By Kevin E. Noonan —

Among the many new requirements contained in the U.S.
Patent and Trademark Office’s recently-promulgated new rules on continuation
application filing and claim number restrictions (see links below), the Office has imposed a
deadline of February 1, 2008 for all pending applications to satisfy two
reporting requirements.  First,
applicants must identify (in every pending application) every commonly-owned
application or patent that names at least one inventor in common and was filed
or claims priority to an application that was filed within two months of the
subject application.  Second, for every
commonly-owned patent application sharing a common inventor and "substantially
overlapping" subject matter, a rebuttable presumption will arise that
there is at least one patentably-indistinct claim in each application (using a
one-way obviousness test) (see new rules notice, p. 46,785).  Although reasons can be imagined for the purpose of these requirements,
it is not unreasonable to assume that the burden imposed by these requirements
may motivate applicants to simply cancel any application that is not
sufficiently important to them to incur the expense of complying with the
reporting requirements.  It is likewise
not unreasonable to presume (in view of the Office’s invocation of the
"overwhelming" backlog of pending cases as justification for the new
rules) that this economic disincentive to maintaining what are perceived to be
"unnecessary" applications is precisely the intended purpose of these
rules.

While heretofore strangely quiet on the subject of the
new rules (see "Breaking A Very Long Silence"), recognition of the reality of the impending
economic burden appears to have influenced the behavior of at least two major
patent interest groups.  The Intellectual
Property Owners (IPO) posted yesterday on their website the results of a
survey of 37 member organizations relating to the extent of the burden these
new rules would impose.  In addition, reliable sources have told Patent Docs that the
Biotechnology Industrial Organization (BIO), joined by IPO and perhaps other
groups, recently met with Patent Office officials to discuss the extraordinary
burdens of complying with these rules.  As a result, these sources tell Patent Docs that the Office has promised
to revisit this aspect of the recent rulemaking, and to either modify the
rule
or extend the deadline.  Although either
would be welcome, the Office’s acknowledgement of the justification of IPO’s
and BIO’s complaints appears to contradict their representations to the Office
of Management and Budget (and that Office’s subsequent decision) that the rules
imposed no significant economic impact.

It is unlikely that there will be any major retrenchment
of the new rules absent court action (which the major organizations have
abdicated to a sole inventor in a single action, and which has withdrawn a
motion for an injunction or stay of implementing the rules) or a change in the
administration.  The possibility that the
rules will be relaxed is, however, consistent with this Administration’s
penchant for taking and pressing extreme positions with little factual
justification, and retrenching only when faced with public pressure (political
or otherwise).  This track record
suggests that members of the patent community, including the patent bar, had
better get busy if they will have any hope of adequately protecting U.S. patent
rights in the face of a Patent Office administration that seems openly hostile.

For additional articles in this series, please see:

• "An Analysis of the New Rules: 37 C.F.R. § 1.142(c): Increasing the Chances of Submitting a Successful Suggested Restriction Requirement (SRR)," October 4, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.145: "Provoking a Restriction Requirement," October 3, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.78(d)(1)(i) & (vi): PCT Practice," September 23, 2007
• "An Analysis of the New Rules: USPTO Releases ESD Guidelines," September 17, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.265: Examination Support Document," September 13, 2007
• "An Analysis of the New Rules: Revisions to First Action and Second Action Final Practice," September 11, 2007
• "An Analysis of the New Rules: 37 C.F.R. §§ 1.78(d)(1) and 1.114: Streamlined Examination," September 10, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.117: Refund Due to Cancellation of Claims," September 10, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.142: Suggested Restriction Requirements," September 6, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.114: RCE Practice," September 5, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.75(b): 5/25 Limit on Claims," September 4, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.78(d)(1): Claims for Benefit of Prior-Filed Applications," September 3, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.78(f): Commonly Owned Applications and Patents," August 27, 2007

For additional information on this and other related topics, please see:

• "Breaking A Very Long Silence," October 1, 2007
• "It Ain’t Necessarily So," September 28, 2007
• "Commissioner Doll Addresses ACI Biotech Patents Conference," September 26, 2007
• "Rules Challenger Amends Complaint and Withdraws PI Motion," September 11, 2007
• "Inventor Sues PTO to Prevent New Continuation Rules from Taking Effect," August 30, 2007
• "Patent Office Provides Recorded Web-Based Discussion of New Rules," August 30, 2007
• "New PTO Continuation Rules: Unfair to Biotech?" August 29, 2007
• "Proposed Agenda for September 12, 2007 Biotechnology/ Chemical/Pharmaceutical Art Group Meeting," August 24, 2007
• "The ‘Word’ on the New Continuation Rules (from the USPTO Webcast) – Part II," August 24, 2007
• "The ‘Word’ on the New Continuation Rules (from the USPTO Webcast) – Part I," August 23, 2007
• "New Continuation and Claims Rules Published," August 22, 2007
• "More on M.P.E.P. § 710.06," August 20, 2007
• "Patent Office to Hold Webcast on New Claim and Continuation Rules on August 23, 2007," August 20, 2007
• "Patent Office Announces that New Continuation and Claims Rules Will Be Published . . . Tomorrow," August 20, 2007
• "Procuring Patent Protection from the Present USPTO," August 15, 2007
• "New Continuation and Claims Rules to Be Published in Late Summer," July 25, 2007
• "They Just Don’t Get It – ‘Patent Reform’ at the USPTO," April 11, 2007
• "Patent Applicants Beware: The Rules Are Changing (Again)" Part 1 and Part 2, November 6, 2006