Editor’s Note: José Cortina is a member of the Research Triangle Park law firm of Daniels Daniels & Verdonik, P.A. TechLaw is a regular feature in WRAL Local Tech Wire.
_______________________________________________________________________________________On January 3, 2006, public comment was invited by the U.S. Patent Office on proposed rules that would limit the extent of examination of patent applications.

The proposed rules would also require patent applicants to designate a limited number of claims for preliminary examination, while other claims not so designated would not be considered until a determination is made about allowability of the designated claims. A claim is the part of a patent that provides a definition of what the inventor considers to be the invention.

In the proposal for preliminary examination to limit the number of claims examined, all claims known as “independent claims” would be examined, but the number of claims known as “dependent claims” to be examined would be limited to a total of 10. If an applicant wishes to have more than 10 dependent claims initially examined, the applicant would have to provide an “examination support document” providing reasons why more than 10 dependent claims should be initially examined.

The U.S. Patent Office has provided comments indicating that the first proposal limiting examination would better focus the application process and make examiner-applicant exchanges more efficient. With respect to the proposal limiting the number of claims initially examined, the U.S. Patent Office has stated that these changes will allow the Patent Office to conduct a better, more thorough and reliable examination since the number of claims receiving initial examination will be at a level which can be more effectively and efficiently evaluated by an examiner.

The comment deadline for the two proposals is May 3, 2006. The Patent Office does not intend to hold public hearings on the revisions, but will explain them at the American Intellectual Property Law Association Mid-Writer Institute in LaQuinta, California on February 4, 2006.

What’s the Impact?

In considering these proposals, one may ask, what impact are they likely to have on individual inventors, companies, private law firms and in-house counsel? In a nutshell, one should anticipate more costs for those paying the bills and more work, at least in the earlier stages of patent application preparation and prosecution, for both private attorneys and in-house counsel. More specifically, the proposals shift a substantial amount of the burden of examination from the Patent Office to the applicant, and may force applicants into admissions, for the sake of obtaining a patent, which could be used in later litigation to their detriment.

With respect to the limiting of examination, the Patent Office proposes to limit the filing of continuation applications and requests for continued examination to one filing as a matter of right. Any subsequent filings presenting new amendments, arguments or evidence would have to be supported by a showing as to why the amendments, argument or evidence presented could not have been previously submitted. It is not clear what the standard for review of the showing would be, nor who would decide. In this writer’s opinion, if the decision is left to the examiners, given recent years of experience in responding to Final Rejections where an examiner’s acceptance of new amendments is discretionary if such amendments in their opinion raise new issues or introduce new limitations in the claim, such arguments will more often than not be summarily dismissed.

Many applicants often limit the amount of work done initially in the hope that initially presented broad claims will be allowed. If initial additional work in presenting claims and evidence is not done, this could result in more appeals being filed with incomplete evidentiary records or in less than optimally drafted claims being appealed to the Board of Patent Appeals and Interferences. While the backlog in examination may be reduced as a result of the proposal, the result may be an unintended increase in appeals, resulting in a further backlog at the appellate level.

The limitation on the filing of continuing applications or requests for continued examination may appear reasonable. Under the proposal, an applicant will be assured of at least two substantive examinations if enough fees are paid, which should be sufficient if a complete job is done by the applicant to crystallize the issues. On the other hand, the proposal also limits the filings of continuation in part applications, but not divisional applications so long as the divisional application is the result of a requirement of unity of invention for an international application, or a requirement for a restriction by the U.S. Patent Office in a U.S. application. In the case of the continuation in-part application, the proposal could have a significant complicating impact in obtaining protection for patentability distinct inventions from those filed in the original parent applications, for reasons too complex to discuss in this short article.

The Options

With respect to the proposal to limit the number of claims examined, an applicant may have one of three choices. If the applicant doesn’t want to make an admission as to what limited number of claims are representative of the invention because of the risk of inadvertently omitting a claim which may later turn out to be significant, a simple answer is to file most if not all claims as independent claims. The result of such action is more costs to the applicant because each independent claim above three claims requires an additional government fee of $100/$200 per claim, depending on whether the applicant is a small or large business entity. In the alternative, substantially more work must be done to draft claim sets to ensure that insignificant claims are not included in a designated set.

A third option is to present only 13 claims in the original application; three independent and ten dependent (contrast this to the fact that a total of twenty claims is allowed with the basic filing fee; three of which can be independent), and after the first Office Action add everything but the kitchen sink in the form of new claims. In all three cases a substantial amount of additional legal work in claim drafting may be required for most applicants, and especially in the case of other country originated applications which are simply literal translations of applications filed in those other countries.

In the case of private lawyers this may result in significantly more costs to the client/applicant. In the case of in-house counsel, more time/expenditure may be required in preparing, filing and prosecuting patent applications, an internal additional cost to be absorbed.

While the proposals seem reasonable, it remains to be seen how they will be implemented, if approved, in a bureaucracy which is often resistant to change. While the goals stated are admirable, the implementation could have huge unintended cost consequences on applicants, shift a significant work burden onto applicants and could result in a possible decline in U.S. innovation since the total cost of obtaining a U.S. Patent may begin to outweigh the perceived benefits.

Daniels Daniels & Verdonik, P.A. has been serving the legal needs of entrepreneurial and high technology clients for more than 20 years. A. José Cortina is a registered patent attorney who focuses his practice on the intellectual property needs of small to large technology companies, including providing patent, trademark, copyright, counseling, licensing, conflict resolution and transactional services. He is experienced in a broad range of technologies, including electronics, communications, computer hardware and software, biomedical, materials, and selected chemical and chemical engineering technologies. Questions or Comments can be sent to jcortina@d2vlaw.com