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The Changing Patent Landscape

Apparently, 'world-shaking events' have occurred in the patent world in the past couple of months (from what I've heard).

First, new rules were published in the Federal Register on August 21st. Here is a summary of the changes 'borrowed' from Patently-O:

Continuation Limitation: ?The Office is revising the rules of practice to require that any third or subsequent continuing application that is a continuation application or a continuation-in-part application, and any second or subsequent request for continued examination in an application family, be filed to obtain consideration of an amendment, argument, or evidence, and be supported by a showing as to why the amendment, argument, or evidence sought to be entered could not have been previously submitted.?

Claim Limitation: ?The Office is also revising the rules of practice to provide that an applicant must provide an examination support document that covers all of the claims in an application if the application contains more than five independent claims or more than twenty-five total claims.?

Patent Application Limitations: ?The Office is also revising the rules of practice with respect to multiple applications that have the same claimed filing or priority date, substantial overlapping disclosure, a common inventor, and common ownership.?

And now, last Friday, the House passed their version of the Patent Reform bill, H.R. 1908, which implements changes in the areas of First to File, Apportionment of Damages and Post-Issuance Review, amongst others.

So, what does all this mean to examiners (or really, more specifically, to me?) I'll start with the easy one.

Applications are now limited to five independent claims or twenty-five total claims, unless an examination support document is filed before first action.

I like it. (Big surprise.)

What's not to like (from an examiner's standpoint, of course)? I no longer have to look forward to examining those applications with 100, 200, even 300 (or more) claims. This type of application is more than enough to ruin an examiner's bi-week ... big-time.

No doubt, this is a major headache for applicants and prosecutors. I was surprised when I read that many of the people submitting comments on this provision said they preferred a fixed claim limit, rather than the originally proposed system requiring election of up to ten claims to be examined. Wouldn't it be better to have the ability to send in as many claims as one wants, elect ten representative claims, and then pull the non-elected claims back in when the independent claims are in condition for allowance?

But, of course, what do I know about prosecution?

Full post as published by Just a Patent Examiner on September 09, 2007 (boomark / email).