Download Locations:
Summary:
The interest of the 110th Congress in the patent system has been evidenced by the advancement of substantial reform bills in both the House and Senate. Alongside these congressional proposals, the United States Patent and Trademark Office (USPTO) has engaged in a significant rulemaking effort in recent years. This process culminated in new rules that would make several significant changes to the patent acquisition process. First, the rules would limit the number of "continued applications" that could be filed, absent a petition and showing by the patent applicant of the need for such applications. Stated generally, a continued application is one that has been re-filed at the USPTO, commonly following an examiner's rejection. The USPTO has justified this limitation on the basis that the increasing number of continued examination filings is hampering its ability to review new applications. Second, the rules would limit the number of "claims" that can be filed in a particular patent application, unless the applicant supplies the USPTO with an "Examination Support Document" in furtherance of that application. The USPTO asserts that these rules would lead to a more effective examination process. Critics of the new rules contend that they will negatively impact the ability of innovators to obtain effective proprietary rights. Legal challenges to the rules resulted in the October 31, 2007 decision in Tafas v. Dudas. There, the U.S. District Court for the Eastern District of Virginia issued a preliminary injunction against the USPTO. Although this ruling is temporary in nature, its immediate impact is that the USPTO may not implement its rules until the court makes a final determination. The Tafas v. Dudas litigation is ongoing at the time of the publication of this report. In addition, the USPTO has proposed reforms that would impose additional applicant disclosure obligations with respect to "Information Disclosure Statements" filed in support of a particular patent application. The USPTO has not yet taken action concerning this rule. Should Congress conclude that the current situation with respect to claims and continued application practice at the USPTO is satisfactory, then no action need be taken. If Congress wishes to intervene, however, a number of options present themselves. In the 110th Congress, H.R. 1908 would expressly provide the USPTO with regulatory authority to specify the circumstances under which a patent applicant may file a continued application. Other possibilities include providing the USPTO with substantive rulemaking authority and more specific reforms directed to the relevant substantive provisions of the Patent Act.
