USPTO procedural changes will likely increase costs of patent process

The U. S. Patent and Trademark Office recently announced sweeping procedural changes that, if enacted, will significantly change the practice of patent law and require an increase in resources in-house counsel allocates to such matters.
The new package of rules is reportedly under review in the Office of Management and Budget in advance of publication as final rules in July 2007.
The Patent Office’s new strategy requires patent applicants (and their patent lawyers) to invest much more time and resources in the preparation and prosecution of patent applications than before. This will ease the burdens placed on examiners, allowing for greater productivity.
Below are a few examples of how certain changes in practice at the Patent Office will affect a company’s legal department or legal budget.

Added requirements in disclosing prior art
A patent applicant has a legal obligation to bring relevant prior art to the attention of the Patent Office. Presently, any number of prior art references can be disclosed for consideration by submitting them in an Information Disclosure Statement (IDS) to satisfy this obligation.
This review sometimes demands much of an examiner’s time and effort. In general, there is no need for the applicant to provide a separate opinion on the relevance of any of the references to the patent application.
Under the proposed new rules, however, an examiner will only be obliged to consider up to 20 items of prior art in an IDS filed before the first office action on the merits of the claims.
Submitting more items than this will require additional, time-consuming procedures to be followed by the patent applicant. The IDS will have to include an “Explanation,” i.e., a detailed comparison of the submitted documents to the pending claims. As prosecution progresses, submitting an IDS becomes even more burdensome, as even more supporting documents will be required.

Continuing applications will be more burdensome
Currently, applicants can file as many Requests for Continued Examination (RCEs), Continuation and Continuation-in-part applications they consider useful in resolving issues raised during patent prosecution. According to the PTO, the current volume of continued examination filings has a crippling effect on the Patent Office’s ability to examine new applications.
To alleviate this, the proposed rules limit the number of continuations (continuation, CIP, RCE) that applicants can file at their own discretion. Further continuations will be allowed only when an applicant can show why the amendment, argument or evidence being presented in the continuing application could not have been submitted sooner.
Accelerated examinations will be more involved
One of the proposed changes that has already been adopted concerns certain aspects of the Patent Office’s Accelerated Examination program. A high degree of preparation by the patent applicant is needed to obtain an Accelerated Examination.
For example, the prior art research must encompass U.S. and foreign patents and patent application publications, and non-patent literature, or the applicant will have to justify limiting the search strategy. Details of the search must be provided in an “Accelerated Examination Support Document.”

New strategic dilemmas to consider
The proposed rules will require more consideration to be given to claim drafting. Practitioners have always been torn between presenting the broadest claims possible (making the patent more valuable), and defining patent-worthy distinctions from the prior art. Often, the result is several independent claims, each with a string of dependent claims that provide fallback positions should an independent base claim be unattainable.
The Patent Office finds these numerous claims to be burdensome, and has proposed to focus the prosecution of patent applications on a limited number of “representative claims” chosen by the applicant, unless the applicant justifies examining more than that by submitting an “Examination Support Document.”
In response, patent drafters will have to weigh the burden of performing a prior art search and preparing an Examination Support Document against limiting examination to the “representative” claims. This may be a difficult choice for those whose strategy thus far has been to forego a prior art search and draft a large number of dependent claims as a hedge against whatever prior art an examiner might uncover.
The proposed rules may also give pause to those who favor examining a large number of claims but who would hesitate to volunteer statements regarding the prior art, for fear of creating an estoppel that may be problematic should the patent be enforced.
Resolving these dilemmas will certainly require that more attention be given to claim drafting than in the past.
It will take some time after the rule changes are made to know whether they will lead to improved efficiency for the U. S. Patent and Trademark Office.
However, it is clear that part of that success, if it comes, will be due to the additional efforts that patent applicants will have had to contribute to the preparation and prosecution of their patent applications.
Frederick A. Spaeth is senior patent counsel with Michaud-Duffy Group, an international intellectual property law firm based in the greater Hartford, Conn. area that serves corporate clients in New England, throughout the United States, and around the world. He can be reached at 860.632.7200 or at [email protected]. Kevin M. Williams is an intern with the firm. The Michaud-Duffy Group concentrates solely in patent law, trademark law, trade secret law, copyright law and related transactional issues.