Patent Law
Judge Overturns Rule Changes to Streamline the Patent Process
Posted Apr 2, 2008, 09:26 am CDT
By Debra Cassens Weiss
A federal judge in Virginia has ruled the U.S. Patent and Trademark Office doesn't have the authority to make rule changes designed to streamline the patent process.
Patent applicants had been “apoplectic” over the PTO proposal, which was designed to make the patent process more efficient by encouraging patent applicants to be more precise in describing their inventions, the Recorder reports. The rules would have limited the number of claims that applicants can file to help define a patent and the number of continuations they can file to amend patent claims.
U.S. District Judge James Cacheris of Alexandria ruled yesterday that the proposals were substantive in nature and beyond the PTO’s authority. The office can only make procedural changes to the rules, Cacheris said.
Cacheris had formerly issued an injunction that barred the rules from taking effect.
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Posted by Patent Prosecutor - 4 months, 3 weeks, 6 days, 8 hours, 53 minutes ago
Was this lifted from the PTO’s PR feed?
The rules had nothing to do with altering internal PTO processes to “streamline” examination.
The rules required patent attorneys to search and describe prior art references, limit the number of claim in an application, and limit the number of times an applicant may communicate with the PTO (i.e., alter and restrict the claims to their allowable scope) regarding any particular invention. Thus, the draconian rules prohibited Applicants from fully arguing and amending their applications, and imposed ridiculous filing costs (attorneys having to search and characterize the prior art). In characterizing the prior art, they also opened up patent attorneys to malpractice suits which would further cause attorney fees and thus Applicant costs to rise.
All of these rules take away from an Applicant’s substantive rights and simply provide artificial barriers to filing in contravention of existing statutes as to the authority and purpose of the PTO.
If the rules were designed to “streamline” practice, they would have required Examiners to read applications and provide references for any assertions. The main causes of the PTO’s problems is their refusal to read applications, search the prior art, issue sensible rejections, and consider Applicants’ arguments.