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PATENT REFORM 2006
There are significant changes in
patent procedures proposed by the
USPTO.
Limiting an applicant to one
continuation or RCE as a matter of
right. Additional continuations/RCE
would require a petition and showing
why the subject amendment could not
have been made before. Without
the ability of the applicant to
request further (continued)
examination, the applicant is left
only with the option to appeal the
examiner's rejection of the claims.
Patent appeals are expensive and
time consuming. (Some
commentators predict this rule will
go into effect at the first of the
year.)
Limiting the number of claims to be
considered by the examiner.
Examination of claims will be
limited to "representative claims"
designated by the applicant. The
representative claims would be all
of the independent claims plus
dependent claims specifically
designated by the applicant.
Dependent claims not designated will
be examined only after the
application is deemed in condition
for allowance. If there are
more than 10 representative claims,
the applicant must provide an
examination support document
covering all of the claims
designated for examination.
The USPTO cites statistics that only
1.2 % of filed applications contain
more than 10 independent claims. Therefore
(per USPTO) over 98% of applications
can received examination of all
independent claims without
additional effort by the applicant.
Changing the requirements for
Information Disclosure Statements
(IDS) so that only 20 references
would be cited. If lengthy
references (more than 25 pages) or
more than 20 references are cited,
the applicant is required to make a
more detailed showing of the
relevance of the references. For
example, if more than 20 references
are disclosed, the applicant must
identify the information in
each document that is relevant to
the claimed invention or supporting
specification. A more
extensive disclosure would be
required for an IDS filed after the
first office action. For
example, the applicant would be
required to provide a patentability
justification, i.e., including an
explanation and non-cumulative
description and reasons why the
claims are patentable over the cited
documents.
An
accelerated examination procedure
wherein patentability is to be
determined in 12 months. The
program incorporates most of the
provisions of the existing petition
to make special. A search of the
prior art is required and relevant
art disclosed in an IDS. The
applicant must disclose how each of
the claims are patentable over the
cited references. The application
must be directed to a single
invention and the applicant must
participate in an interview with the
examiner. See detailed article
on
Accelerated Examination Procedures.
Updated August 27, 2006 |
