Wednesday, October 24, 2007

Omega 5 oil provisional patents will not be subject to new patent law rules

On Aug. 21, the U.S. Patent and Trademark Office (USPTO) published new rules effective Nov. 1. The new rules provide guidelines for filing Continuation Applications, Requests for Continued Examination (RCEs), the number of claims permitted in an application, identification of applications having common inventors and similar filing dates, and a requirement to supply “Examination Support Documentation” under certain circumstances.

A continuation application is identical to its parent application — only the claims are different. Under the old rules, applicants were allowed to file an unlimited number of continuations and continuations-in-part (CIPs). There are good reasons for this rule. For example, having a continuation pending allows the applicant to file patentable claims in light of newly discovered art. A CIP allows newly developed subject matter to be added to an existing patent disclosure, for example, as an R&D project progresses. Under the new rules, the applicant is only entitled to file two continuations or CIPs.

The USPTO has enacted the new rules in the name of “efficiency.” The Patent Office complains that too many patent applications are being filed and they cannot cope with the demand. In all other endeavors attempted by mankind, a burgeoning demand is considered a good thing. In any event, the efficiency argument is a red herring. Continuations are quickly and efficiently processed because the Examiner has already examined the parent case and understands the technology. Under the old rules, applicants could file any number of claims as long as they paid the requisite fees. The new rules limit the number of claims to 25 per application. In some technologies this may be appropriate. In other technologies it is impractical. Consider U.S. Patent No. 5,745,532 (a wireless transmission system) for sake of discussion. It includes 55 drawings, 44 pages of specification and 62 claims. In this case, the applicants may have needed 62 claims to legally define the invention. Under the new rules, this is impermissible.

The new rules will be applied retroactively to all patent applications that have not received a first Office Action by Nov. 1. Keep in mind that a patent application is typically pending several years before examination. According to the USPTO Web site (FY 2006 Report), there were approximately 800,000 utility patent applications filed in the years 2005-06. The average pendency for all Technology Centers was almost two years. Perhaps the USPTO should explain why it is “efficient” to force applicants to amend hundreds of thousands of patent applications to comply with the new rules. Of course, at some point, the USPTO will also have to process these amendments. This is an absurd waste of time and resources. There are suspicions that there will be an unofficial “slow down” at the USPTO until the effective date arrives.

In our economy, many new jobs and creative innovations are produced by small businesses founded by visionary thinkers. As corporations age and their visionary founders fade from memory, many tend to become unimaginative and ossify into risk-averse bureaucracies. Instead of being lead by “the vision thing,” they are often looking for the “next sure thing,” at minimal cost.

The Patent Statute was designed to protect innovators from free-riders. The new rules represent a radical change designed to prevent the patentee from fully and adequately defining his invention, leaving him exposed and unprotected. Commissioner Dudas admitted as much when responding to questions during a Sept. 12 Web cast. The new rules also represent a unilateral decision on the part of the USPTO to shirk its duties and shift costs onto the public in a draconian, heavy-handed way. It is truly difficult to identify any good public policy argument in support of these odiferous rules. The real question to ask is who benefits from these changes? In any event, the public has a maddening tendency to adapt to short-sighted governmental stupidity in unforeseen ways, causing unintended consequences.

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