The Patent Office is at it again.
Last year the Patent and Trademark Office (PTO) proposed new rules that would dramatically curtail the rights of inventors to protect their inventions. The proposal was widely criticized by members of the patent bar and the Patent and Trademark office finally retreated. (At the American Intellectual Property Law Association meetings last year I had lunch with an Eglish patent agent who commented that he had never seen so many angry attorneys in one place).
Apparently believing that the hostility has blown over, the PTO is giving it another try. Under the proposed new rules, applicants may file two new continuing applications and one request for continued examination as a matter of right. Also, under the new rules, each application may contain up to 25 claims, with no more than five of them independent claims, without any additional effort on the part of the applicant. Beyond these thresholds, however, the new rules require applicants to show why an additional continuation is necessary or to provide supplementary information relevant to the claimed invention to present additional claims.
The problem with the PTO's solution is that it fails to address the underlying problem. Many cases that require more than one continuation are due to the failure of the patent examiner to make the rejection clear and thorough in the first place, or to provide the best art at the beginning. I recently received a final office action in an application which had already had a request for continued examination filed. In the case many of the claims were deemed to be allowable. After the filing of the request for continued examination, however, the examiner found new art and rejected the claims. Under the new rules, the client is essentially limited to one response - on final - to overcome art which the examiner should have found two years ago.
The best solution to the problem raised by the PTO is not to limit the applicant's ability to file continuation applications. Rather it is to teach examiners to write good office actions. Some examiners are very good. They provide a thorough review of the claims and explain where the prior art teaches the claim elements. Points of novelty are quickly discovered and solid patents are the result.
Other examiners, however, give a one paragraph rejection for dozens of claims and fail to explain where the elements of the claims are allegedly taught. I have one currently up on appeal where the examiner gave a 1 paragraph rejection of 48 claims (8 of which were independent) on three pieces of art from completely different fields. In a telephone interview the examiner stated that whatever changes we made to the claims he could find art to meet the amendments - apparently hindsight reconstruction is permissible in the eyes of some examiners.
In our response we objected that the rejection failed to follow the rules and noted that the art was from completely different fields and that there was no teaching or suggestion in the art why one would combine the three completely unrelated references. The final office action was another paragraph (almost identical to the first) only adding even less relevant references - along with a one sentence statement that our arguments were unpersuasive. Our options? - a fruitless continuation or an appeal.
Ironically, the PTO's proposed solution will not save any time or resources. With the new rules in place, Applicants will forgoe filing continuation applications in an attempt to convince the examiner, and simply file an appeal. Any savings in examination time will simply be offset by having to assign more examiners to the appeal board to deal with cases which could have been resolved during prosecution by thorough examination.
Apparently believing that the hostility has blown over, the PTO is giving it another try. Under the proposed new rules, applicants may file two new continuing applications and one request for continued examination as a matter of right. Also, under the new rules, each application may contain up to 25 claims, with no more than five of them independent claims, without any additional effort on the part of the applicant. Beyond these thresholds, however, the new rules require applicants to show why an additional continuation is necessary or to provide supplementary information relevant to the claimed invention to present additional claims.
The problem with the PTO's solution is that it fails to address the underlying problem. Many cases that require more than one continuation are due to the failure of the patent examiner to make the rejection clear and thorough in the first place, or to provide the best art at the beginning. I recently received a final office action in an application which had already had a request for continued examination filed. In the case many of the claims were deemed to be allowable. After the filing of the request for continued examination, however, the examiner found new art and rejected the claims. Under the new rules, the client is essentially limited to one response - on final - to overcome art which the examiner should have found two years ago.
The best solution to the problem raised by the PTO is not to limit the applicant's ability to file continuation applications. Rather it is to teach examiners to write good office actions. Some examiners are very good. They provide a thorough review of the claims and explain where the prior art teaches the claim elements. Points of novelty are quickly discovered and solid patents are the result.
Other examiners, however, give a one paragraph rejection for dozens of claims and fail to explain where the elements of the claims are allegedly taught. I have one currently up on appeal where the examiner gave a 1 paragraph rejection of 48 claims (8 of which were independent) on three pieces of art from completely different fields. In a telephone interview the examiner stated that whatever changes we made to the claims he could find art to meet the amendments - apparently hindsight reconstruction is permissible in the eyes of some examiners.
In our response we objected that the rejection failed to follow the rules and noted that the art was from completely different fields and that there was no teaching or suggestion in the art why one would combine the three completely unrelated references. The final office action was another paragraph (almost identical to the first) only adding even less relevant references - along with a one sentence statement that our arguments were unpersuasive. Our options? - a fruitless continuation or an appeal.
Ironically, the PTO's proposed solution will not save any time or resources. With the new rules in place, Applicants will forgoe filing continuation applications in an attempt to convince the examiner, and simply file an appeal. Any savings in examination time will simply be offset by having to assign more examiners to the appeal board to deal with cases which could have been resolved during prosecution by thorough examination.
David French writes:
I am in 100% agreement that there will be a flood of appeals. And you can file a continuation as well as an appeal if you have not used-up your right to a continuation.
It may be desirable to file an appeal on the first final office action because the examiner may not have produced a really focused decision. An appeal at that stage may be simpler to draft.
Filing an appeal always gets an examiner's attention. Sometimes just a notice of appeal will motivate the examiner to reopen examination.
Without reading the new rules, I assume they do not affect divisional filings. I have one examiner who issues restriction requirements asking for an election to be made amongst each and every one of the figures in the specification. My understanding is that if there were five figures present, then four divisional filings could thereafter be made.
It's examiner's practices such as this that leads to multiple filings based on an original invention disclosure.
This is just the beginning of what will turn out to be a very entertaining piece of theater, it were not so serious for so many people.
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I fear that prep and pros attorneys will not find it entertaining. I sat through the webinar today and am particularly concerned that they are applying the new rules in any case which has not received a first office action on the merits (FOAM) by November 1, 2007. I have cases that have been pending for more than 4 years and do not have a FOAM yet. I now get to go back to the filing date and any priority claim date and determine if any of the inventors filed any cases within two months of that date. Imaging the mess when a company uses two or more firms, or for firms that file hundreds of cases a year. I have a feeling that November 1 through February 1, 2008 (the new compliance deadline) is going to be a mad house, especially at firms who handle companies with prolific inventors.
I think that any committee at the PTO which changes the procedural rules should have to have several private practitioners. It is apparent the PTO does not look at the practical effect of these rules on applicants. They make changes to the process which will be more difficult and expensive for applicants. I will bet in the long run the new rules will have no positive effect between the increase in appeals, divisional filings, and extra paperwork associated with referencing applications which are filed in the two month disclosure window that have nothing to do with the pending claims.
With respect to divisionals, one bizarre statement in the webinar was that CIPs cannot be filed from divisionals. If the statement was accurate, that sets up a strange situation where an improvement in a originally nonelected invention could not obtain the priority advantage, while a CIP for the originally elected claims would work. Seems like a great way to create attorney-client conflict. Two years after you elect group I, the client makes a valuable advance in group II. The attorney becomes the goat for encouraging the client to pick group I.
Finally, one comment in the webinar that seemed confusing was a statement that the claims from a parent case could be counted in a continuation for purpose of the 5/25 claim/EDS analysis. They also claimed that you could effectively get 15 independents and 75 dependents via an application and 2 continuations. I am unsure how this can be if the claims in the parent are counted when analyzing the continuation. Unless you file very lean continuations, every one would provoke an EDS.
My one hope is that the suit which was filed yesterday will be successful (I know nothing other than it has been filed). I have no problem dealing with new rules, but applying them to cases which have already been filed is unfair to applicants.
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