“Too many rules and rules proposals have the possibility for catastrophic outcomes for the applicant or practitioner.”
I liked reading the always-excellent Rob Greenspoon’s post about five (almost) instant fixes to the patent system. The next U.S. Patent and Trademark Office (USPTO) Director would do well to read that post. Intellectual property rights are greatly important to America’s economy, and an efficient and well-functioning USPTO is critical to ensuring that such rights are protected.
Here are five more (almost) instant fixes that I would ask the next Director to implement.
1) The USPTO should institute a procedure to require a request for examination.
All patent applications are examined, even ones that the owner later decides aren’t worthwhile. It’s possible to request deferral of examination, but this procedure is limited and requires an extra step. So, because most patent applicants have sunk the complete filing costs at or around the time of filing, the applicant has less incentive to abandon a case after a first action, even for cases that are no longer commercially relevant to the applicant. This results in the USPTO having to maximize its staffing levels, which in turn requires higher applicant fees to fund the USPTO.
The world would be better if the USPTO didn’t have to examine all these cases. Under a deferred examination system, only the important cases would be examined, the cases that are “important” being self-selected by patent applicants themselves. Applications that have become less important over time would still be published but would not necessarily be examined. The USPTO would be more efficient and would require less staffing.
2) The USPTO should stop promulgating draconian rules.
Too many rules and rules proposals have the possibility for catastrophic outcomes for the applicant or practitioner. Examples:
- The new Information Disclosure Statement (IDS) rule—Attorneys must now certify the number of references cited in an application. If an applicant miscounts and identifies 50 references instead of 51, the attorney’s certification to this effect will later be Exhibit A in an inequitable conduct action.
- The Rule 97 certification rule—Under this rule, an attorney sometimes may, and sometimes must, certify that a cited reference was not “known” to the attorney or to certain other individuals. But it isn’t always clear what this means. Did your partner in another office across the country, who is listed with you on your firm’s power of attorney, see this reference three years ago for another client? Did you see this reference fourteen years ago when you worked at a different firm? Did the associate who drafted the case three years ago and who now works for another firm see the reference last week? Had you seen the reference previously but only read page 1, and the relevant material is on page 5? What’s “reasonable inquiry” under Rule 97?
- Rule 704(d) (certification re avoiding loss of term adjustment)—as with Rule 97, this rule is fraught with ambiguity and peril, and it can create a “catch 22” for attorneys.
- The terminal disclaimer rule—the USPTO recently tried to pass a rule that would automatically invalidate patents “tied” by a terminal disclaimer if one patent was invalidated. Again, this rule would have created a horrible “catch 22” in many cases, where no procedural option was correct. Luckily, the USPTO withdrew this rule in December of 2024.
And on and on with such rules. The USPTO has proffered dozens of unfriendly, overly complicated, and sometimes mean-spirited rules over the years. Instead, the USPTO should keep in mind that it’s the PATENT office, not the ANTI-PATENT office.
3) The USPTO should clarify IDS practice.
IDS practice is a mess and fraught with potential peril for applicants and their attorneys. The USPTO should expressly make it unnecessary to submit, and should refuse to consider, foreign office actions and search reports and actions from other examiners. It should eliminate the option in Rule 97 to certify that no reference cited was “known” to a person within the ambit of Rule 56 more than three months ago. Examiners should expressly consider, and the USPTO should make it unnecessary to cite, anything in Global Dossier, any applications to a common inventor, and any citations in family-related other applications. And the USPTO should get rid of the new rule that requires a certification as to how many references are cited cumulatively.
Really, it would be better to get rid of the IDS requirement altogether as to prior patents, but that won’t happen.
4) The USPTO should provide a direct payment mechanism for law firm clients.
This one is for law firms. Clients often expect law firms to advance USPTO fees, but this practice is becoming untenable as fees increase. A law firm can get an advance from a client with impairment risk, but that doesn’t always fly with larger clients. Some clients are reluctant to grant a law firm access to the client’s deposit account or charge card. Two proposals here: (1) When an attorney submits something that requires a fee, provide a procedure for the client to be sent a fee payment link; (2) For clients with deposit accounts or stored charge cards, put in place a procedure to allow limited access to outside counsel such that counsel can authorize payments to the account/card, but only for the client’s cases.
5) Get rid of garbage fees.
A client who pays for 40 claims but then is restricted to 20 claims can’t get the extra claims fees back upon cancellation. If an attorney files a translation of a foreign-language application the same day as filing an application, this can trigger the excess page fee if the translation pushes the page count past the limit. But if the attorney waits one day and files the translation one day later, the excess page fee won’t then be triggered. The $430 non-docx surcharge is grossly beyond the USPTO’s own estimate of the costs to convert a pdf filing (only $5 at the time of passage, probably less now). And so on. Clients expect to get value for paying the USPTO’s fees and shouldn’t be saddled with illogical or excessive fees.
Those are my five. Undoubtedly, people who work with the USPTO will have other ideas for (almost) instant fixes to the patent system. If you were the next Director, what fixes would you make?
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Author: iqoncept
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