Site icon Duncan Bucknell

Thumb screws from the USPTO – strategic implications

There’s been a lot of talk lately about the far-reaching changes to patent practice which are currently being wrought at the USPTO.

Apart from amendments to the legislation (such as the change from first to invent to first to file) which are pending before congress, there are several sets of Rule changes, including:

  1. Rules limiting continuations and requests for continued examination (RCE’s) (due in the next few weeks).
  2. Rules limiting the number of claims (to 10) being examined (due in the next few weeks).
  3. Rules requiring more extensive Information Disclosure Statements (expected in
    early 2008).
  4. Rules limiting the type and number of Markush (chemical structure) claims (recently published in proposed form).

As always, you can get plenty of analysis and more detail about the proposed amendments to the Act and Rules over at Patently’O.

Even if you haven’t been following the hype, a quick scan through the proposed Rule changes makes it clear that the USPTO is trying to lessen its workload. Fine, but the effect is that patentees are being squeezed.

On the one hand they will be limited on the number of claims they can present for examination (and in pharmaceuticals and chemisty, further limited in Markush claims), but also limited in the number continuations that can be filed to recapture claims that could not be presented. Then, there’s the increased burden of disclosure to the patent office which is drawing nigh.

So, here are a few quick thoughts on strategies to adopt to maximise patent protection in the US (assuming you have an endless budget…):

What would you add?

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