By Donald Zuhn —

On August 21, 2007, the U.S. Patent and Trademark Office published new rules concerning continuation and claims practice that will significantly impact the way patent attorneys and agents prosecute applications before the Patent Office.  While patent practitioners  – especially those prosecuting applications directed to biotech and pharmaceutical inventions – have decried the new rules for the adverse effect they are likely to have on the protection of patentable inventions, industry groups have curiously remained silent.  It now appears, however, that at least one industry group to be affected by the new rules – the National Association of Patent Practitioners (NAPP) – has broken the silence.

In a statement released to its members on the NAPP Discussion List, the nonprofit trade association for patent attorneys and patent agents recently announced that "upon receipt of a vocal outcry" against the new rules from its membership, the NAPP had begun taking action to oppose the rulemaking.  In addition, the NAPP statement noted that while "[c]ertain recent postings on the NAPP Discussion List have expressed concern that our organization has not taken any action in response to the release of the new rules relating to claims and continuations," the group’s Directors and Officers had met to discuss these concerns, and "unanimously agreed that implementation of the new rules will be detrimental to all of our practices," and therefore, shared its members’ concerns about the "significant adverse impact of these rules."

In addressing its membership’s concerns, the NAPP also recalled that when the new rules were first proposed by the USPTO in January 2006, the organization "provided a vigorous and forceful response to that proposal" (see "Response to Request for Comments; Proposed PTO Rule on Continuation Practice" and "Response to Request for Comments; Proposed PTO Rules on Claim Limits"), and observed that a number of the organization’s suggestions had been adopted by the Patent Office, thereby "lessening the adverse impact of the final rule package."  The NAPP acknowledged that "despite the overwhelmingly negative comments of NAPP and over 300 other individuals and organizations (many of which are more powerful and have deeper pockets than NAPP), the PTO has nevertheless promulgated [a] restrictive rule package," noting that "[i]n the face of the PTO’s determination to proceed with restrictions on the number of claims and continuing applications, and the legislature’s apparent unwillingness to take any action to restrain the PTO, NAPP’s options, and indeed those of the entire patent bar, are limited."

With respect to the group’s future plans, the NAPP stated that it could be most effective in continuing to express its opposition to the new rules "by filing or joining an amicus brief, if a case arose which posed the appropriate question(s) in an appropriate forum."

We thank Patent Docs reader Jerry Miller for directing our attention to the NAPP announcement and for graciously providing us with a copy of the organization’s statement.