The economic impact of patent rules changes

Editor’s note: On Oct. 31, the U.S. District Court for the Eastern District Court of Virginia issued a preliminary injunction enjoining the U.S. Patent and Trademark Office from implementing changes in its claims rule.

On Aug. 21, the U.S. Patent and Trademark Office published changes to its rules of patent examination practice that effectively limit the number of claims and the amount of continued prosecution. The rules are retroactive, meaning that if you have a pending patent application, you might be required to comply with these new restrictions.

While there is no restriction at present on the number of claims filed with an application, the new rules limit the number of claims to a maximum of five independent claims and a maximum of 25 total claims – known as the 25/5 limitation. In a new application filed on or after Nov. 1, 2007, if the applicant desires to file more claims than the 25/5 limitation, an examination of support document, or ESD, must be filed. It must include a detailed pre-examination search statement, a listing of references considered most closely related to the subject matter of each claim, identification of the claim limitations disclosed by each reference, a detailed explanation of patentability, and a showing of support for the claim in the specification.

Among other possibilities, an ESD can have an impact on later litigation, both in claim construction and inequitable conduct considerations.

For applications that have already been filed and exceed the 25/5 limitation, if a first office action on the merits or a notification from the USPTO has not been received, the applicant can either amend the claims to comply with the 25/5 limitation, file an ESD, or file a suggested restriction requirement.

Related applications

For all pending applications, including applications filed before Nov. 1, the applicant must identify other commonly-owned applications for patents that have an inventor in common. If the filing or priority date of the pending application is within two months of the filing or priority date of any of the identified related applications, the applicant must notify the Patent and Trademark Office by Feb. 1, 2008.

For related applications there is a rebuttable presumption that the claims are patentability indistinct. If claims are patentability indistinct, all the claims are included together and the limitation on the number of claims is applied to the aggregate. The applicant can rebut the presumption of patentably indistinct claims either by explaining how they are patentably distinct or by filing a terminal disclaimer.

Under the existing rules and under the new rules, an applicant who filed a parent patent application may file continuation applications — applications that use the same invention description as the parent patent application but add new claims, or continuation-in-part applications, known as CIPs. CIPs include the material from the parent patent application along with new material and that have claims based on the parent material and the new material.

Under the existing rules, an applicant could file an unlimited number of continuations and CIPs. Under the new rules, an applicant can file two continuations or CIPs. To file more continuations or CIPs, the applicant must provide to the agency a petition and a showing of cause.

Under the existing rules, an applicant who filed a parent patent application may file an unlimited number of requests for continued examination, or RCEs. Under the new rules, a patent family — the parent patent application and any continuations or CIPs — is allowed one RCE. To file more than one RCE, the applicant must provide to the USPTO a petition and a showing of cause.

One significant impact of the new rules is that, under present patent office practice, the second office action on the merits is usually a final rejection. If the applicant is unsuccessful in overcoming the final rejection, the applicant must either file an RCE or file an appeal. An RCE is usually filed to give the examiner an opportunity to understand the invention more fully. When only one RCE per patent family is allowed, applicants must choose between appealing to the Board of Patent Appeals and Interferences or abandoning the case.

Overall, the new rules, while nominally reducing the Patent and Trademark Office’s workload, have the potential for a moderate to quite large negative impact in cost to the inventor community, and therefore could potentially have the greatest impact on the small entity and individual inventor.

Orlando Lopez is a partner in the Boston office of Burns & Levinson LLP. He can be reached at olopez@burnslev.com. Kathy Chapman, of counsel to Burns & Levinson, practices in New Hampshire. She can be reached at kchapman@burnslev.com.