Court Says USPTO Can Change Patent Rules

bizwriter writes "Many large companies have been closely monitoring the Tafas v. Doll lawsuit over whether the US Patent and Trademark Office has the power to change the patent application process in significant ways, so as to restrict the scope of patents and the chances of getting one. The US Court of Appeals for the Federal Circuit has finally spoken, with a split court ruling that the USPTO does have the necessary authority. The case stems from a court challenge to four new rules the USPTO put in place in 2007. A number of tech companies including Microsoft, IBM, Oracle, Apple, and Intel have supported the rule changes, which would strengthen their positions and make it more difficult for small companies to create, protect, and bring to market disruptive technology. These companies didn't have it all their way, as the appeals court said that one of the four rules conflicts with existing patent law and sent the other three back to a lower court for further review. If the decision is sustained by a full review of all 12 Federal Circuit appeals judges, it could be a blow to biotech and pharmaceutical companies, which depend on being able to obtain large numbers of patents. Expect further appeals on this one, and for the only beneficiaries in the short run to be the lawyers."

Comments

Details on the rules

[langelgjm]

A somewhat better description of the rules can be found here.

They include things like limiting the number of claims to 25 (some patents include hundreds of claims, I believe; these are the heart of the patent, as they define what exactly might be infringed); and setting a limit on the number of requests for reexamination (I think that currently, you can just refile indefinitely, and that many applicants do just that, hoping that eventually an examiner will give up and accept their patent application).

Re:Details on the rules

[Theaetetus]

A somewhat better description of the rules can be found here.

They include things like limiting the number of claims to 25 (some patents include hundreds of claims, I believe; these are the heart of the patent, as they define what exactly might be infringed); and setting a limit on the number of requests for reexamination (I think that currently, you can just refile indefinitely, and that many applicants do just that, hoping that eventually an examiner will give up and accept their patent application).

For the former, it's not as big an issue in high technology, but it's a much bigger issue in pharmaceuticals and biotechnology, where a 100-claim set is actually reasonable, due to the numbers of species or minor changes to a drug that they're claiming as dependent claims.

For the latter, one slight note I'd add is that the requests for continuing examination still have to move prosecution along... You can't just keep saying "my invention is A", have the examiner say "A is not novel", and file a continuation saying "my invention is A", unless you want it rubber stamped. Instead, it's more about narrowing the claims until you get to "Okay, my invention is A and B, when you use it to do C and D".

This is a poor substitute

[gravesb]

for Congress re-writing the law in a comprehensive matter. If Congress does so, courts have to defer to the new laws. With the USPTO doing it, every rule change will be heavily scrutinized by courts, and it will take years of start and stop rule making to come up with an ad hoc, disjointed rule set. But at least someone is doing something.