February 6, 2023

Volume XIII, Number 37

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February 03, 2023

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PTO Requests Comments on Initiatives to Ensure Patent Robustness, Reliability

The US Patent & Trademark Office (PTO) is seeking public input and guidance on proposed initiatives directed at bolstering the robustness and reliability of patents. The request for comments was spurred in part by US President Joe Biden’s July 9, 2021, executive order on Promoting Competition in the American Economy, and a June 8, 2022, letter from Senators Leahy, Blumenthal, Klobuchar, Cornyn, Collins and Braun raising concerns about patent thickets.

The PTO identified four broad topics and initiatives that it is considering:

  • Prior Art Searching

  • Support for Patent Claims

  • Request for Continued Examination (RCE) Practice

  • Restriction, Divisional, Rejoinder and Non-Statutory Double Patenting Practice.

The PTO seeks comments on 11 main questions and several sub-questions. The first five questions are directed to the PTO initiatives while questions six through 11 address concerns raised by the senators.

PTO Initiatives

  1. How should the PTO facilitate an applicant’s submission of prior art that is not accessible in the Patents End-to-End Search system (e.g., “on sale” or prior public use)?

  1. How, if at all, should the PTO change claim support requirements and/or continuation practice?

  1. How, if at all, should the PTO change RCE practice?

  1. How, if at all, should the PTO limit or change restriction, divisional, rejoinder and/or non-statutory double patenting practice?

  1. Provide any other input on any of the proposals listed under the PTO initiatives.

Senator Inquiries

  1. How would eliminating terminal disclaimers, thus prohibiting patents that are obvious variants of one another, affect patent prosecution strategies and overall patent quality?

  1. Should patents that are tied together by a terminal disclaimer because of an obviousness-type double patenting rejection stand or fall together if their validity is subsequently challenged?

  1. Should the PTO require a second look by a team of patent quality specialists before issuing a continuation patent on a first office action?

  1. Should there be heightened examination requirements for continuation patents?

  1. Should the PTO implement a rule change that requires any continuation application to be filed within a set timeframe of the ultimate parent application?

  1. If filing fees were increased to cover the actual cost of obtaining a patent, would this increase patent quality? And if the fees for continuation applications were increased, would applicants be less likely to file continuations for obvious variants?

Among the proposals under consideration are whether to require applicants to identify corresponding support in the original disclosure for each claim in a continuation application, whether applications should be reassigned to a different examiner after a set number of RCEs are filed, whether the PTO should adopt the unity of invention standard, and whether divisionals should be filed within a set time period.

Click here for further details on the PTO initiatives.

Comments must be received by January 3, 2023, to ensure consideration.

© 2023 McDermott Will & EmeryNational Law Review, Volume XII, Number 286
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About this Author

Bernard P. Codd, McDermott WIll Emery Law Firm, Intellectual Property Attorney
Partner

Bernard P. Codd is a partner in the law firm of McDermott Will & Emery LLP and is based in the Washington, D.C., office.  He focuses his practice on patent prosecution and opinions in the areas of semiconductor device and manufacturing, battery, fuel cell, photolithography, chemical, metallurgy, and polymer technologies.

202-756-8182
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