“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 today, February 1.
Patent owners, especially small businesses and independent inventors, need two things of the patent system:
- Reliability/believability. We need patents that are respected when they are issued. We do not want any doubt about their validity.
- 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.
You can read the full comments of Angel Capital Association here. I encourage everyone to add their voice to the USPTO’s Request for Comments by submitting your view.
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Join the Discussion
14 comments so far. Add my comment.
Lab JedorFebruary 5, 2023 11:55 pm
Yup. That is the world I am living in. A patent application in the US for a small entity, in filing fees is now $ 664. An additional $225 is an increase of 30% for the first continuation. And it keeps adding up with an issue fee, a maintenance fee of $800 coming up after 3.5 years in the USA. It is tough. But it is nothing compared to the fees schedule with outrageous prices of Europe, where the EPO has this moronic way to “invite you” to pay yet another fee. It is 1984 in full swing.
It is really something that a fee increase causes a shrug, because it is negligible compared to your hourly rate. I really need to find an “angel investor”. Thanks for the helpful advice MD. I can already see that you are worth your high hourly rates.
Max DreiFebruary 5, 2023 05:07 pm
LJ, if you think that an EPO fee of EUR 255 is “incredibly” expensive then you are living in a world different from mine, where the rate for a single hour of the time of an experienced patent attorney is way more than EUR 255. How many attorney hours does it take, to build a worthwhile patent portfolio?
Are you familiar with the expression “keep something pending”? It is common practice in Europe to file a precautionary divisional and keep it pending at least until the end of the 9 month period following grant during which parties can file opposition. Opponents routinely cite prior art new to both the EPO and the patent owner, which prejudices the validity of the granted patent. When that happens, it is handy to have pending a recently filed divisional. In fact, having a pending div might even deter that party from filing an opposition.
Between competitors, filing patent applications is a game of cat and mouse because the exclusive right given by grant is so potent. Basically, to sit down at the table and play the game you need deep pockets. Independent inventors lacking such depth of pocket need angel investors, otherwise they are out of their league. Inevitably, No matter how much they badger the authorities over the level of official fees. Anybody who leads you on, to imagine otherwise, is not being honest with you. Don’t make the mistake that many independent inventors make, of imagining that there is proportionality, a ratchet, a rule that decrees that the more you money you hand over to the PTO (or tyour patent attorney), the more entitled you are, to be granted claims that are both potent and enforceable. It ain’t like that. OK?
AnonFebruary 5, 2023 06:06 am
In your very first post you (again) provide a false dichotomy, and do so in your oh-so-familiar attack on the US clear and convincing choice.
Your conclusion is ever faulty because your premises are ever faulty.
Your premises are ever faulty because you are nothing more than a shill for EPO Uber Alles.
Lab JedorFebruary 3, 2023 01:10 pm
MD, I looked at the EPO fees structures to file applications in, what you call “divisionals.”
As best understood, it seems that in the EPO you have to pay an additional fee for a “divisional”, 225 Euro for the first one, 455 for the second one, etc, in a chain.
All these fees add up, and make it incredibly expensive for an independent inventor to build a portfolio in the EPO. Perhaps a different approach is used in Europe to create a portfolio.
Do you know why this is? And what is the benefit to the inventor? Do they get an improved examination? It appears more to be a penalty than anything else. Perhaps that is what you mean by “relying on a fee structure that helps applicants to make sensible prosecution decisions.”
Max DreiFebruary 3, 2023 02:47 am
David Lewis’s comments remind me of an episode (some might say a debacle) in the rule-making history of the EPO, when the Office misguidedly tried to ratchet down Applicant’s freedom to file “continuing” applications (called “divisionals” at the EPO). The rule changes served only to exacerbate what the Office had seen as a problem. The Office soon reverted to the status quo ante, and tackled the problem instead (quite effectively, in my opinion) by i) investment in helping the Examiners to do their job properly and ii) relying on a fee structure that helps applicants to make sensible prosecution decisions.
What do we learn from this? The law of unexpected consequences reigns supreme. Pay attention to the Cassandras amongst the interested circles who warn of unfortunate consequences. Then leave the rule-making to those with enough experience to imagine the effects of the rule changes more accurately than any well-meaning but inexperienced manager.
Night WriterFebruary 2, 2023 05:52 pm
This appears to be another attempt to shift the burden of examination from the USPTO to the applicant.
David LewisFebruary 2, 2023 03:08 pm
Regarding Max Drei’s comments, although he correctly points out what at least appears to be a logical flaw in one of the statements of the article, the overall point of the article is valid. The reliability of US patents is being assaulted from many fronts, without having increased the rigorousness of the examination process. The further assaults suggested by the questions are also mostly unrelated to increasing the rigorousness of the examination. Instead, the questions suggest introducing what is essentially a collection of arbitrary rules/conditions about when a continuation and or RCE can be filed, making it more difficult and expensive to file either, without even ensuring that patents will be more reliable. If anything, they will be less reliable, because the more bug-a-boos that are enshrined in the rules (that need to be satisfied for a valid RCE/continuation), the more likely the PTO will mistakenly ignore one of its own bug-a-boos, which at times may lead to an invalid patent.
However, when you put someone that has spent much of their career attempting to invalidate patents, into a leadership role in the US PTO, these questions are the type of thing one would expect to result.
Lab JedorFebruary 2, 2023 08:23 am
MD, this is how Russ starts his piece:
“… independent inventors, need two things of the patent system:
Reliability/believability. We need patents that are respected when they are issued. We do not want any doubt about their validity. …”
There is no “wanting” or “needing” a patent. It is what we require/need from the patent system, as we have one, based on the Constitution.
The situation is NOT: I would do or publish an invention, if only there were patents. The situation constitutionally is: your invention, if you do one, will be protected by a patent. Thus , the American system is intended to entice people to do inventions. And constitutionally you have a right to have your invention protected.
It is the famous Quid pro Quo: you (inventor) publish and disclose, then you will get protection for a limited time.
A patent in the USA is not (or at least should not be) a privilege bestowed upon an inventor by a prejudiced ruler. Though many parties are working hard to make it so.
Max DreiFebruary 2, 2023 02:20 am
Lab Jedor, when I wrote that “if” inventors want patents, I was referring back to how Russ Krajek opens his piece. If you think that somebody has got it “backwards” and are guilty of a “distortion”, then it’s more poor Russ than me, isn’t it?
Lab JedorFebruary 1, 2023 05:31 pm
“If inventors want and need patents …”
You have it backwards MD. Our Constitution, a product of Enlightenment, included the Patent Clause as a rational measure to promote inventions in a new country that badly needed domestically developed technology.
It was a deliberate and wildly successful component of an industrial policy. It is not that Inventors needed and wanted a patent. There were almost no inventors who published their inventions. Without patent protection, bright people did not feel incentivized to do and/or publish their invention. And the rest is history as the saying goes.
In the greater scheme of things, America is abandoning its somewhat chaotic Darwinian approach of letting companies and inventors fighting it out among themselves and now follows the European ideology of preferring patent ownership by companies and institutions. This of course is in the interest of established incumbents that currently have an un-proportional influence on how the patent system operates.
To translate this into “…inventors want and need patents …” is a distortion of the goal of a patent system or at least the original goal of the American patent system.
Max DreiFebruary 1, 2023 01:53 pm
An egregious case of cognitive dissonance, if I may say so. If inventors want and need patents “that are respected” and of which there is “no doubt about their validity” then the ex Parte examination of patent applications at the USPTO will inevitably have to be so rigorous that it becomes grotesquely, disproportionately expensive, which cannot be what start-ups want or need. You can’t have your cake and eat it too. It reminds me of the more than 90% of consumers here in Germany that demand an end to “factory farming” but in the shops the only meat products that sell are those offered by supermarket chains at rock bottom prices attainable only by factory production processes on so-called “farms”.
The alternative is to grant patents on demand but then have a rigorous enquiry into validity whenever the importance of the granted patent justifies it, and somebody is ready to pay for it.
Here in Germany, the State offers two kinds of patents, a 20 year term offering which is subject to rigorous ex Party exam on the merits prior to issue, and a 10 year term offering which grants 3 months after the filing date, after an examination only of the formalities. Sophisticated Applicants use both sorts of patent, in a “horses for courses” approach.
Bottom line is that paying fees to the PTO is not sufficient to allow the owner of the issued rights to enjoin all and sundry at the drop of a hat. Either the PTO examination has to be so strict that the presumption of validity is unassailable (in practice not attainable) or an enquiry into the validity of the issued claims has to take place before the owner can enjoy injunctive telef from infringement. Anything else results in abuse of exclusive rights granted by the State, which is not in the public interest, which brings the patent system into disrepute, and in due course results in the positive merits of the patent system being neutered or even dissolved. eBay anybody?
It was ever thus. What’s your trick, to escape this Gordian knot?
Lab JedorFebruary 1, 2023 12:38 pm
It seems the Bureaucracy will not rest until patent applications are filed only by a small and well defined slice of corporate America.
Pro SayFebruary 1, 2023 12:06 pm
Patent “robustness and reliability?”
What does that even mean? How is it defined? What’s the criteria for obtaining it? Could you spot a “robust and reliable” patent out of a handful of patents? Can anyone?
The fact is, this is all nothing more than patent-hating, politician-and-infringer-driven hand-waving and dust-kicking.
A straw man.
A red herring.
No more useful or helpful in the patent realm than is “abstract.”
Greatest threat to American innovation, thy name is Big Tech.
Should the Patent Office institute even a few of these innovation-toxic “ideas,” the only thing left to do is this:
Close the Patent Office, throwaway the keys, and send everyone home.
Juile BurkeFebruary 1, 2023 09:27 am
Hi Russ- well said!
As a former TC1600 QAS, I agree with your assessments. Here is a link to my comments.
I too encourage the IP community to take a moment today to make their voices heard.