Despite the complaints directed to the Office of Management and Budget, OMB has given its thumbs-up to the USPTO’s proposed rules on continuations and claims:
RIN: 0651-AB93, 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) (“Continuations Rule”)
RIN: 0651-AB94, Changes to Practice for the Examination of Claims in Patent Applications, 71 Fed. Reg. 61 (Jan. 3, 2006) (“Limits on Claims Rule”)
While we have to wait to see what the final rule is, OMB concluded that the rules, as amended, were not “economically significant.”
Those interested in trying further steps to limit these rule changes should send an email to David Boundy of Cantor Fitzgerald at: DBoundy@Cantor.com
He is exploring two additional avenues:
(a) Congressional oversight. According to David, several senators and representatives have said “Get back to me when the executive branch is done. I understand the problem, and if it still exists at the end of executive branch review, let me know, and we’ll see.”
(b) Administrative Procedure Act judicial review. Under another FOIA request, information confirmed that the PTO did absolutely NO analysis of any significant issue
OIRA Conclusion of EO 12866 Regulatory Review
| OIRA Conclusion | |
| RIN: 0651-AB93 | Received Date: 04/10/2007 |
| Title: Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims | |
| Agency/Subagency: DOC / PTO | Stage: Final Rule |
| Concluded Action: Consistent with Change | Concluded Date: 07/09/2007 |
| Legal Deadline: None | Economically Significant: No |
| Publication Date: | Unfunded Mandates: No |
| Major: No | Related To Homeland Security: No |
| Regulatory Flexibility Analysis Required: No | Small Entities Affected: No |
| Federalism Implications: No | |
Abstract: The Office revises the rules of practice to share the burden of examining an application if the applicant has filed multiple continuing applications or multiple requests for continued examination. The revised rules would require that second or subsequent continuation applications and second or subsequent requests for continued examination of an application include a showing as to why the amendment, argument, or evidence presented was not previously submitted. The revised rules would also ease the burden of examining multiple applications that have the same effective filing date, overlapping disclosure, a common inventor, and common assignee by requiring that all patentably indistinct claims in such applications be submitted in a single application absent good and sufficient reason. These changes would allow the Office to apply the patent examining resources currently absorbed by multiple continuing applications and requests for continued examination that simply recycle earlier applications to the examination of new applications and thus allow the Office to reduce the backlog of unexamined applications. This will mean faster, more efficient examination for the typical applicant without any additional work on the applicant’s part, but a small minority of applicants who consume a disproportionate share of Agency resources will be required to share the burden they place on the Agency.
OIRA Conclusion of EO 12866 Regulatory Review
| OIRA Conclusion | |
| RIN: 0651-AB94 | Received Date: 04/10/2007 |
| Title: Changes to Practice for the Examination of Claims in Patent Applications | |
| Agency/Subagency: DOC / PTO | Stage: Final Rule |
| Concluded Action: Consistent with Change | Concluded Date: 07/09/2007 |
| Legal Deadline: None | Economically Significant: No |
| Publication Date: | Unfunded Mandates: No |
| Major: No | Related To Homeland Security: No |
| Regulatory Flexibility Analysis Required: No | Small Entities Affected: No |
| Federalism Implications: No | |
| Abstract: A small but significant minority of applications contain an excessive number of claims, which makes effective examination of such applications problematic. The U.S. Patent and Trademark Office (Office) revises the rules of practice to share the burden of examining applications containing an excessive number of claims. Specifically, the Office amends the rules to provide that if an application contains more than 10 independent claims, the applicant must provide a patentability report that covers all of the independent claims in the application. In addition, the Office amends the rules to provide that the Office will give a separate examination only to those dependent claims expressly elected for separate examination, and that the applicant must provide a patentability report that covers all of the independent claims and elected dependent claims in the application if the number of independent claims plus the number of dependent claims elected for examination is greater than 10. The changes would allow the Office to apply the patent examining resources currently absorbed by applications that contain an excessive number of claims to the examination of new applications, and thus allow the Office to reduce the backlog of unexamined applications. This would mean faster, more effective examination for the typical applicant without any additional work on the applicant’s part, but a small minority of applicants who consume a disproportionate share of agency resources will be required to share the burden they place on the Agency. |
I think I may ask for more Dennis Crouch predictions.
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