Imminent(?) changes to US patent law

The US Patent and Trademark Office ("USPTO") has a large backlog of patent applications to examine and has been looking at ways to reduce its workload and streamline its patent granting procedures.

It is therefore proposing a number of changes to its patent rules.  These have been expected for some time, but were at last published in their final version on 21 August.  They were intended to come into force on 1 November 2007, but a last minute court ruling, following a request by the pharmaceutical giant GlaxoSmithKline, has blocked the USPTO at least temporarily from introducing the new rules.

This latest development means that it is no longer clear whether, and if so when, the changes will eventually take place.  Nor is it clear whether the changes which are eventually introduced will be the same as those set out in the 21 August proposals.  The eventual changes may or may not apply to existing US patent applications as well as those filed after the changes.

The most important of the USPTO's proposals are outlined below.  Whilst they are by no means as extreme as some had feared they would be, they are nevertheless likely, if introduced, to have a significant impact on the way that US patent applications are handled, and to reduce the options available to an applicant if his claims are rejected by a USPTO examiner.

Continuation applications

At present, if a US patent application is proving difficult to get granted, the applicant can file a so-called "continuation" or "continuation-in-part" application based on the original, or can request "continued examination" of the original.  In such cases, the practical effect is to prolong the life of the problematic application and to allow the applicant a second chance to try to get it granted.  Further continuations can be filed to allow even more attempts at getting the desired claims accepted.

Under current US law, there is no limit to the number of continuations that can be based on a single originating application.  Many applicants take advantage of this to keep all claim options open, and to keep competitors guessing, for as long as possible.

One of the changes that the USPTO is now proposing is to allow only two continuation applications, and one request for continued examination (RCE), to be filed based on the originating patent application.  Further continuations and RCEs would only be allowed with special justification, and would probably not be widely available.

This change would limit the applicant's opportunities to argue for broad claims.  If the desired claims were still being rejected after the last available continuation application had been filed, the only remaining option would be to lodge a formal appeal.

It would therefore become more important to make a genuine attempt to overcome USPTO objections as soon as they arose, preferably in response to the first so-called "Office action" issued against an application, as there would be limited further opportunities to overcome the objections.

Divisional applications

A "divisional" patent application can be filed, based on an existing US patent application (which is then known as the "parent" application), in order to pursue a different set of claims to that in the parent.  Some applicants make use of divisional applications in a similar way to continuations, to obtain a further opportunity to argue for the claims they'd like to get granted.

Here too the USPTO is proposing to crack down on existing practices.  Under the proposed new rules a divisional application would only be allowed if, on the original parent application, the USPTO examiner had specifically refused to examine certain claims on the basis that they covered more than one different invention and had required the applicant to "restrict" the original claims to only one of those inventions.  In this instance, one or more divisionals could be filed to cover the remaining invention(s), but a divisional would no longer be possible simply as a means to have an existing set of claims examined for a second time.

Again, then, this proposed change would limit the applicant's options when attempting to get a desired set of claims granted.

It would however be possible to file a divisional application based on a pending application which was itself a divisional (in other words, to file a series of linked divisionals).  In this case, at least one of the earlier applications in the series would have to have been subject to a restriction requirement of the type described above.  However the very first application in the series would not necessarily need still to be pending when future divisionals were filed.

Limits on number of claims

Under the current law, a US patent application can contain any number of "claims", each defining a different aspect or embodiment of the invention for which a patent is sought.

Under the USPTO's proposed new rules, effectively an application would be allowed a maximum of 25 claims, of which no more than 5 could be so-called "independent" claims defining the broad aspects of the invention.

If an application contained more than 25 claims, or more than 5 independent claims, the applicant would have to supply a so-called "examination support document" containing detailed information about the patentability of the claims.  Submitting an examination support document would place a huge burden on the applicant and also be extremely risky since all such information would be placed on the official, publicly available USPTO file for the application and could be used as evidence during future litigation.  Applicants would likely want to avoid taking this route, even if the result was a limited number of claims.

In cases where one or more continuation or divisional applications were filed based on a first US patent application, the total number of claims submitted for all the applications in the series would have to be no more than 75, and the total number of independent claims no more than 15.  Again, exceeding these limits would require submission of an examination support document.

These changes would also reduce the flexibility of the current system, in which typically large numbers of claims, all relating to different aspects of the invention, can be examined at the same time.

Where to go from here

There is currently a lot of uncertainty about whether, when and in what form the new rules will be introduced.  It is therefore difficult to prepare for their coming into force.  Nevertheless many of them, if eventually adopted, could apply to existing US patent applications as well as those filed after the changes.  We therefore believe it is prudent to keep all currently pending US applications under review in light of the USPTO's 21 August proposals, and in some cases to take steps to ensure they are in reasonable shape in case the changes come into force in the near future.  This may for example involve pre-emptive measures such as filing divisional or continuation applications, or reducing numbers of claims, earlier than originally planned or in anticipation of future need.

Applicants' future US patent filing tactics may well also need to be revised, as indeed may their expectations of the options available and the likely outcomes of their US patent applications.

Where appropriate, we will be contacting our existing clients to discuss their individual cases and the implications, for their patent portfolios, of the developments in the USA.  If you are not an existing client but would appreciate some guidance with your own US patent applications, please phone or email us for further information.