Thursday, November 01, 2007

Insanity at the USPTO Insanity at the USPTO

Few outside the patent bar realize what has been going on over the last month or so in the realm of patents. It has been insane, and was supposed to have culminated last night, midnight EDT.

Some time last winter or spring, the USPTO published some new rules for comment. The rules would have drastically changed patent practice, esp. in the realm of patent prosecution and claiming. By far, the biggest change in my 17 years of patent practice. Continuations, Continuations-in-Part (CIP), and Requests for Continuing Examinations (RCE) were to be limited to one or so per application. Claims were to be effectively limited to 25 total and 5 independent claims, with insanely onerous consequences for crossing those limits, making any patents crossing that line very expensive likely unenforcable. And to make matters worse, claims from applications filed about the same time with the same inventors would be combined for this purpose, leaving it up to the applicants and their attorneys to show that they shouldn't be combined by the USPTO. Oh, and the rules would be mostly retroactive.

No surprise then that almost all the comments were extremely negative. So, with all the negative comments, the agency published the rules in August in the Federal Register, to become fully effective today.

The rush was on. Continuations, CIPs, RCEs, and divisionals that could be filed before the deadline were filed. Of all those, only the pure continuations were easy. The RCEs required amendments to respond to prior office actions. Claim sets of pending applications were cut down to the 5/25 limit.

Meanwhile, the USPTO was fumbling around. All cases exceeding the 5/25 claim rule were pulled from examiner's dockets, but then some were restored based on the hue and cry of practitioners, since the rule would only apply to applications that had not received their first Office Action by the 11/01/07 deadline.

Because of the nature of the new rules and their effect on pending applications, at least three law suits were filed, the major one being by SmithKline Beecham, one of the biggest drug companies, filed in the ED of VA. The drug companies were especially concerned because they were likely to get hit the worst, though big companies in other industries were panicked too. The USPTO responded and was able to set the hearing for yesterday, Halloween, the day before the rules were to go into effect. And with this delay, a number of groups, including several former commissioners of the USPTO, filed amici briefs, universally condemning the new rules.

So, that was where we were sitting early this week, as the patent bar was filing applications, etc. as fast as they could. No one could take the chance that that Court would let the rules go into effect today.

In the end, sometime in the afternoon, the Court issued a preliminary injunction against the rules going into effect, at least until the Court could conduct a hearing on the merits. So, technically, I could have called it a day at that point, and gone out to celebrate. But I didn't, wrapping up what I was planning on finishing, and taking my leisure today.

I would say that the big problem here was the staffing of the top of the USPTO by people who were not patent attorneys. Clinton's USPTO commissioner, Bruce Lehman, was a copyright attorney instead, but at least he did put patent attorneys in right below him. There seems to be a vacuum in the understanding of patent prosecution at the top of the agency right now, and that resulted in this attempt to implement rules that would have had de minimis effect on the patent prosecution backlog, but dramatic effect on the cost and enforceability of patents ultimately issued under the new rules.

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2 Comments:

Blogger Trooper York said...

You know you are abosolutely right. We have been trying to get plus sized patent leather belts for my wife's store for the past six months and it's just impossible. Patent leather is "in" this season and there is a big, big demand. What a hoot.

9:15 AM  
Blogger Finn Kristiansen said...

Any thoughts on Northwestern's suit against Google over patents?

3:45 PM  

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