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Three groups meet with OMB to stop continuation rules from being implemented

June 20, 2007
Post by Blog Staff

In an effort to prevent the much-discussed impending rules changing continuation practice and the number of claims from being finalized, there were three meetings held regarding the proposed rules during May and June at the Office of Management and Budget (OMB), the office that must review and approve all regulations promulgated by federal agencies. It has been speculated that, if approved, the new rules will be published in early July.

More details regarding the meetings and the participants after the jump.

Wednesday, May 16 meeting

The attendees included several representatives of the Biotechnology Industry Organization (BIO), and several members of the Akin Gump law firm, also representing BIO. They presented a chart indicating the development timeline for biotechnology inventions from research to market, as well as a memo that indicates the USPTO may not have followed the necessary procedural requirements to legally promulgate the rules. Interestingly, former PTO commissioner Bruce Lehman, now at Akin Gump, was at the meeting on BIO's behalf, as was a veritable who's who of USPTO management, including Jon Dudas, USPTO director, Margaret Peterlin, deputy USPTO director, John Doll, commissioner for patents, and John Love, deputy commissioner for patent examination policy.

Thursday, June 14 meeting

Representatives of Intermolecular, Inc. and Fallbrook Technologies, Inc. presented at this meeting on behalf of the Innovation Alliance. They offered a memo describing how, in their view, the proposed rules will not achieve the results desired by the USPTO, namely a reduction in backlog, as well as a presentation essentially covering the same material.

Friday, June 15 meeting

This meeting was attended by representatives from Cantor Fitzgerald and GlaxoSmithKline. The details of the presentation materials are not available from the OMB website, but according to Dennis Crouch of Patently-O, they presented on behalf of a dozen companies what they believe were illegal actions by the USPTO in the promulgation of the rules.

It is unknown whether the OMB was swayed by any of the presentations. The full text of the rules is not available, but partial abstracts are available:

RIN: 06511-AB93 (the "continuation" rule)

Title: Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims

Abstract (truncated by the reginfo.gov website): The Office revises the rules of practice to share the burden of examining an application if the applicant has filed multiple continuing applications or multiple requests for continued examination. The revised rules would require that second or subsequent continuation applications and second or subsequent requests for continued examination of an application include a showing as to why the amendment, argument, or evidence presented was not previously submitted. The revised rules would also ease the burden of examining multiple applications that have the same effective filing date, overlapping disclosure, a common inventor, and common assignee by requiring that all patentably indistinct claims in such applications be submitted in a single application absent good and sufficient reason. These changes would allow the Office to apply the patent examining resources currently absorbed by multiple continuing applications and requests for continued examination that simply recycle earlier applications to the examination of new applications and thus allow the Office to reduce the backlog of unexamined applications. This will mean faster, more efficient examination for the typical applicant without any additional work on the applicant's part, but a small minority of applicants who consume a disproportionate share of Agency resources will be required to share the burden they place on the [end of abstract available]

RIN: 0651-AB94 (the "number of claims" rule)

Title: Changes to Practice for the Examination of Claims in Patent Applications

Abstract (also truncated): A small but significant minority of applications contain an excessive number of claims, which makes effective examination of such applications problematic. The U.S. Patent and Trademark Office (Office) revises the rules of practice to share the burden of examining applications containing an excessive number of claims. Specifically, the Office amends the rules to provide that if an application contains more than 10 independent claims, the applicant must provide a patentability report that covers all of the independent claims in the application. In addition, the Office amends the rules to provide that the Office will give a separate examination only to those dependent claims expressly elected for separate examination, and that the applicant must provide a patentability report that covers all of the independent claims and elected dependent claims in the application if the number of independent claims plus the number of dependent claims elected for examination is greater than 10. The changes would allow the Office to apply the patent examining resources currently absorbed by applications that contain an excessive number of claims to the examination of new applications, and thus allow the Office to reduce the backlog of unexamined applications. This would mean faster, more effective examination for the typical applicant without any additional work on the applicant's part, but a small minority of applicants who consume a disproportionate share of agency resources will be required to share the burden they place on the [end of abstract available]

Action from the OMB is expected in the next month or so, although there is no hard deadline for review of the proposed rules to be complete.


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