David Boundy of Cantor Fitzgerald and Mike Strickland of GlaxoSmithKline attended a meeting with the Office of Management and Budget (OMB) to discuss the USPTO’s Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims (Fed. Reg. 71: 48-61 (January 3, 2006)). The proposed regulations would limit an applicant’s ability to file no more than one continuation application.
Attendees included John Love and Jennifer McDowell of the USPTO as well as David Rostker, OMB/ Office of Information and Regulatory Affairs, Lisa Branch, OMB/ Office of Information and Regulatory Affairs, Counselor to Administrator Dudley, Aaron Flynn, Office of Science and Technology Policy, and Peter Robbins, Dept. of Commerce, Office of General Counsel.
The conference was in regard to numerous concerns over the implementation of the rule changes, summarized in a letter to the honorable Susan Dudley, Office of Information and Regulatory Affairs (OMB), and signed on behalf of numerous organizations and companies that oppose the changes.
While the USPTO has represented to OMB that these draft final rules are significant under Executive Order 12,866, but not economically significant.
Ah, but “au contraire” says the group. These draft rules should be considered a package because they have important interactive effects: complex patent applications are simultaneously more likely to contain more than 10 independent claims and benefit from continued examination practice to carefully refine the scope of those claims, and the two rules impose burdens and requirements that conflict with each other.
The rule changes meet the test for being economically significant because:
• The rules may have an annual effect on the economy of $100 million or more; and
• The rules may adversely affect in a material way the economy, and in particular, those sectors of the economy that are the engines of technical innovation
The group also USPTO’s alleged violation of the Information Quality Act and Office of Management and Budget’s implementing guidelines; and claimed significant discrepancies were found between the USPTO’s claimed savings in paperwork burden and the increase in actual burden specifically mandated by the Limits on Claims Rule.
The attachments provided to OMB number in the hundreds of pages and allege numerous problems with regard to the manner in which the continuation rule changes were implemented but my personal favorites include:
(a) The PTO apparently did not conduct any studies to identify the source of its backlog problem (See Attachment C4); and
(b) The backlog may well be due to internal disincentives provided to examiners and not any burden imposed on the office by applicants (See Attachment F8-11).
The USPTO’s attitude towards all this can be seen in the comments by John Whealan, the Deputy General Counsel for Intellectual Property Law and Solicitor of USPTO, speaking at a symposium held at Duke University. Whealan acknowledged the increased applicant burden and cited it as a benefit to the patent bar:
“The good news is, for you patent prosecutors out there, your rates should go up, not your rates, but your hours, because this is going to take probably more work to do.”
He also stated the obvious:
“You file 50 [claims,] we’re going to look at ten. . . . We’ll look at the independents, a couple dependents. If you want all your claims examined up front, you can have it done, but it’s going to cost you, you’re going to have to do some work, which in the current law of inequitable conduct, nobody’s going to want to do.”
(Attachment M2-5).
You can put in your two cents to:
The Honorable Susan E. Dudley
Office of Information and Regulatory Affairs
Office of Management and Budget
Washington, DC 20503
Fax: (202) 395-7245
Look for a lawsuit if the USPTO decides to enact the proposed rule changes.
More at peter zura’s 271 patent blog and the Patent Prospector.
