Tuesday, March 20, 2007

2006 Proposed Changes to Practice for the Examination of Claims in Patent Applications

In the January 3, 2006 Federal Register, the U.S. Patent and Trademark Office published proposed changes to practice for the examination of claims in patent applications. Among other things, the Office proposed to focus its initial examination on a limited number of claims designated by the applicant as representative claims.

The proposed changes can be found here:
Luckily, these rule changes have not been adopted.

The stated reason for the proposal was that the changes would allow the Office to do a better, more thorough, and reliable examination.

The proposed rules indicated that the representative claims will be all of the independent claims that are expressly designated by the applicant for initial examiner. The Office also proposed that if an application contains more than ten independent claims, or if the applicant wishes to have initial examination of more than ten representative claims, the applicant must provide an examination support document that covers all of the independent claims and the dependent claims designated for initial examination.

Most patent attorneys did not like the proposed rule changes because of the effect the file wrapper estoppel that would likely be created if such a support document was presented. Also, the doctrine of equivalents has been severely limited by the courts to the point where it is of little value. A large number of independent claims are necessary to adequately protect inventions in view of court decisions. In addition, there is a strong risk that any claims that were not indicated as being representative by an applicant would not be construed by a court as having the same presumption of validity that all issued claims currently enjoy.

The Office did not acknowledge that applicants already pay extra filing fees when more than three independent claims are presented. The Office also did not acknowledge that examiners frequently issue restriction requirements when a large number of independent claims are presented. If these rules were passed, applicants probably would have filed more separate applications, which would have resulted in an increased burden on the office, not a decrease. The big burden on the USPTO has been fee diversion by Congress. Patent applicants assume that their filing fees are being used by the agency collecting them, but this was not the case. With more funds, the USPTO could hire and retain more qualified examiners, and could allow them more time to examine each application. Patent applications covering more complex technologies require more time to understand and examine, even if they present the same number of claims as a simple mechanical application.

Comments by the public on these proposed rule changes can be found here:

Even though these proposed rule changes were dramatic, no public hearing was planned.