Intellectual Property Directions

Last month the USPTO issued some rules changes that become effective on November 1, 2007. Some of these changes (see the patent office slide show at TechRoadmap Files) will result in significant extra expense for inventors. I’ll list some of these rules changes below, but a key point that many people may have missed is that these rules will apply retroactively to many currently pending applications! That’s right. If you filed an application, say, a year ago and have not yet had your First office Action On the Merits of your claims (a FAOM), that is, not an administrative office action, then the new rules apply to your application (unless your FAOM is mailed before November 1).

The two main rules changes are:

1. A patent is limited to 5 independent claims and/or 25 total claims by right. If you exceed this limit you must file an “Examination Support Document” justifying the excess claims. If you have co-pending applications with even one “patentably indistinguishable claim”, then all the claims in all the applications count toward the 5/25 limit. The goal of this rule is to eliminate the virtually unparsable claim sets in some patents.

   You must submit a list of all commonly owned applications or patents that have:
   –An inventor in common with the application; and
   –A claimed filing or priority date within two months of the claimed filing or priority date of the application.

   Presumably the examiner will look for applications with a patentably indistinguishable claim.

2. An inventor is limited to only 2 continuing applications (i.e., a divisional, a continuation, or a continuation in part) and 1 request for continued examination. The goal here is to preclude effectively infinite pendency (See Lemelson)

Whether you agree with the PTO’s goals, whether you think these rules will achieve those goals, the one thing you should probably disagree with is the application of these new rules to patent applications that have been caught in the PTO’s molasses-in-January examination speed.

If you have an application on file that has more than the 5/25 claims and has not received its FAOM, you might want to take action now. Have your attorney check with the examiner. After the 11/1/07 deadline you will have to withdraw claims, file an ESD, or try to get it divided into several separate applications (in which case you can have 15/75 total claims).

Good Luck

This entry was posted on Monday, September 17th, 2007 at 8:33 pm and is filed under new patent rules. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.