Patent Continuation Changes: “No earlier than October 1, 2007”

The PTO provides the following notice: [LINK]

On July 9, 2007, OMB concluded its review of the Continuations and Claims rule changes. The final rules will be made public when they are published in the Federal Register, which is expected to be later this summer. The rules will become effective at least 60 days after publication in the Federal Register, and no earlier than October 1, 2007.

The IPO provides the following report:

PatentLawPic006PATENT CONTINUATION AND CLAIMS RULES EXPECTED TO BE IN EFFECT IN OCTOBER — At a conference in New York yesterday, a speaker from the USPTO said the new patent rules on continuation applications and numbers of claims are expected to be published in August and in effect in October. IPO believes the rules are likely to be less severe than those that were published for comment in 2006.

According to an internal e-mail published on the Patent Hawk site: [LINK]

An internal USPTO team is currently working on details of implementing the rule changes. Examiners and managers will be given information and training on the new rules once they are published in the Federal Register. Additionally, management is currently discussing with POPA the appropriate process for negotiating any impacts the rules package may have.An internal USPTO team is currently working on details of implementing the rule changes. Examiners and managers will be given information and training on the new rules once they are published in the Federal Register. Additionally, management is currently discussing with POPA the appropriate process for negotiating any impacts the rules package may have.

 

65 thoughts on “Patent Continuation Changes: “No earlier than October 1, 2007”

  1. 65

    The trifecta has been completed – the new IDS rules (whatever their current form might be) have now been submitted to OMB for review. How nostalgic – brings back such fond memories of the old IDS rules and those beloved pertinency statements. Yippee!

  2. 63

    Mark Nowotarski,

    Thanks for reading my post. I was not under a misimpression regarding the nationality of inventors of U.S. patents. The national origin of the inventors is irrelevant to my comments and observations. My point was directed to U.S. patentees (whoever they are) and their incentives to obtain exclusive rights applicable to this country. When such rights are weakened, so are incentives to invest in U.S. market activities. Loss of property right protection in the U.S. disadvantages its competitive position.

    Ron Katznelson

  3. 62

    Ron and MaxDrei,

    You both seem to be laboring under the misimpression that US patents are filed predominantly by US inventors. Not so. About ½ of the patents issued in the US have a non US resident listed as the first named inventor. See link to uspto.gov

  4. 61

    Joe said,

    “Anyone know if there is a website or group devoted to fighting the continuation changes?”

    Joe, there is a group that’s formed headed up by Dave Boundy of Cantor Fitzgerald and Mike Strickland of GlaxoSmithKline. We’ve already tried to derail the rules at the OMB and are now considering other options depending upon what actually gets published.

    Feel free to drop me a line at mnowotarski@marketsandpatents.com, and I can bring you up to speed.

    Regards

  5. 60

    Please excuse my ignorance, but why would OMB have authority to set the new continuation rules? Many of the comments to the original rules stated (correctly in my opinion) that the USPTO did not have the authority to limit continuations. So why would OMB? And what people know the final set of rules? Does anyone outside of OMB/USPTO konw them? Did the USPTO send over the final set of rules to OMB for a rubber stamp? Or did OMB work in revising them also?

  6. 59

    MaxDrei,
    You are correct that continuations and CIPs are unique to the US. However, you have the resultant effects of limiting US continuations backwards. Contrary to your belief/concern, I say “heaven help the USA” when the new continuations rules go into effect. This is because the rest of the world will receive the greatest competitive trade benefit ever over the U.S. at the expense of US inventors, who will obtain weaker and shorter-lived US patents.

    Patent renewal statistics provide evidence that US continuations help reduce US patents’ lifetime erosion compared to that of other nations. (See slides 9-11 of my presentation available at link to whitehouse.gov ). It can be seen that due to accelerated claim obsolescence, EPO and JPO patents’ average survival rates eroded by about two years and 1.5 years per decade respectively. In contrast, US patents’ lifetime erosion as experienced in the ‘80s and ‘90s has been virtually reversed in this decade. (See the slight lifetime increase trends in the patent renewal rate table on page 64 of the USPTO 2006 annual report at link to uspto.gov ). See also the discussion on historical product lifecycle contraction and claim obsolescence in my paper on continuations available at SSRN link to ssrn.com .

    Evidently, you are generally incorrect that US patent applicants are relatively sloppy and that “the claims they write by the end of the priority year are more likely to be sub-optimal”. Rather, *everybody’s* initial claims are likely to be sub-optimal and incomplete. The reasons for the initial difficulties in claiming all elements and foreseeable equivalents of an invention are discussed at length in my paper on continuations. Currently, only U.S. patentees have later opportunities through continued examination procedures to amend and adapt new claims to better protect their products in the market. U.S. patentees have had these rights for more than a century. In some cases, certain claims that issue later in U.S continuations or CIPs cannot be presented abroad. The result is that claim portfolios for the same invention disclosures can differ widely within an international family of patent counterparts. In higher likelihood, U.S. patents contain claims that more closely match actual products and innovations in the market. Other nation’s patent laws do not readily permit such later claim adaptation and therefore their original sub-optimal claims become obsolete at an ever-growing rate.

    In a market reality in which product lifecycles continuously shorten over time, patent continuations enables U.S. patentees to mitigate claim obsolescence and thereby appropriate equivalent returns from their inventions. The rest of the world has been marching along a path of slow patent rights’ erosion, which in a decade or two will make the 20 year patent term irrelevant. It is just a matter of time before the rest of the world will realize that their inventors’ patent incentives are slowly evaporating. The U.S. now has it right. Unfortunately, just when this U.S. advantage begins to stand out, there are those who seek to rob the U.S. patent system of its structural strength that is so essential for maintaining the U.S. competitive innovation edge. So you see why I turned your words around and said “heaven help the USA” when the new continuations rules go into effect? We will be doomed to the same slow patent death march that your patent owners have been on for some time.

    Ron Katznelson

  7. 58

    NO it is very simple. I think I figured it out. Congress cannot grant the authority to the USPTO to prevent the filing of continuations while allowing a party to sue the Director for a patent. Jursidiction of the courts is solely within the purview of Congress. I submit that Congress can never allocate such a power to an executive agency, because it would destroy the Separation of Powers Doctrine. In short, an executive agency could be created that would create its own rules, execute its own rules and adjudicate its own rules and determine who could or could not seek redress to the courts- I don’t think so. Giving the USPTO the right to prevent continuations while maintaining an Applicant’s right to sue the director for a patent is tantamount to allowing the USPTO to decide control the jurisdiction of the Courts with respect to an applicant. I don’t think that is gonna fly. Any legislation to that end would be struck down by the Supreme Court.

    Considering that Congress cannot grant this power I suspect that the new rules seeking to limit continuations are a fantasy that the backers of the same are soon to be awakened from. In short even if Congress amended 35 USC 120 to allow the Director to limit continuations, I would suspect that that statue would be void.

    The real issue evolves around Congress’ ability to ad hoc deny an individual from seeking patent protection of subject matter in a continuation application that would otherwise be patentable, excepting for some procedural issue with the prosecution of a parent case.

    I do look forward to reviewing these rules based upon the foregoing analysis.

    Does anyone here really think Congress can grant to an executive agency the right to determine the juridiction of the Federal Courts?

  8. 57

    > Congress has an affirmative duty to allow indivduals to obtain patents.

    I guess rejections are unconstitutional, because sometimes they lead to abandonment, and no patent issues.

  9. 56

    Changing the Rules half way through the Game is deeply distressing to all players, of course. But what strikes an observer from outside USA about the furious reaction to the upcoming change in the Rules for continuations is that it concerns a detail of US patent law unique to USA. Nowhere else in the world gives Applicant the comfort blanket of a “continuing” application. Continuing applications are available to non-American applicants at the USPTO too but only American inventors expect to fall back on continuations. In consequence, the claims they write by the end of the priority year are more likely to be sub-optimal. Those poor claims are a gift to the rest of the world. Heaven help ROW, when the new continuation Rules force American inventors to get their claims in optimal form already before the end of the Paris year.

  10. 55

    A patentee, I stand corrected. You are right. But the Senate bill now has a provision to empower the PTO to limit continuations.

    Joe, I file a lot of continuations, so I am also upset over the rules changes. We will be filing lots of appeals since the only other option is to take narrow claims or let the application go abandoned. It appears that Congress is heavily persuaded by whatever the PTO wants and groups like AIPLA and IPO are not fighting this like they should.

  11. 54

    Anyone know if there is a website or group devoted to fighting the continuation changes? Is there any hope at this point to do something before they are enacted? This is the first USPTO rule change in my 15 year career that is so offensive to me that I would actually contribute (time, money) to help fight them. Anything I can do?

  12. 53

    Primarily, I like Constitutional arguments and I see that we have a bill coming through Congress that might render many statutory construciton arguments moot. Therefore I am trying to determine the limit of Congress’s power to convey its core responsibilities to an executive agency. Quite honestly, I strongly desire to see all executive agencies trifurcated. Looking at the behaviour of the FDA, FAA and FCC, as well as the USPTO, it has become aparrent that we can no longer trust civil servants with immunity from the separation of powers doctrine. It is my belief that the political pressures have increased to such an extent as to undermine the proper function of these and many other executive agencies. I could be wrong, however.

  13. 52

    George,
    The proposed legislation has not passed. Even if it does pass, it will have the marked-up Senate version in which no broad authority is granted to the PTO. The PTO rules will be published and come into effect prior to any statutory change. So your conclusion that Congress is changing its mind in this matter is premature.

    – A patentee

  14. 51

    A patentee:

    Under the proposed legislation Congress will grant the PTO authority to limit continuations. So it really doesn’t matter what Congress originally intended with respect to 35 USC 120. In effect, Congress has “changed its mind” in light of perceived abusive practices.

    There will still be an appeal process in place. One will still be able to seek review at the BPAI and then the Federal Circuit.

    I don’t see how this provision can be challenged.

  15. 50

    KCB: “While 35 USC 120 clearly shows that Congress did not intend for the USPTO to limit continuations,…”

    Congress not only did not intend to limit continuations, it *INTENDED* that they would *NOT* be limited. No need to go far into constitutional rights because Congress has consistently been faithful to the constitutional imperative of protecting inventors’ right to *ANY* valid claim for their inventions, regardless of whether presented at the time of the initial disclosure or later. Read the following text with emphasis added by me:

    35 U.S.C. § 120: “An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application *SHALL* have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this section.”

    35 U.S.C. § 132(b): “The Director shall prescribe regulations to *PROVIDE* for the continued examination of applications for patent *AT THE REQUEST OF THE APPLICANT*. The Director may establish appropriate fees for such continued examination and shall provide a 50 percent reduction in such fees for small entities that qualify for reduced fees under section 41(h)(1) of this title.”

    Thus, nowhere in the statute is there a concept that late claiming is susceptible to any PTO denial process different from that of claims filed in an original application. Any distinction that may exist today in the law (“unreasonable and unexplainable delay in prosecution”) is judicially created doctrine. In fact, because each section of the statute cited above provides specific language on the limited role and discretion of the Director in connection with such provisions, he is permitted to assume no substantive policy role by the statute.

    So you see KCB, no need to go into constitutional arguments. So far we have no problems with Congress and its intent. We only have problems with those who seek to misinterpret the statute. Why do you think you will have any easier time with those who seek to misinterpret the Constitution?

  16. 49

    “I am sure that was not the result the examiner was hoping for.”

    From an examiner’s POV: This might be exactly what we were looking for. 3 dependent claims might mean 3 different search areas and 3 different inventions (references) to find that will significally increase the search time. Getting these 2 or 3 dependent claims withdrawn could save us hours in search time and hours in finding 103 motivations.

  17. 48

    Quite simply I am grasphing at straws. While 35 USC 120 clearly shows that Congress did not intend for the USPTO to limit continuations, I have always been of the mindset that Congress has an affirmative duty to allow indivduals to obtain patents. In other words, it is possible for Congress to do away with the patent process. The patent process has always been with us. In fact it was much easier to obtain a patent in the 19th Century. I suggest that you read the The Telephone Cases (150 pages plus) but its a good read.
    This is not unlike the Congress’ power to limit the jurisdiction of the Supreme Court. In fact I would say it is analogous. While Congress is given the unfettered right to limit the Jurisdiction of the Supreme Court there is a great deal of scholarly argument that alleges the Congress cannot vitiate the Supreme Court’s jurisdiction. This is similar here. While Congress can restrict patents, I dare say they cannot do away with them at all. Consider that a patent is to protect one invention. Therefore continuation rules that keep individuals from obtaining patents on an invention cannot be done, in my opinion. Not even by Congress, much less a mere executive agency such as the USPTO.

    Look I will put it to you this way. We, as a people, have been fighting this fight since the 1750s. In school you are incorrectly and intentionally misled to believe that the Colonists fought the crown of England, with being apprised of the real party in interest. The fact is that the rights of the colonist hurt the bottom line of the English business interests. We are facing the same struggle here. The international business interests are being hurt by individual patent rights. This is why you see me constantly grasping at a Constitutional argument. The Constitution was created to prevent us from suffering the way the colonists did. See now we face the same fight as the colonist I think it only fitting to use the weapon that the founders gave us The Constitution.

    If you read that document you will understand that it is mainly a document of self defense against autocratic rule. Quite frankly looking at what Bush I and Bush II have managed, we as a people I believe that we have failed to use it wisely.

  18. 47

    KCB,
    Why are you looking so far away into areas of constitutional law when one only needs to look to the statute (35 USC 120) to see that the PTO will be contravening the statute by limiting continuations? Your convoluted path argueing that applicants will be denied the opportunity to sue the Director for a patent is two steps removed. How about just sueing the director for denying me the right under Section 120 to obtain a patent that I am entitled to? I can certainly sue him for that, can’t I? Its true that I have to have standing. But under your convoluted theory one must have standing too. So what have you gained? Am I missing something?

  19. 46

    “I am sure that was not the result the examiner was hoping for.”

    That happens a lot: you file genus independent claims, genus dependent claims and only a couple species-specific dependent claims, which have to be dropped. Figure-based restriction requirements seldom reduce the workload or force a divisional for an extra count.

  20. 45

    I said: I always ask myself what aspect of the inventor’s embodiment defines the invention.

    Let me correct that statement: I always ask myself, and the inventor, what aspect of the inventor’s embodiment defines the invention.

    It is the aspects that define the invention that should make it into the claims. The inventor did not invent a screw. The inventor solved a problem and it is that solution that is the invention. The defining aspect may be that two members are held in a fixed spatial relationship. The screw is just one of many embodiments to implement that solution. I consider it my job to determine the defining aspects and then to determine the bounds of those aspects considering what the inventor accomplished and the prior art.

    Properly drafted claims should read upon many more embodiments than just those disclosed in the specification. Just because a patent attorney, or competitor, dreams up an embodiment that the claims read on does not raise an issue of inventorship. But, the inventor did not hire me to come up with embodiments that are patentable on their own, that is, the embodiment has its own set of claims. Such embodiments are adding elements/limitations to the inventor’s invention. I have no problem adding embodiments that illustrate that a particular element/limitation is not to be narrowly construed, for example, a rivet as an alternative to a screw, both of which are covered by the claimed fastener or mechanical connection, or better yet, by claiming the fixed spatial relationship of the two members.

    As a side point, I am always amused when I get a restriction requirement from an examiner based on the various embodiments illustrated in the figures. Typically, all the claims read on all the embodiments except for the dependent claims that are aimed at a specific embodiment. I usually elect one embodiment and the examiner has to examine all but 2 or 3 claims. I am sure that was not the result the examiner was hoping for.

  21. 44

    Mr. Dodd:
    We have an unfetterred right to sue the Director for a Patent. It’s that whole separation of powers thing. Otherwise the code would not have been passed by Congress allowing an applicant to sue the Director directly for a patent. So how can one sue for a patent if the USPTO precludes one from ever seeking the same due to the rules limiting continuation practice? Basically, it undermines the separation of powers, because the USPTO has . . . Mr Todd thank you for taking me down this analysis, I have it . . . limiting continuation practice as is being done by the USPTO is aggrandizement of powers to the Executive Branch to the detriment of the Legislative Branch-a clear violation of the Separation of Powers Doctrine. Applicants have a right to seek a patent for new and useful . . . . This executive agency has effectively nullified these statutes by rules due to an Applicant being required to sacrifice inventions in exchange for an opportunity to seek patent protection. In short, this is an excersie of legislative powers that the Constitution would preclude Congress from granting to any executive agency. This type of rule making MUST be done by statute through an act of Congress for it quite simply stops an applicant from have an opportunity to sue the Director for a patent on the invention that the rules would preclude one from seeking patent protection due to the continuation limitations. We must be granted a right to sue the Director for a patent vis-a-vis the 7th Amendment and as evidenced by the enabling statute in Title 35. Nailed it. Took a while, but nailed it I did. Q.E.D.

  22. 43

    I once had a situation where I suggested an alternative embodiment of an air jet for entangling yarn to an inventor and he said that the alternative would not work.

    I convinced the lab tech to make up the air jet with my proposed modifications and it worked better than the version from the original inventor.

    We decided we had to file two applications, one naming him and one naming me and assigned both applications to our employer (yes, I did disclose his version as prior art, this was in the days before the common assignee exception!). Both patents issued (and are now expired).

  23. 42

    You can broaden the scope of claims by omitting an element or broadening a term. Most people would agree that merely doing either would not constitute inventorship.

    The inventorship line may blur, however, where the applicant does not conceive of particular alternative embodiments that the lawyer specifically asks about (e.g., “Could you replace component A with component B?”) or just adds without the inventor’s input . If those attorney-conceived alternatives are nothing more than what would be routinely suggested, there probably isn’t inventorship.

    However, what if those attorney-conceived alternatives end up in the dependent claims for claim differential purposes? You could spend serious $$$ litigating inventorship there. Also, if those attorney-conceived alternatives end up being a point of novelty that is incorporated into an independent claim to achieve allowance, you will be very hard pressed to argue that they are routine and that the attorney is not an inventor.

    Finally, if a broad claims reads on both the attorney-conceived alternatives and the inventor’s conceived ideas, I would not completely write-off the attorney as an invetor. For example, if more than one species is necessary to provide written description for a genus and the attorney conceived one of those species, you might have inventorship there.

  24. 41

    KCB- 7th amendment provides no such right to counsel. You’re confusing the 7th (suits at common law) with the 6th (criminal proceedings). The only right one has per the seventh amendment is the right to trial by jury in a civil suit.

  25. 40

    Dear Mr. Kulaga:
    Great analysis. I just realized that continuation practice is intimately tied to lawyering, i.e., representing a client. A lawyer learns from the prosecution and becomes better educated as to what the prior art teaches based upon the opinion of the government agents, examiners, opining upon the same. Any restriction upon continuation practice, one can argued, could be tantamount to precluding an applicant from being properly counseled by an attorney, i.e., violation of the 7th Amendment. Moreover, considering that many attorneys must rely upon the USPTO to provide an opinion as to the nature of the prior art, one could argue that limiting continuation practice precludes the applicant from being properly placed on notice as to the nature of the prior art before finally determining what is patentable.

  26. 39

    Stepback, anon coward has it right regarding “lawyering.” Independent inventors typically come in with one embodiment of their invention. Remembering that an inventor is one who contributes to the conception of the invention and that the invention is defined by the claims, it is not “inventing” for a lawyer to use generic or broad terminology instead of explicitly describing the components of the inventor’s embodiment. Substituting “fastener” or “mechanically attached” in place of “screw” is just using our lawyering skills to properly describe that which an inventor invented. I consider it my job to determine the bounds of what the inventor invented, not to claim the specific embodiment presented to me. The embodiment presented by the inventor is just that, one embodiment. I always ask myself what aspect of the inventor’s embodiment defines the invention. But, if, for some unknown reason, I were to add an element or limitation that was not disclosed, embodied, or inherent in the client’s invention, I could conceivably be an inventor.

  27. 38

    For true independent inventors the expense of a search report and analysis will make filing a pipe dream. I represented quite a few independents when in private practice, and many of their “junk” inventions were quite beneficial, both to the public and financially to the inventor

    Section 124 “microentity” qualification is absurd. You can only qualify on your first five filings. Sounds more like those new subscriber bonuses handed out by magazines- once you hit 5 you’re hosed just like everybody else. And if you make more than about $140K/year (2.5 times the US average gross income), or assign to a company that grosses more than that amount, you’re still hosed.

    This whole thing stinks to high heaven- when you add up all the “improvements” being floated in the rules changes and the law changes, a single conclusion is clear- everyone will be paying more (a LOT more!), doing the vast majority of the work that you’re paying PTO to do- and receiving a helluva lot less- sounds like a typical government operation.

  28. 37

    Dear Anonymous Examiner:
    The reason I pose this question is so your union can understand that it needs to examine some of the rules that are being propagated. It was upon seeing the ALF-CIO come in to oppose the legislative changes that I realized the importance of the Examiner’s union to weigh in on the rules changes. It might very well be that these rules may result in examiners taking action that violate a statute. Has the examiner’s union weighed in on the proposed rule changes?

  29. 36

    Of course, in Section 124 Micro-entities are exempt from this requirement.

    Since they are the ones most likely to file the junk that the examiner’s can’t examine properly, isn’t it MORE important that they provide search reports? Isn’t this exception defeating the purpose of getting rid of junk patents?

    Yet another case of Congress bowing down to the “independent inventor community” to get something passed.

  30. 35

    Claim “limitation” is not quite accurate- again, we’re flying blind thanks to PTO not releasing the approved text yet- but the original posted text did not limit examination to a set number of claims (10 was the original number). Instead it required filing of an “Examination Support Document” if the number of claims exceeded 10 (now 25?).

    HR 1908 (the latest manager’s amendment) is now seeking to justify this nonsense by adding a new Section 123 to the Patent Code, requiring ALL applicants to submit “a search report and OTHER INFORMATION AND ANALYSIS RELEVANT TO PATENTABILITY.” The content of all these required filings will be at the discretion of the PTO, which always acts in the best interests of the patent system (yes, that was sarcasm).

  31. 34

    “… it is not “invention” to recognize … [an] alternative structure [which the inventor did not contemplate, where that alternative] may pose a potential design-around, and [to add it so as to] make sure the specification and claims account for that possibility — it is “lawyering.” ”

    anon coward,

    Call it what you want.
    A rose is a rose.

    It is very inventive of you (err, I mean “lawyerly”) to stick on a new label to an activity that in plain old English constituted the coming up of an idea on your own, a.k.a, inventing.

    I think it was Gates or Jobs who invented the idea of re-labeling every bug as a “feature”. And now you get the credit for relabeling every “innovation” by the attorney as mere “lawyering”.

    I label your labeling activity as “deceptive framing”.
    A stinkorooni by any other name smells just as foul.
    Peace.

  32. 33

    KCB,
    If Bivens actions against examiners become commonplace, I don’t see why anybody would want to be an examiner. Have legal action against me because two reasonable people disagree as to what is allowable? I don’t think so….. Anyway, I keep a fresh resume at all times.

  33. 32

    Can a section 1983 action stylized as a Bivens action be brought against civil servants (patent examiners) for following rules of the USPTO that are found to violate the statutory rights of an inventor? Just a question.

  34. 31

    I don’t recall this subject being addressed before…

    With the upcoming restriction on the number of claims (I believe they are to be limited to approx. 25), how will patent attorneys compensate for the reduced wiggle room? Undoubtedly the claims will have to be refined to a much tighter degree (owing to the limited continuations), but will the limitation on claims simultaneously reduce the protections afforded by patents? I am thinking biotech patents especially…

  35. 30

    One thing nobody has been talking about is the provision in the original continuation package that would have required an applicant to file ALL divisional applications prior to the allowance of the parent case. If that provision was not removed from the OMB approved package, I cannot wait to see the PTO running for cover when 200,000- 300,000 new divisional applications (based on a spring 2006 estimate presented in Chicago at AIPLA) are filed within the first few months. Knowing PTO’s attitude, they’re probably looking at the avalanche of expected divisionals as a windfall profit.

    Amazing to me that PTO has not made anything public (other than the rumors that have been flying around for months now) about the context of the rules. Of course, the secrecy does limit the time for analysis by all the parties who have talked about litigation to stop the rules from taking effect.

  36. 28

    Joe said: Example: it’s not just a “screw”, it’s a “fastening means”. The inventor walked into the patent attorney’s office insisting his gizmo had to have a screw (it “must” be so). He walked out realizing that any fastener will do. Who invented the broadened definition of the invention?

    It is the job of every attorney, whether he is drafting wills, contracts, a complaint, or pretty much any legal document, to anticipate possible threats to his client, and obviate them. Some people who call themselves patent attorneys would disagree with this, but to my mind, it is not “invention” to recognize a genus or even alternative structure that may pose a potential design-around, and make sure the specification and claims account for that possibility — it is “lawyering.”

  37. 27

    Judging (pun intended), for example, from Kelo v New London and MercExchange v eBay, we’ve no reason to think the US Supreme Court is mindful of the Constitution.

    The Executive, from the oval office to its Agencies, certainly doesn’t abide the Constitution.

    Congess sold We the People out a long long time ago.

    Steady lobbying pressure sponsored by Organized Big Business has taken its devastating toll.

    I recall the CEO’s rant against Mr. Beal in “Network”:

    “There are no nations, there are no peoples! … There is only one holistic system of systems. … [Euros] … Dollars … [Yuan] … Rubles … Pounds … It is the international system of currency which determines the totality of life on this planet.”

  38. 26

    Dear step back,

    I agree with you. The bond between patent attorney and inventor is very special and is to be cherished.

    Anecdotally, 25 years ago or so while working exhaustively preparing a jumbo with one particularly competent patent attorney, I thought his contributions may have merited coinventor-ship. But he wasn’t having it. I’ve never been concerned where or how that line gets drawn — whatever the attorney says goes. I have always strived to be a phenomenal client first and foremost.

    I’ll simply add another minor observation — the professional inventor is almost always a competent assistant patent attorney in some respects. For example, we try to leave nothing out of the spec to expand the scope of the invention by adding associated subject matter right up to the hour of filing. In this regard, I’ve been know to drive some patent attorneys nuts.

    Incidentally, thanks for the spell note — I also questioned the spelling until I looked it up:
    Main Entry: vice ver•sa
    Function: adverb
    Pronunciation: “vī-si-‘v&r-s&, ‘vīs-‘v&r-
    Etymology: Latin
    : with the order changed : with the relations reversed : CONVERSELY

  39. 24

    Dear Dennis:
    If the Constitution does not help here with what are we left to redress the wrong?

  40. 23

    Dear Joe:
    It appears that the AFL-CIO is on board with you. I believe using the labor movement coupled with nationalizing some energy companies would put the fear of God into some high order executive.

  41. 22

    “(I’ll simply add a minor observation — an inventor is not a patent attorney, and vice versa.)”

    Just-an-ord:

    On the “vise” versa part you’re wrong (not just because of the spelling error). The patent attorney is almost always a co-inventor in some respect because we broaden the words used to describe your invention and thus we broaden the scope of the invention.

    Example: it’s not just a “screw”, it’s a “fastening means”. The inventor walked into the patent attorney’s office insisting his gizmo had to have a screw (it “must” be so). He walked out realizing that any fastener will do. Who invented the broadened definition of the invention?

  42. 21

    history. It is not going to significantly improve the backlog, and whatever backlog it does eliminate is going to be at the expense of people who have to abandon their applications now because of awful office actions. Even filing an appeal isn’t a complete savior because if the BOA agrees with the examiner (gasp), then the applicant may no longer have a chance to revise his claims based on the Board’s opinion. The Board is free to disagree with the Examiner’s logic but substitute their own.

    Can anything be done at this point to stop the rules? Are any lawsuits being filed based on the APA “abitrary and capricious” standard?

  43. 20

    Mark Nowotarski:
    “One of the strengths of the current US patent laws is that they allow inventors to go through this “invention discovery” process by filing the RCEs and continuations they require to conclude this process, as long as those RCEs and continuations are legitimately advancing prosecution.”

    Mark,

    I’m not adverse to placing some expectation on the Applicant to know what it is that they are trying to patent when they apply. My biggest problem with the new rules is the overarching PISS POOR EXAMINATION QUALITY dribbling out of the USPTO. Illogical applications of the prior art; ‘broadest reasonable interpretation’ having no hint of reason, merely used as pablum to justify interpreting claim terms to mean whatever the Examiner thinks s/he found in the refernce; and Examiners who show no sign of even passing familiarity with the specification making intellegent discussion of the claimed invention – as opposed to merely the claims – impossible.

    An Applicant’s only defense to this is continuation. Though akin to enabling a druggie’s habit, its a necessary evil if a patent is to be issued. And now the Office seeks to eliminate most continuations. A former Commr’ once boasted that the USPTO had trained most of the patent bar. Whoever in the current leadership thinks limiting continuations will improve examination flow simply has never examined patents for a living. DOE, KSR, Continuation ‘reform’… the war on patents continues apace.

  44. 19

    My comment above about authority to change the laws was in response to anonymousAgent. Sorry for any confusion.

    Nonetheless, Just an ordinary inventor(TM), thanks for your observations.

  45. 18

    That’s why neither he nor any other employee of the USPTO has the authority to change the laws. Their only responsibility is to implement them.

  46. 17

    Mark Nowotarski,

    “From my own experience as a patent applicant and now as a patent prosecutor, often inventors don’t know what their invention actually is, at least from a patentability standpoint.”

    Thank you for your most telling comment; You’re dead on!
    (I’ll simply add a minor observation — an inventor is not a patent attorney, and vice versa.)

    Your crucial and comprehensively, compellingly and so clearly written central insights are no doubt aided by your experience as both inventor and patent prosecutor.

    It’s a Cry-Out-Loud, COL(TM), shame so many in your current profession don’t have a clue regarding your insights and how they relate to the business of inventing.

    Thanks again,

  47. 16

    Mark,
    Microsoft and none of the BSA companies for which Dudas hopes to work some day see this as a “strength of current US Patent laws.”

    Sorry!!

  48. 15

    KCB said “one should have a pretty good idea of what the invention is that they want to protect.”

    I respectfully disagree. From my own experience as a patent applicant and now as a patent prosecutor, often inventors don’t know what their invention actually is, at least from a patentability standpoint. They certainly have an initial idea of what sort of invention they want to protect, but it’s not until they are confronted by an examiner’s prior art that they realize that what they had thought was their invention has already been done before. That forces them to go back to the specification and scrutinize it more carefully. Often times they discover that what they originally throught was a relatively minor feature turns out to be the actual new and not obvious thing they’ve done.

    One of the strengths of the current US patent laws is that they allow inventors to go through this “invention discovery” process by filing the RCEs and continuations they require to conclude this process, as long as those RCEs and continuations are legitimately advancing prosecution.

  49. 13

    As an aside, I have to admit I am not adverse to the new policies. I mean one should have a pretty good idea of what the invention is that they want to protect.

  50. 12

    Not to worry. They will pay $$$$$ if they implement these rules incorrectly. I believe it to be every citizen’s duty to extract money from the government agents when the harm the government by not following the Constitution. Which brings me to my point about nationalizing Halliburton to pay for the war. If you can take a man’s life and place him in harm’s way you can certain take a man’s property to pay for the harm. But I digress.

  51. 11

    Another interesting anomaly.

    The law gives the PTO plenty of flexibility to be forthcoming with the public, to provide information on work-in-progress rules, to demonstrate that the PTO can accept helpful input provided in public comments, and to give the public an opportunity to adapt and help further improve the PTO’s proposals. See
    link to uspto.gov
    /media/docs/2007/02/comparison_ab55.pdf
    But golly, they’re selective about others. The Continuations and Limits on Claims rules present many more opportunities for public input and improvement. Why the double standard?

  52. 10

    Perhaps someone has addressed this before, but how much of a change can they make to the prior published rules before they have to republish the amended rules for another round of public comment?

    I presume that since the OMB approved the amended rules, that they haven’t been changed enough to trigger that threshold, but I was just curious.

  53. 8

    Also, something VERY curious – I can’t find ANY links to

    link to uspto.gov

    on the uspto site – nothing on the “Patent Related Notices” page link to uspto.gov, nothing on the rules tracking page link to uspto.gov

    The E-Government act requires an agency to make its rulemaking docket info public on its web page. But the law doesn’t require that the agency make that availability available. 🙂

    Did I overlook something, or is the PTO still playing submarine procedure games?

  54. 7

    I’m not sure there would be a Fifth Amendment taking, for reason noted above.

    There is a Constitutional due process issue – the Limits on Claims rule proposes to reject claims that have never been examined. Agencies can’t deny applications for entitlements (s 102 says “an applicant shall be entitled to grant of a patent unless…”) without stating reasons.

    The retroactivity is illegal under administrative law principles. Agencies can only engage in retroactive rulemaking on conditions not satisfied here. First, retroactivity is measured with respect to a regulated party’s actions, not an agency’s. Second, retroactive rulemaking is permitted only when authorized by Congress.

  55. 6

    Ahh so little is understood but talked about at length. Have you ever heard the phrase “grandfather clause” or “grand fathered in”? Has one never wondered why these concepts exist at all? It is very simple, to make something illegal that one already possess is to take the same.
    What I speak of is a different shade of that, as well as akin to limitation of action extensions.

    While it is fair to change the laws while the chase is on, it is patently (pun intended) unfair to change the laws once the chase ends.

    Once a patent application has been filed, the chase of determining what the person seeks to obtain by way of the statutory rights is over. They filed in reliance upon the laws. One has a right to rely upon the laws. Should the laws change to make useless their expendentitures in reliance upon the statutory rights promised, this is a taking pure and simple. It might very well have been that instead of filing one large patent application that will be subject to a three way restriction, they would have concurrently filed four patent applications.
    This analysis is so simplistic that it astounds me people have a difficulty understanding the same.

    Legislation must be prospective or the government pays the price. I will tell a little story. When the fee changes went into effect, I believe December 2004, I waited until the afternoon of the day when President Bush signed the bill to implement the fee change. The net effect is that I owed about 20 extra dollars in filing fees when responding to a Notice of Missing Parts.

    I prompltly called the Solicitors Office and told him I did not. That I filed the application in reliance upon the fee schedule implemented at the time of filing.

    He stated that the fees were retroactive to all pending cases in which fees had yet to be paid. I said to him Buddy I have 20 dollars at stake, you have every fee paid in response to the Notice to File Missing parts. I submit your activity amounts to a taking. Are you game?

    I understand that shortly after my conversation with that gentlemen they delayed implementation of the new fees for 30 days.

    It is the same analysis here. These rules cannot apply to pending applications unless the same amount to a taking of the value of the invention that had to be sacrificed because of the limitations on continuation practice.

  56. 5

    It’s been a while since I looked at Con Law, but doesn’t a regulatory taking require that the person be left with no economically viable use? It’s hard to say that the proposed rules deprive existing patent applications of all economically viable use since the applicant can submit as many claims as they like (subject to the analysis requirement).

    Of course, some “inventions,” and thus some patent applications, had no economically viable use to begin with.

  57. 3

    KCB, you have a valid point, but the reasoning proves too much. Patents are granted as a rewarded for innovation and research investment. Research investment is sunk many years before filing the application, based at least in part on the existing patent rules. If your theory that “people have paid good money . . . in reliance upon existing rules and laws” means that the rules can never be changed, then we would have a hard time changing the patent law at all (since for all we know someone has been investing in the cure for cancer for decades and may file for a patent on it eventually).

  58. 1

    The changes to the patent continuation policies must be prospective for patent applications filed after the adoption of the same. Otherwise this is a taking pure and simiple.

    Foreget suing based upon breach of 35 USC 120. To change the rules once people have paid good money for representation and filing of a patent application in reliance upon existing rules and laws is a taking of epic proportions.

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