By Kevin Noonan —

The Patent
and Trademark Office has proposed sweeping changes in "continuation’
practice (see Part 1) as well as how claims are examined, which were the
subject of a "townhall" meeting held in Chicago on February 1st with
Patent Commissioner John Doll and General Counsel James Toupin.

At present,
an applicant can file as many claims as they believe are necessary to properly
encompass her invention.  Under the
proposed changes, the Office will be required to examine only ten
"representative" claims, which should include all independent claims,
and the applicant will have the burden to designate which claims are
"representative."  If those
claims are deemed allowable, then the Office will examine undesignated claims
dependent on any of the designated representative claims.  Examination of these claims will be limited
to Sections 101 (utility) and 112 (written description/enablement/best mode).

An
applicant will retain the right to have all claims examined on the merits, but
in that case they will be required to perform a search, using US PTO searching
criteria, and then submit a patentability statement that identifies all claim
limitations present in the prior art (with specificity) and explains how the
representative claims are patentable over the prior art.  The decision on
whether to submit representative claims or the search/patentability information
can be changed during prosecution at applicant’s election.

Although
the Office is also considering changes to Rule 56 regarding the duty of candor,
under present law the requirement to perform a search and submit a
patentability statement is fraught with potential liability under the
inequitable conduct doctrine.  This
doctrine, widely used, provides the opportunity for a patent infringement defendant
to have a patent found unenforceable for violation of Rule 56 and the duty of
candor.  Requiring applicants to submit
search results and a patentability report greatly increases the opportunities
for second guessing and unfounded charges of prosecution malfeasance that have
been a "plague on the patent law" for almost a generation.

The Patent
Office, insulated from these considerations (which occur only in patent
litigation) thus wants to impose a requirement on patent applicants that
further erodes the type of business certainty that CEO’s,
in-house patent counsel, and the Federal Circuit Court of Appeals have all said
is a proper goal of the patent system.

Comments on
the proposed changes were accepted until May 3, 2006 at AB93comments@uspto.gov.  The Office received a far greater number of
responses than anticipated, and they were reported to be predominantly
negative.  For now, the Office has not
moved to promulgate these rules, and in view of the firestorm they set off there
is some doubt about whether these changes will ever be implemented.

Additional discussion of this topic can be found in Dr. Noonan’s February 3, 2006 article on Patently-O.