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…):

  • File Continuations now, before the new Rules come into effect.
  • Consider filing multiple originating patent applications to avoid the restriction on Continuations (obviously particularly important if you know or suspect that the specification may be argued by the USPTO to cover more than one invention).
  • Take the time to prosecute the broadest possible claims first. (It has often been a strategy to file a Divisional or Continuation with narrower claims to get an issued patent relatively quickly. This may not be so popular with the new rules and may present problems to those who have a potential infringement to deal with.)
  • Prepare in advance to argue the need for Continuation applications.
  • Consider carefully the need to have more than 10 representative claims examined as against the downside (in later litigation) of the disclosure required in the patentability statement which must accompany such a request.
  • Use the USPTO MPEP (Manual of Practice and Procedure) Rule § 710.06
    (Office action contains some other error that affects applicant’s
    ability to reply to the Office) – if you bring this to the attention of
    the USPTO within 1 month, the Office will restart the previously set
    period for reply to run from the date the error is corrected). Thanks to Patent Docs for this one.

What would you add?

2 Comments on “Thumb screws from the USPTO – strategic implications

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