All of the suggested changes to continuation practices are extraordinary in their breadth and reach, and place severe and staggering restrictions on an Applicant’s ability to craft meaningful and useful claims.
Last October, the United States Patent and Trademark Office (USPTO) issued a Request for Comments on USPTO Initiatives To Ensure the Robustness and Reliability of Patent Rights. Responses to this request are due by this Wednesday, February 1, 2023.
Patent owners, especially small businesses and independent inventors, need two things of the patent system:
1. Reliability/believability. We need patents that are respected when they are issued. We do not want any doubt about their validity.
2. Flexibility. We use many different strategies during patent prosecution. Many of our strategies reflect the startup-nature of our inventions, where we are constantly working on the product-market-fit. We may need several bites at the apple to effectively protect our invention.
The Request for Comments suggests several different changes to patent prosecution, none of which address small companies’ needs.
The questions presented appear to be yet another assault on patent owners by Big Tech.
All of the questions presented in the Request for Comment place severe restrictions on an Applicant’s ability to get meaningful patent claims for their invention. This makes patents much less valuable, and it encourages “efficient infringement” by Big Tech.
The value of a patent is based on its certainty and reliability.
When parties do not believe in the patent’s validity, they cannot give it much value. Consequently, patent owners must endure longer, more protracted, and much more expensive litigation to enforce their intellectual property.
Especially when a patent owner fails to obtain patent enforcement insurance, they are at an even bigger disadvantage under the USPTO’s suggested changes in the Request for Comments.
Questions 4, 6, 7, 8, 9, and 10 All Place Severe Restrictions on Continuation Applications
All of the suggested changes to continuation practices are extraordinary in their breadth and reach, and place severe and staggering restrictions on an Applicant’s ability to craft meaningful and useful claims. The restrictions encompass divisional applications, double-patenting rejections and continuations practice in general.
Many of the suggested changes proposed by the USPTO will severely limit strategies used by patent applicants, from startup companies to large companies alike.
Queston 9 is Particularly Deadly to Patent Owners
For example, Question 9 asks: “Should there be heightened examination requirements for continuation patents, to ensure that minor modifications do not receive second or subsequent patents?”
It is not the USPTO’s job to determine what is a “minor modification” or not. The Applicant – and the Applicant alone – should decide what is valuable to them on the basis of their business situation, not what the USPTO deems as a “minor modification.”
What may be a “minor modification” to a claim in the USPTO’s eyes might be a multi-million-dollar feature to a startup company.
Whether an Applicant chooses to pay the USPTO for a second examination in a continuation application should be completely up to the Applicant; the USPTO receives its fees for examinations and for maintenance.
Valuable inventions take time to make it to market. One of the most valuable patent strategies is to use continuation practice to hone and craft claims that match the product – or a competitor’s product.
Continuation practice – when done well – is much less expensive than litigation, and much more effective for any patent applicant, whether an independent inventor, a startup company, or a multinational corporation.
Question 2 Puts Burdens on Practitioners to Show Support for Claims, Limitations, and Even Identify New Information in Continuation in Part Applications
For example, in Question 2, the USPTO suggests several ways that the Applicant will have to provide explanation of support for claim amendments, new subject matter in continuation applications, and many other seemingly trivial, but ultimately burdensome requirements.
The suggested changes shift the burden to “read the specification” from the examiner to the Applicant.
The Examiner has the ultimate responsibility to ensure that 35 USC 112 requirements of written description and enablement are fulfilled in the patent application.
Further, in my opinion, requiring the examiner to search the specification for support (or lack thereof) has a very important benefit: the examiner spends more time reading the specification and understanding the invention.
Question 3 is a Solution in Search of a Problem
Question 3 relates to additional burdens and restrictions on Request for Continued Examination (RCE) practice. One proposal is to switch to a different examiner after a set number of RCEs.
First, it is not clear that there is any real problem here. Applicants can always go up on appeal if progress is not being made with the examiner.
Second, the MPEP already has provisions that address the problem implied by Question 3.
Under MPEP 707.02, Supervisory Patent Examiners are encouraged to review the third or subsequent Office action with a view towards concluding prosecution. Further, if the application has been pending for five years, the application should be made “special.”
Lastly, changing examiners will make matters worse, not better, after several RCEs.
There are no USPTO rules that prohibit a new examiner from reintroducing rejections made by a previous examiner or from bringing up issues that have already been settled.
Make Your Voice Heard
In sum, the USPTO’s Request for Comments will result in a weakening of the patent system for inventors, entrepreneurs, startup companies, and any company that innovates in their field.
I encourage everyone to add their voice to the USPTO’s Request for Comments by submitting your view.