Troubling Changes To Patent Rules

On January 3, 2006 the United States Patent and Trademark Office (Patent Office) proposed changes to the current patent filing procedures that will dramatically change the process inventors and small businesses use to seek patent protection. The proposed changes also limit inventors' ability to protect their inventions. The public may submit their feedback on these changes by May 3, 2006.

CHANGE NO. 1: The first change alters the current "continuation practice" by limiting the number of correspondences that inventors may have with the Patent Office. Additional correspondence may be made with the Patent Office but only under limited conditions.

CHANGE NO. 2: The second change alters the current "claiming practice" by limiting the number of claims that may be presented on an invention, specifically, ten claims per application. The proposed change severely restricts the conditions under which additional claims may be presented.

Interestingly, the stated purposes of the changes are to reduce the back log of un-examined patent applications and increase the quality of the patent application review. Unfortunately, these changes also bring out two important negative implications:

• INCREASE COST TO OBTAIN PATENT
• NARROW PATENT PROTECTION

Under the proposed changes, an inventors may only present ten independent claims even if the technology to be patented requires more. The Patent Office states that more claims may be presented if the inventor provides an opinion as to the reason that the invention is patentable over a prior art search but such opinion may be expensive. Hence, the inventor may have to accept narrow claim coverage that may not sufficiently protect their invention. instead of continuing to pursue broad patent protection. Also, inventors must seek patent protection on multiple aspects of their invention simultaneously which may be cost prohibitive. Moreover, in cases where the Patent Office has incorrectly rejected an application, the inventor may only proceed with a costly appeal process instead of attempting to highlight different ingenious aspects of the invention.

IMPACT ON BACK LOG AND QUALITY: The changes do not appear to achieve the Patent Office's desired objective of reducing its back log of applications and improving quality. Inventors, when faced with an examiner who does not understand the uniqueness of the invention, would immediately appeal or petition such refusal rather than use up their limited number of correspondences with the examiner. As such, in one aspect, the changes merely shift the load of the work from patent examiners to the appeal board and petition process. Moreover, patent attorneys would file additional applications on the same invention describing the invention in different ways to circumvent the changes increasing the number of applications. As such, in another aspect, it may increase the number of patent applications.

PUNISH EVERYONE BECAUSE OF A FEW: According to the Patent Office, only 1.2% of applicants engage in excessive claiming. The Patent Office has identified a claiming practice used by a few applicants and proposes changes that affect all applicants. Oddly, the Patent Office appears to be punishing all inventors due to the excessive claiming practice of a few.

PUBLIC REACTION: Feedback submitted by individuals, patent practitioners, businesses and trade associations range from full acceptance to full rejection. For example, one comment stated that the Patent Office is not taking into consideration "real-world effects on practitioners and applications." Another comment from an intellectual property association supports the Patent Office's efforts in increasing examination efficiency and patent quality but disagrees that the proposed changes would achieve the desired results.

SUBMITING YOUR COMMENTS: For information on submitting a comment, go to www.uspto.gov or www.ContactJamesYang.blogspot.com.

This information is provided for informational purposes only and not considered legal advice. Legal advice requires review and analysis of your specific factual situation.