Saturday, March 3, 2007

2000 Patent Business Goals

A large number of rules were changed with this package.

More significant changes included the ability of the U.S. Patent and Trademark Office to request information from applicants, and a drastic change to the manner of making amendments, requiring a clean copy as well as a version containing mark-ups.

The final rule package generally had an effective date of November 7, 2000, though some changes took effect earlier. The final rule package can be found here:

The changes are very well summarized in this slide show:

37 C.F.R. Section 1.105 was amended to state that an Examiner could require the submission of
information reasonably necessary to properly examine or treat a matter in an Office Action. The Examiner could ask about the existence of any particularly relevant commercial database known to any of the inventors; whether a search of the prior art was made and, if so, what was searched; for a copy of any non-patent literature related to the invention; about information used to draft the application; about information used in the invention process; for an identification of what was being improved; and for identification of any use of the claimed invention. This requirement, if imposed, could cause a lot of file wrapper estoppel problems for a patent applicant.

The manner of making amendments was changed to require both clean versions and marked up versions of amended claims. Amendments to the specification were to be paragraph by paragraph or section by section. This would make it easier for the USPTO when it became time to publish issued patents, as they would have a clean version to scan, and the Examiner had a marked up version showing them the changes that were made. However, it was quite a bit of work for applicants. If a client requested a change, or the attorney decided to change the amendment strategy, changes had to be made in two places. Luckily, this amendment practice is no longer in use.

Other changes included the introduction of paragraph numbering in patent specifications in place of the previous line numbering. The requirement for a statement from an inventor being deleted that the error occurred without deceptive intent was eliminated. Expedited prosecution of design applications was introduced if a search was performed and IDS was submitted with the application. Also, computer program listings could be submitted on electronic media instead of microfiche.