Response to the Advance Notice of Proposed Rulemaking (ANPR), "Changes to (Implement the Patent Business Goals)"
Response to the Advance Notice of Proposed Rulemaking (ANPR), "Changes to
Implement the Patent Business Goals"
Michael A. Lechter
James H. Phillips
William R. Bachand
David E. Rogers
Edwin A. Suominen
(all patent practitioners of Squire, Sanders & Dempsey L.L.P., Phoenix, Arizona)
The following comments represent a synopsis of the collective views of the above individuals and not necessarily the views of Squire, Sanders & Dempsey L.L.P.
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We wish to thank the PTO for the opportunity to submit comments on these important topics. To summarize our comments, we have no objection to most of the PTO’s proposed new procedures. We do object, however, to (1) a limitation on the number of claims that may be submitted in an application,
(2) the proposed guidelines governing the submission of relevant art, and
(3) requiring an inventor to pay for and submit formal drawings prior to receiving a Notice of Allowability. The patent system is constitutionally mandated to reward inventors. To this end, Congress enacted Chapter 35 of the United States Code, the statutory authority under which the PTO operates. Any proposed rule that undermines or contradicts the constitutional or statutory purpose of the patent system should not be enacted.
The PTO has stated that the goal of its proposed changes is to reduce its processing time for patent applications to 12 months by the year 2003. This is an admirable goal because prolonged prosecution time reduces the term and value of the issued patent. However, the quality of issued patents is far more important than the speed at which they are examined.
The PTO’s first priority should always be to fulfill the directive of Congress in 35 U.S.C. § 131:
"The Commissioner shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Commissioner shall issue a patent therefor."
Unfortunately, the directive of 35 U.S.C. § 131 is sometimes left unfulfilled because, under the present disposition system, examiners are often not credited for performing an adequate search and examination of complex inventions. Instead of regulations that place additional burdens on patent applicants, we respectfully urge the PTO to improve the disposition system that is used to evaluate patent examiners. We would support improvements that would allow examiners to be acknowledged for the increased effort that they must put forth to properly search and examine more complex applications.
Many of the proposed rulemaking changes would impose significant new burdens, in the form of increased fees, on patent applicants. Under the circumstances, we cannot understand the reason behind additional revenue generation. The PTO already operates as a profit center for the U.S. government. Bridget Quinn, a PTO spokeswoman, was quoted in the online edition of Intellectual Property Today magazine as saying that nearly $100 million worth of patent fees were diverted from the PTO to other government functions in fiscal 1998. She said that she expects more than $100 million to be diverted in 1999.
If this diversion of funds were stopped, it is estimated that about $400 in additional funds would be available for examination of each U.S. patent application. We suggest that the Commissioner apply all of the fees paid by applicants to the examination and processing of patent applications, the intended purpose of such fees. The PTO has in the past called applicants its "customers." These customers (especially small ones with limited financial resources) would be better served by an efficient examination procedure, and one in which the costs are reasonable and reflect only the cost of obtaining a patent.
4. We respectfully disagree with the suggested limitation on the number of claims that may be filed with an application. In our practice, we often file patent applications for complex inventions having several patentable aspects. This complexity often demands that a large number of claims be secured to provide adequate protection.
While six independent claims are usually sufficient to define the boundaries of an invention, an arbitrary limit on the total number of claims could limit the scope to less than which the applicant is entitled. Further, a large number of dependent claims may be needed to point out aspects of a complex invention; aspects that may be patentable even if an independent claim later proves to be invalid in view of previously undiscovered prior art.
Under current practice, the Examiner already has broad discretion to restrict the claims that may be examined in an application. Further, under this practice (set forth in 35 U.S.C. § 132) applicants can file divisional applications with complete immunity from double patenting. Additionally, distinct inventions restricted into divisional applications may be independently assigned. This allows applicants to fully exercise their intellectual property rights in a manner that achieves their business objectives. The proposed rule changes would limit the benefit of restriction practice by requiring numerous applications to be filed. Consequently, the applicant may often be required to maintain consistent ownership of all patents resulting from the applications to avoid double patenting problems.
9. We oppose the requirement that applicants characterize references submitted to the PTO. The problem, of course, is that virtually any characterization or discussion of a reference could lead to a charge of inequitable conduct when attempting to enforce a patent. In fact, even the proposed requirement of identifying the ten "most" relevant references could lead to charges of inequitable conduct (the charge will be that one or more of the characterized references not included in the ten was more relevant than one that was included). Infringement litigation could possibly collapse into a side show (and an expensive one) about the selection and characterization of references. Such a result would harm inventors, particularly small inventors with limited resources, and benefit well-financed infringers.
7. We respectfully disagree with the proposal to file formal drawings prior to receiving a Notice of Allowability. In even a simple application, formal drawings can cost between $1,000 and $2,000. Formal drawings for a complex application often cost upwards of $5,000. Currently, the applicant need not incur this expense until he/she is certain that the scope of any allowed claims is sufficient to warrant it. Under the proposed rule, the applicant would be required to incur the expense if even one dependent claim, possibly of little value standing alone, were indicated as being allowable.
14. We respectfully disagree with the provision for presumptive elections because the commercial focus of the applicant may change after the application is filed. At the time of filing, the applicant often is not certain that independent claim 1 will represent the invention most valuable to the inventor.