As I noted yesterday, the PTO is allowing patent applications at a much lower rate than in prior years. You’ve probably also heard about the PTO’s attempt to change the rules of patent prosecution by limiting the number of claims and the number of continuation applications that can be filed; as previously reported, the implementation of those rules has been enjoined and the ruling is currently on appeal at the Federal Circuit. But that’s not all–in the last two years of the Bush administration, several other proposed rule changes have added to the Patent Bar’s frustration with current PTO leadership.
Proposed IDS Rules
In July 2006, the PTO published a new set of proposed rules regarding Information Disclosure Statement (IDS) practice. Under the PTO’s duty of disclosure rule, patent applicants and related parties have a duty to disclose information to the PTO that is material to the patentability of the claims of a pending application. The effect of this rule is that applicants often submit a large number of prior art documents to the patent examiner, especially if the applicant has performed a pre-filing search. Examiners would often find it burdensome and time-consuming to review a large stack of references.
The PTO proposed to radically change the IDS rules, as they would:
- Impose a requirement for the personal review of, and the provision of information about, citations longer than 25 pages or beyond the 20th citation;
- Eliminate the fees for, but permit only timely, IDS submissions;
- Only permit the filing of an IDS after the mailing of a notice of allowance if a claim is admitted to be unpatentable and a narrowing amendment is also submitted;
- Permit third parties to submit prior art up until the mailing of a notice of allowance after application publication;
- No longer permit an IDS to meet the submission requirement for a request for continued examination (RCE), although it would permit, after payment of the issue fee, certain amendments and petitions so applicants will not have to file a continuation application or an RCE for such items; and
- Revise the protest rule to better set forth options that applicants have for dealing with unsolicited information received from third parties.
The most radical of these changes is the requirement of submitting an explanation of any reference longer than 25 pages and for any reference after the 20th reference submitted. This would require a detailed explanation of why the reference was being submitted and correlating the prior art to specific claim language. These requirements would provide tremendous fodder to defendants during litigation and would certainly lead to prosecution history estoppel-type arguments.
The Patent Bar decried the changes and held its breath through 2007 and 2008 awaiting the final version of the rules. In October 2008, the PTO announced that the new IDS rules would not be made final in the current administration.
In August 2007, the PTO published a new set of proposed rules regarding the practice of alternative claiming. The practice is referred to as Markush claiming and is used extensively in the chemical field. For example, a claim may recite the be to a new compound as shown, where the R, X, Y, Z variables may include a wide number of compounds. This practice permits a large number of compounds to be claimed in a single claim. Examiners sometimes find this time-consuming and burdensome to search for the various permutations.
The new PTO rules would require that each claim be limited to a single invention. The PTO notice indicates that when alternative language is used to define multiple species in a single claim, such claims will be considered to be limited to a single invention when at least one of two conditions is met:
1. All of the species encompassed by the claim share a substantial feature essential for a common utility.
2. [A]ll of the species are prima facie obvious over each other.
Otherwise, the single claim may be subject to restriction to a single invention or species. Also, a claim may not incorporate the specification unless absolutely necessary. Markush claims must not have alternatives that include further alternatives and must not be difficult to construe.
These rules were, in part, to prevent circumvention of the currently-enjoined claim limitation rules. In October 2008, the PTO announced that the new Markush rules would not be made final in the current administration.
Proposed Appeal Board Rules
In June 2008, the PTO published a set of final rules regarding appeal practice before the Board of Patent Appeals and Interferences (BPAI). The new rules had the effect of increasing the number of formalities required in appeal briefs and would significantly increase the time and cost to prepare such briefs.
Specifically, the rules set page limits and font types that may be used in appeal briefs; set the exact headings that must be used in appeal briefs; changed the summary of the invention; required all non-appealable issues to be resolved by petition prior to filing the appeal; and required that technical terms be provided to a stenographer at an oral hearing. The fee for requesting extensions of time for filing briefs or other papers was also increased.
The new rules were scheduled to take effect on December 10, 2008. Some members of the Patent Bar led a campaign against implementation of these rules. On December 5, the PTO published a notice that the effective date for the new rules has been delayed.
Annual Practitioner Maintenance Fee
Finally, in November 2008, a brand new practitioner maintenance fee of $118 sprung out of the blue from the PTO. The PTO relies on a minor part of a notice of proposed rulemaking published in 2003 for this rule. After keeping a roster of attorneys and agents registered to practice before the PTO for years, the PTO suddenly now requires $118 per practitioner to maintain this list. This new fee will raise several million dollars for the PTO which it argues that it needs to keep the roster up-to-date.
A Better Future?
Hopefully, the new PTO leadership under an Obama administration will be more patent-friendly and try to maintain a better relationship with the Patent Bar. The current PTO leadership seems to be going out of its way to antagonize the Patent Bar and develop new rules to raise costs and place unnecessary limits on patent practice.