“All the proposed changes to continuation practice are extraordinary in their breadth and scope, and impose severe, staggering limits on applicants’ ability to formulate meaningful and useful claims. .”
Last October, the United States Patent and Trademark Office (USPTO) issued a Request for Comments on the USPTO’s initiative to ensure the robustness and reliability of patent rights. The deadline for responding to this request is today, February 1st.
Patent owners, especially small businesses and individual inventors, need two elements of the patent system.
- Reliability/reliability. Requires a patent to be honored upon issuance. I have no doubts about their validity.
- Flexibility. We use different strategies during patent filing. Many of our strategies reflect the start-up nature of our inventions, where we are constantly working on product market fit. It may take a few bites of an apple to effectively protect our invention.
The Request for Comment proposes several different changes to patent prosecution, none of which address the needs of small businesses.
The question posed appears to be yet another attack on patent owners by Big Tech.
All the questions posed in the Request for Comment impose severe limits on an applicant’s ability to obtain meaningful patent claims for his invention. This greatly reduces the value of patents and encourages “efficient infringement” by Big Tech.
The value of a patent is based on its certainty and reliability.
If the parties do not believe in the validity of the patent, they cannot give it much value. As a result, patent owners have to endure longer, longer and more costly litigation to enforce their intellectual property rights.
In particular, if patent owners fail to obtain patent enforcement insurance, the USPTO’s proposed comment request changes will put them at an even greater disadvantage.
Questions 4, 6, 7, 8, 9, and 10 all impose severe restrictions on continuing applications
All the proposed changes to continuation practices are extraordinary in their breadth and scope, and impose severe and surprising limitations on applicants’ ability to formulate meaningful and useful claims. This restriction includes divisional applications, double patenting rejections, and continuation practices in general.
Many of the changes proposed by the USPTO severely limit the strategies used by patent applicants, from start-ups to large corporations.
Question 9 is especially deadly for patent owners
For example, question 9 asks, “Should the examination requirements for continuation patents be strengthened to prevent minor modifications from obtaining a second or subsequent patent?”
It is not the USPTO’s job to determine what constitutes a “minor change.” Applicants should decide what they are worth based on their value alone. Business statusis not what the USPTO considers a “minor change.”
What appears to be a “minor change” to a claim in the USPTO’s eyes can be a multi-million dollar feature for a start-up.
Whether an applicant elects to pay the USPTO for second examination of a continuing application entirely up to the applicantthe USPTO receives fees for review and maintenance.
A valuable invention takes time to come to market. One of the most valuable patent strategies is to use ongoing practice to refine and formulate claims that match your product or that of your competitors.
Ongoing practices, when done well, are far less costly than litigation and far more effective for all patent applicants, including independent inventors, start-ups and multinational corporations.
Question 2 imposes a burden on practitioners to indicate support for claims, limitations, and even identify new information in the continuation of a partial application.
For example, in Question 2, the USPTO proposes several ways in which applicants must provide explanations of support for claim amendments, new subject matter in continuing applications, and many other seemingly trivial requirements. but ultimately becomes a burden.
The proposed change shifts the burden of “reading the specification” from the examiner to the applicant.
The examiner has ultimate responsibility for ensuring that the written description and validation requirements of 35 USC 112 are met in the patent application.
Moreover, in my opinion, asking examiners to search the specification for support (or lack of support) has very important advantages. Examiners spend more time reading the specification and understanding the invention..
Question 3 is the solution to search for the problem
Question 3 relates to additional burdens and restrictions on conducting a Request for Continued Examination (RCE). One suggestion is to switch to another examiner after a certain number of her RCEs.
First, it’s not clear if there’s an actual problem here. If no progress is made with the examiner, the applicant may appeal at any time.
Second, MPEP already has provisions to address the issues question 3 suggests.
Under MPEP 707.02, supervisory patent examiners are encouraged to consider a third or subsequent Office action toward closing prosecution. Additionally, if an application has been pending for five years, the application must be made “special.”
Finally, after several RCEs, changing examiners makes things worse instead of better.
There are no USPTO rules prohibiting new examiners from resubmitting rejections made by previous examiners or raising issues that have already been resolved.
Let me hear your voice
In short, the USPTO’s request for comment undermines the patent system for inventors, entrepreneurs, start-ups, and any company that innovates in the field.
You can read the full Angel Capital Association statement here. We encourage you to submit your comments and add them to the USPTO’s Request for Comments.
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Copyright: Stuart Miles
