New rules for patent reviews get mixed reception

New Patent and Trademark Office rules aimed at making the patent examination process more efficient by encouraging applicants to use greater precision in describing the scope of their inventions received mixed reactions from intellectual property experts this week.

Under the revision, which takes effect Nov. 1, applicants can file two new continuing applications and one request for continued examination. Each application may contain up to 25 claims -- no more than five of them independent claims -- without additional effort on the part of the applicant, PTO said.

The agency has a backlog of more than a million pending applications. Filing continuations, which allow applicants to restart the process, is unique to the U.S. system and has become a common practice, the Computer and Communications Industry Association said.

CCIA President Ed Black, whose trade group represents Google, Microsoft and other technology firms, said the change "means that the PTO is serious about putting its house in order." The move also shows the agency "is willing to discipline some of the abuses that have spurred demands for reform," he said in a statement.

Mike Kirk, who heads the American Intellectual Property Law Association, said the PTO's rule change is "a significant improvement over the draconian proposal they initially came out with." Still, "not everyone will be happy," he said.

After reading the 129-page filing, which appeared in the Federal Register on Tuesday, popular patent law blogger Peter Zura said the document made it clear that if applicants are "looking for gracious understanding, they will no longer find much of it at the USPTO."

Although potential patentees "should do all they can to provide easy-to-read and understandable applications," Zura said the continuation rules are problematic. He said the change "disconnects the 'patent cycle' from the 'product cycle'" because patents are filed at various stages of research and development.

As a result, situations often arise where applications embody incomplete concepts, Zura said. Before the new rules, applicants "could find solace in the fact that if new or unappreciated advantages were found in a patent application, continuation applications could be filed."

It remains to be seen how the alterations will affect patentees overall, he noted. But there are many uncertainties being introduced by the changes "and if there's one thing that attorneys hate," Zura said, "it's uncertainty."

Courtenay Brinckerhoff, a Foley & Lardner partner who represents biotechnology and pharmaceutical firms, said the rules will "have a big impact on strategy and require a lot of changing our approach to how we write, file and prosecute patent applications."

"The general theme of the rules is to limit your time before an examiner, limit opportunities to get claims allowed and shift the burden to the applicant to provide more information and analysis," Brinckerhoff said.

The modification will be felt most in the biotech and chemical fields rather than by electronics manufacturers and other tech players who typically enjoy a faster patenting process, she said. "But I don't think any one group is going to be unscathed. Everyone will have to re-evaluate their policies," she said.