USPTO Makes Changes to the Patent Application Rules

The US Patent and Trademark Office (USPTO) published significant changes to the rules of practice for patent applications on August 21, 2007. The new rules, which take effect on November 1, 2007, will restrict the number of times applications can be examined and make it more expensive to prepare applications with more than 25 claims. The USPTO justifies the rule changes as necessary to deal with increasing volumes of patent applications by improving examination efficiency. Under the revised rules, as of right, applicants will be limited to two new continuation applications and one request for continued examination. Beyond these limits a petition must be filed showing why the additional amendment, argument or evidence could not have been previously submitted. Some observers have commented that these restrictions will particularly affect universities and biotech companies where the full scope of their inventions often cannot be established until years after the initial discovery. The revised rules also require that any application with more than five independent claims or 25 total claims must be accompanied by an "examination support document" (ESD) covering all the claims. An ESD must include a pre-examination search statement, disclose the most closely related references, explain in detail how each independent claim is patentable over the cited references and show where the limitations of the claims are supported in the specification. If the office deems the ESD to be insufficient, an applicant will be given two months to revise and resubmit the ESD or to amend the application to avoid the need to submit an ESD. The rules further state that multiple applications with patentably indistinct claims will be treated as a single application subject to this 5/25 rule. However 5/25 additional claims can be presented in each of the two permitted continuation applications without an ESD, as long as they are prosecuted serially or contain patentably distinct claims. The USPTO states that about 8% of applications filed in 2006 contained more than five independent claims and less than 25% contained more than 25 total claims. However, Professor Dennis Crouch of the University of Missouri School of Law has calculated that 35% of all patents that have been litigated in the US since January 1, 2002 had more than 25 claims. Some have argued that the new rules go beyond the mere implementation of the law and exceed the authority of the USPTO. A complaint seeking an injunction in respect of the new continuation rules has already been filed by Dr Triantafyllos Tafas in the Eastern District of Virginia. For the USPTO announcement, see: http://tinyurl.com/yvkv2p For a USPTO presentation outlining the changes, describing the requirements for an ESD in detail, visit: http://tinyurl.com/yusdzk For related commentary, see: http://www.the-scientist.com/news/home/53497/ and http://tinyurl.com/2c7zbs For Prof Crouch's analysis, see: http://www.patentlyo.com/patent/2007/08/patents-with-mo.html For the Tafas Complaint, visit: http://tinyurl.com/289khm Summary by: Tom Feather