The American Intellectual Property Law Association (AIPLA) held meetings in Washington D.C. last week. Hal Wegner reported on comments from Leon Radomsky, Chair of the AIPLA Chemical Practice Committee:

John Doll's presentation during the AIPLA Annual meeting focused on the increasing pendency statistics rather than on the proposed new limited continuation rules. [He] indicated that the USPTO is still studying the comments submitted regarding the limited continuation rules and that the USPTO is open to implementing other measures to reduce pendency instead of the limited continuation rules. For example, [he] indicated that [the] USPTO is considering whether instituting different levels of examination (with higher examination fee providing a higher level of examination) will decrease pendency. Apparently, Kevin Rivette of IBM will be involved in working on this proposal, according to John's comments. [He] reiterated that USPTO cannot hire its way out of the pendency problem.

That the patent office cannot hire enough examiners goes to the root of both the patent quality and pendency issues. The agency sheds competent workers quickly, owing to abysmal management, resulting in low examiner pay and lousy work conditions, and cannot hire qualified candidates, leaving the dregs as career examiners. From a prosecutor's viewpoint, there is tremendous wasted effort from replying to inane rejections, including appeals from examiner cluelessness.

Jon Dudas spoke to the AIPLA Board of Directors on Wednesday on the same note, that "“[o]ther USPTO speakers indicated that the proposed IDS rules and the ten claim examination rule are very likely to be implemented."

Radomsky thinks the "the IDS rules and the ten claim examination rule are highly likely to be implemented in the near future. However, it is not likely that the limited continuation rules would be implemented in their current form in the near future."

About the claim 10-pin bowling limitation, Radomsky opines: "[t]he ten claim rule is not as onerous as it appears. It is possible that instead of a multiway restriction, the examiners would examine the ten elected claims and then rejoin the other claims, thus foregoing the necessity of filing a divisional application covering the non-elected claims."

On revising IDS rules, Radomsky concludes that "[t]he IDS rules are more onerous and would increase the burden and cost on patent applicants." The suggested IDS revision is likely to affect many applications of sophisticated technologies, as the new requirements relate to reference document length and number of references cited.

Thanks to Hal Wegner.