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June 26, 2007
USPTO Rules
Hal
Wegner reports: The notorious proposed PTO rules that have generated truly
unprecedented negative responses from the patent community remain in limbo but
with a substantial chance that the new rules will be implemented. Despite
serious discussions with personal interviews with OMB by at least five different
groups, there has been no indication given that the OMB will block the PTO's
rulemaking efforts.
Here's the short course, courtesy of Mr. Wegner -
A Thirty Day Window for Action before the Rules are Effective:
Patent applicants will have at least 30 days from the date of publication before
the rules become effective.
Three Principles to Operate under the New Rules:
Based upon intelligence confirmed through multiple sources and reported in the
attachments, there are three major principles
Principle (1) – The “2+1” Limit on Continuations/RCE’s: First, a patent applicant is limited to one (1) RCE and (2) continuing applications; the rules will be applied retroactively for cases that have not yet received a first action on the merits.
Principle (2) – "3+1 Transition Rule": For cases which do have a first action by the time of the new rules, a “bonus” continuation will be allowed, i.e., a total of one (1) RCE and three (3) continuations.
Principle (3) – The “25/5” Claim Limits: Twenty-five (25) total claims, including up to five (5) independent claims.
What to do, “today” – Identifying Cases with a Potential Need for Refiling: It is important at this stage to identify cases where a continuation and/or RCE may be needed and where there has already been filed the limit on continuations/RCE’s. Note that the information made available and reported in the attachments suggests that there is one additional continuation/RCE permitted for transition cases – those already on file.
Filing Continuing Applications “Today” will not extend the limit: Because there are transition bonus rules that should apply, if an application is already at the limit, there is no special point in filing a continuation “today”, i.e., before the effective date of the new rules.
Litigation to Challenge the Continuation Rules: There are certain patterns for a test case that will ideally be sought to challenge the new rules. But, any test case will take a considerable period of time, particularly if there is no expedited consideration of the action at the PTO stage.
Choking the Appellate Process, Anticipated Board Backlog: Above all, it may be expected that the continuation rules will create a flood of appeal briefs to the Board. At present, the average examiner sends roughly one case to the Board each year. If the new continuation practice were to result in just two additional appeals per examiner per year, this would triple the workload of the Board and shortly create a multiyear backlog of appeal cases. As applicants would desire a de facto deferred examination, the greater the backlog at the Board, the more this strategy would be used – further increasing the backlog.
Posted by Patent Hawk at June 26, 2007 6:22 PM | Prosecution