By Christopher P. Singer —

Back in September, the U.S. Government Accountability Office (GAO) published a report to the Ranking Member of the House Committee on Oversight and Government Reform detailing how current U.S. Patent and Trademark Office hiring efforts are likely insufficient to reduce the current application backlog.  The report identifies that examiner attrition, particularly among examiners with less than five years of experience, along with the USPTO’s outdated production goals are key factors that have exacerbated the application backlog.  New examiners are relied on primarily for the initial examination of new applications, and the GAO found that 70 percent of the examiners that had left the USPTO from 2002-2006 had fewer than five years of experience.  While Patent Office management believed that examiners leave the Office primarily for personal reasons (e.g., family reasons), 67 percent of the 1,100+ examiners surveyed believed that the unrealistic production goals were a primary reason for attrition.  From this survey information, the GAO report’s sole recommendation was that the "USPTO undertake a comprehensive evaluation of the assumptions that the agency uses to establish its production goals."

The Department of Commerce submitted comments to GAO (attached as Appendix III of the report above) that instead of focusing on efforts to re-evaluate current production goals (established in the 1970’s) to curb examiner attrition, chose to leverage the conclusion that hiring efforts alone will not reduce the backlog in order to highlight the Office’s "productivity" initiatives (i.e., the continuation and claims rule changes and the proposed changes to IDS and Markush claims practice).  According to the Department’s comments, once the effect of these productivity initiatives can be assessed, the PTO will then reconsider the assumptions it makes in establishing examiner production goals.  Seemingly, this was simply a polite way of saying: "GAO, your recommendation has been considered, but determined to be unpersuasive."

There is little debate that these changes will shift much of the current examination burden from examiners to the applicant and prosecuting attorneys, which should allow for a more rapid examination.  However, even with this reapportioned burden, a real and immediate effect on the backlog will likely only be realized if:  (1) the examining corps is prepared to handle the new issues that arise under the new rules, and (2) if there are adequate numbers of examiners to do the work.

Interestingly, several comments published in response to a Patently-O post regarding 35 USC § 120 indicate that the USPTO has not adequately prepared the examining corps to deal with implementation of the new continuation and claims rule changes, which take effect November 1 (tick-tock, tick-tock) (see, e.g., comments from "Examiner X" and "another examiner").  How, then, can Patent Office management assert that it has done its part in preparing the examiners to deal with application processing under the terms of the new rules?  As evidenced by the 100+ pages of commentary in the Federal Register notice attached to the publication of the new rules, the 67 pages of FAQs (which have been modified since their initial publication), and the huge amount of discussion from other sources, these new rules are very complex and difficult to interpret.  Examiners who are not prepared to deal with the mechanics and consequences of these rule changes should probably expect to spend at least the same amount of time on any given application under the new rules as they do now.  It seems that practitioners, applicants, and examiners will all be dealing with the fallout from these rules for the months to come.

So, by the end of the week (assuming GSK is unable to provide us all with a Halloween treat), applicants will be left to deal with a brave new world of patent prosecution under the new rules, and examiners will be expected to maintain the same production goals under a radically new system, with minimal training.  Let the gnashing of teeth continue.

    By Robert Dailey —

The Intellectual Property Owners Association (IPO) has finally weighed in on the new Markush rules that were released this August (see 72 Fed. Reg. 44992 (Aug. 10, 2007); "Patent Office Proposes New Rules for Alternative Claiming").

The comments center on two themes:  (1) that the new rules have the unwanted effect of increasing Examiner workload; and (2) that the rules unduly limit inventors’ abilities to define the nature of their inventions.  Specifically, the IPO makes the following comments regarding each proposed rule change.

I. Single invention explanation

The new rules encourage applicants who submit alternative claims to provide an explanation as to why the claim is directed to a single invention.  The PTO suggests that applicants may do this in one of two ways:  (1) explain that the species share a substantial feature of common utility; or (2) explain that the species are prima facie obvious over each other.

The IPO points out that the second of these options leads the applicant directly into a trap.  In re Ruff, 118 U.S.P.Q. 340, 347 (C.C.P.A. 1958), states: "[t]o rely on an equivalence known only to the applicant to establish obviousness is to assure that his disclosure is a part of the prior art."  In other words, if applicants admit that their species are prima facie obvious over each other, then they could not excise an anticipated species from the list of alternatives.

II. Long lists of named compounds

The new rules permit Examiners to reject claims directed to large lists of named compounds.  Under such a rejection, the Examiner would reject the claim and ask the applicant to present a common structural feature of the listed compounds.  IPO suggests that applicants may avoid the effect of this rule by claiming lists of structures rather than lists of names.

III. Single invention rule of 37 C.F.R. § 1.75(a)

The new rules would prevent Examiners from examining claims that contain more than one invention.  IPO suggests that the rule should be permissive, allowing Examiners the liberty to examine multi-invention claims if it would pose no undue burden on the PTO.  The rules should not force Examiners to reject claims that can easily be examined.  This would have the unwanted effect of increasing the PTO’s workload.

IV. "Difficult to construe" rule of 37 C.F.R. § 1.75(j)(1)

The new rules permit alternative claiming only when "[t]he number and presentation of the alternatives in the claim does not make the claim difficult to construe."  IPO rejects this rule as too vague.  No standard is provided for "difficult," and applicants are given no basis upon which they can rebut a determination that their claims are difficult to construe.

V. Nested alternatives ban of 37 C.F.R. § 1.75(j)(2)

The new rules provide that "no alternative be defined as a set of further alternatives within the claim."  IPO points out that nesting often shortens claim length, and places limits on the manner in which applicants can claim their inventions.  In place of the rigid ban, IPO recommends that Examiners be permitted to review nested claims unless the examination would be unduly burdensome.

VI. Double inclusion ban of 37 C.F.R. § 1.75(j)(3)

The new rules require that no alternative be encompassed by another alternative within the list of alternatives.  IPO accepts this rule as consistent with existing PTO practice.

VII. "Substitutable for one another" rule of 37 C.F.R. § 1.75(j)(4)

The new rules requires that each alternative in a list be substitutable for the other alternatives.  IPO rejects this rule as a contradiction of M.P.E.P. § 2173.05(h):

Where a Markush expression I applied only to a portion of a chemical compound, the propriety of the grouping is determined by consideration of the compound as a whole, and does not depend on there being a community of properties in the members of the Markush expression.

The new rule would encourage the PTO to ignore what one knows about the molecule as a whole.  For example, an R-group at the active site of a drug would be judged no differently than an R-group on a side chain.  IPO suggests that this rule be rejected in favor of the current practice outlined in M.P.E.P. § 2173.05(h).

VIII. Rule 140: "Substantial feature essential for a common utility"

The new rules require that an alternative claim "share a substantial feature essential for a common utility."  Otherwise, the claim is deemed as containing multiple inventions.  Although the PTO purports to rely on In re Harnisch, 631 F.2d 716 (C.C.P.A. 1980) for this rule, IPO points out that Harnisch never recites such a requirement.  Furthermore, IPO sees the rule as vague, and asserts that the rule offers no advantages over current practices for defining a single invention (i.e., that a single invention is one that is independent and distinct).

For additional information on this topic, please see:

• IPO’s "Comments on Proposed Rules related to ‘Examination of Patent Applications That Include Claims Containing Alternative Language,’ 72 Fed. Reg. Reg. 44992 (Aug. 10, 2007)," October 15, 2007