USPTO Proposes Rules for Prioritizing Patent Claims and Reducing Rework

On January 3, 2005, the U.S. Patent and Trademark Office issued two Notices of proposed rulemaking that are intended to "reduce the amount of rework by the USPTO" and "prioritize the claims reviewed during the examination process." The Notices give lengthy justifications for the changes, a sure sign that they will be quite controversial. Written comments must be received on or before May 3, 2006. No public hearing will be held.

Under the first proposed rule, a second or subsequent continued examination filing (whether a continuation application, a continuation-in-part application, or a request for continued examination) must be supported by a showing to the satisfaction of the Director as to why the amendment, argument, or evidence presented could not have been previously submitted, along with a $400 petition fee. Multiple applications that have the same effective filing date, overlapping disclosure, a common inventor, and a common assignee must include either an explanation of how the claims are patentably distinct, or a terminal disclaimer and explanation of why patentably indistinct claims have been filed in multiple applications. Commonly-owned applications and patents having a filing date within two months of each other and at least one common inventor must also be identified.

"Clearly, this has not been thought through very well," write the Patent Barristas. "The loss of patent term combined with the fees imposed with continuing practice provides more than enough incentive for expedited prosecution. This would seem to be a solution without a problem." European Patent Attorney Axel Horn agrees. "Sometimes Patent Offices seem to be tempted to solve what they perceive as their specific problems on the back of the applicants and their representatives," he writes at IPJur.

Under the second proposed rule, the Office will give an initial examination only to the representative claims, namely, all of the independent claims and only the dependent claims that are expressly designated for initial examination. The Office also plans to generally delay the patentability examination of any dependent claim that was not designated for initial examination until the application is otherwise in condition for allowance. In addition, if the number of representative claims is greater than ten, the Office will require the applicant to "share the burden" of examining the application by submitting an examination support document covering all of the representative claims including

1. A statement that a preexamination search was conducted, including an identification (in the manner set forth in MPEP § 719) of the field of search by class and subclass and
   the date of the search, where applicable, and, for database searches, the search logic or chemical structure or sequence used as a query, the name of the file or files searched and the database service, and the date of the search;
2. an information disclosure statement in compliance with § 1.98 citing the reference or references deemed most closely related to the subject matter of each of the independent claims and designated dependent claims;
3. an identification of all the limitations of the independent claims and designated dependent claims that are disclosed by the references cited;
4. a detailed explanation of how each of the independent claims and designated dependent claims are patentable over the references cited with the particularity required by § 1.111(b) and (c);
5. a concise statement of the utility of the invention as defined in each of the independent claims; and
6. a showing of where each limitation of the independent claims and the designated
   dependent claims finds support under 35 U.S.C. 112, ¶ 1, in the written description of the specification (and if the application claims the benefit of one or more applications under title 35, United States Code, the showing must also include where each limitation of
   the independent claims and the designated dependent claims finds support under 35 U.S.C. 112, ¶ 1, in each such application in which such support exists).

A search report from a foreign patent office will not satisfy the requirement. However, if an applicant decides to cancel the claims necessitating an examination support document, rather than provide an examination support document, then the applicant may request a refund.

According to the accompanying press release from the USPTO:

In FY 2004, almost one-third of the 355,000 new patent applications were
directed to inventions that had already been reviewed by the USPTO, but
applicants resubmitted them mostly with only limited changes to the claims or,
sometimes with the same claims that the USPTO had previously rejected. While
some resubmissions are necessary, addressing them detracts from the agency's
ability to examine new patent applications. Also, over 40% of new applications
in FY 2004 had more than 20 claims. Although the initial examination of large
numbers of claims may sometimes be necessary in certain complex applications,
when these must be filed, applicants should be prepared to assist the agency in
ensuring these applications don't absorb a disproportionate amount of the
limited time the USPTO has to review applications.

Click here for more data on continuing application trends. Click here for more data on numbers of patent claims in applications. And click here for the USPTO's pendency projections under various scenarios.