available and was the result of a lengthy experimentation that was started after the applicant received the rejection for the first time;
(3) an interference is declared in an application containing both:
- claims corresponding to the count(s), and
- claims not corresponding to the count(s); and
(4) in an interference, the Administrative Patent Judge suggests that the claims not corresponding to the count(s) be cancelled from the application in the interference and pursued in a separate application.
Special Rules For Divisionals And CIP Applications
This proposed rule also creates special rules for divisional applications and continuation-in-part (CIP) applications. Regarding divisional filings, the proposed rule limits the filing of divisional applications to only involuntary divisionals, e.g., divisionals filed as a result of a requirement of unity of invention under PCT Rule 13 or divisionals filed as a result of a restriction requirement under 35 U.S.C. §121 in a prior-filed application. Regarding CIP filings, the proposed rule requires applicants to identify which claims are supported by the parent’s disclosure. Claims which the applicant does not identify as supported by the parent’s disclosure are only entitled to the filing date of the CIP. Furthermore, the new rule permits continuation filings on CIPs, but all the continuation claims are only entitled to the benefit of the filing date of the CIP.
Designation Of Representative Claims
Another proposed rule change (proposed in 71 Fed. Reg. 61) modifies 37 C.F.R. part 1 by focusing the USPTO’s initial examination on the claims designated by the applicant as representative claims. The USPTO proposed this rule to assist examiners in focusing on the most important claims during the claim examination process, and reduce the effort wasted by examiners who are currently required to examine every claim in an application for every Office Action on the merits, even if the patentability of dependent claims stands or falls together with independent claims which they depend on. The representative claims will be all of the independent claims and only the dependent claims that are expressly designated by the applicant for initial examination. If the number of representative claims exceeds ten – either because the application has more than ten independent claims, or because the applicant designates enough dependent claims so that the sum of the independent and designated dependent claims exceeds ten – then, under the proposed rule, the applicant must submit an examination support document which covers all the representative claims.
Dependent claims which are not designated as representative claims by the applicant are deferred until the PTO decides that the application is in condition for allowance, at which point the undesignated claims are examined for only compliance with 35 U.S.C. §§101 and §112, and not with respect to 35 U.S.C. §§102 and 103.
The Examination Support Document
The examination support document would resemble a petition to make special for accelerated examination (see MPEP §708.02) and would require the applicant to disclose the following: an affirmative statement that a search was made; the fields of the search; a copy of each reference deemed most closely related to the subject matter encompassed by the claims (if the reference is not already in the record); and a detailed argument explaining why the claimed subject matter is patentable over the references.
REBUTTABLE PRESUMPTION SIMILAR, COMMONLY-OWNED APPLICATIONS ARE PATENTABLY INDISTINCT
Rebuttable Presumption of applications
A third proposed rule change (proposed in 48 Fed. Reg. 71) proposes that when multiple applications are filed with the same effective filing date for which a benefit under 35 U.S.C. is sought, an overlapping disclosure, a common inventor, and a common assignee, a rebuttable presumption is triggered that at least one claim is not patentably distinct. To rebut this presumption, the applicant must provide either:
(1) an explanation of how the claims are patentably distinct, or
(2) a terminal disclaimer and explanation of why patentably indistinct claims have been filed in multiple applications.
Similarly, if multiple applications have different filing dates which are within 2 months of each other, overlapping disclosures, a common inventor, and a common assignee, the applicant is required to make an express disclosure. The express disclosure must disclose the application number (and patent number, if applicable) of every application or patent matching these criteria. This proposed rule change is based on the notion that the applicant is in a far better position than the PTO to determine whether there are one or more applications or patents containing patentably indistinct claims, and therefore, it will increase examination efficiency for the applicant to be required to assist the USPTO in resolving potential double patenting situations.
PROPOSED CHANGES CONTROVERSIAL
Despite the best efforts of the United States Patent and Trademark Office to convince many in the patent field otherwise, the proposed changes have run into substantial opposition from small businesses as well as the patent bar itself. Copies of the comments provided by these groups are found at:
(1) http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/continuation_comments.html (continuation comments)
(2) http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_claims/claims_comments.html – (claim comments)
The Small Business Administration has come out against the proposed rules since “[s]mall entity representatives indicated that limiting applicants to ten representative claims would make it very difficult to properly identify a potential patent, could create future liability concerns, and would weaken potential patents.” Additionally, the Small Business Administration indicated that “[s]ome small entities also stressed that continuation applications are used frequently by small businesses to secure the most commercially successful inventions. Therefore, limiting the number of continuations could severely weaken small entities’ ability to protect their patent.” As such, the Small Business Administration suggested that the United States Patent and Trademark Office instead provide incentives, such as accelerated examination of cases with less than ten representative claims and increasing fees for each successive continuation application. Copies of the Small Business Administration comments are found at Letter from Office of Advocacy (Advocacy) of the U.S. Small Business Administration (SBA) of April 27, 2006 Re: Changes to Practice for the Examination of Claims in Patent Applications, 71 Fed.
The American Intellectual Property Law Association (AIPLA) has also come out squarely against these proposed changes. The specific criticisms include the fact that there has been no evidence that the proposed changes will have the desired effect of reducing the backlog of cases, would hamper the legitimate uses of continuations to obtain claim scope to which applicants are entitled under the law, and could increase the workload instead. The AIPLA took specific issue with various “flawed” assumptions that appear to be the basis of the rule, and also noted that, in not examining some of the claims, the United States Patent and Trademark Office may be operating ultra vires since the rule changes are outside of their statutory authority under 35 U.S.C. Copies of the AIPLA Comments on these rules are found at Letter from AIPLA to USPTO of April 24, 2006 Re Comments on Proposed Rules: “Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims” 71 Fed. Reg. 48 (January 3, 2006) and Letter from AIPLA to USPTO of April 24, 2006 Comments on Proposed Rules: “Changes to Practice for the Examination of Claims in Patent Applications” 71 Fed. Reg. 61 (January 3, 2006).
The American Bar Association has also come out against this rule change. To date, no major association has come out in support of the proposed rule changes. However, it appears that certain larger companies are privately supporting the changes, but have not submitted formal comments to the United States Patent and Trademark Office in support of the changes. Instead, such companies appear to be using their law firms to come out in support of the changes since these firms have all submitted identical letters. See Patently‑O USPTO Continuation Rule Changes (Apr 28, 2006).
The deadline for submitting final comments closed May 3, 2006. As such, it is conceivable that the rules could be enacted any time thereafter. However, given the controversy surrounding these changes, the fact that another executive agency (the Small Business Administration) has formally opposed the changes, and the virulent opposition expressed by the patent bar (such as the AIPLA and the ABA), it is likely that the rules will need substantial modification in order to be enacted in a manner which holds up to judicial review. However, while the USPTO is unlikely to enact the rules, as noted in the AIPLA comments, cautious patent holders will be rushing their filings to be made prior to any issuance such that the only certain result will be a spike in potential filings in May.