If your company files patents, you have probably heard about the proposed changes to the patent rules and wonder how they may affect your company's patent strategy. The short answer is that it depends on what your patent strategy is now. The proposed changes relate to (i) the number of continuations a patentee may file for an invention and (ii) the total number of claims any patent and family of patents may have. If your company tends to not file many claims in any one application and generally does not file many continuations, these change may have little affect on your patent portfolio.
While a federal court in Virginia entered a preliminary injunction to temporarily stop the U.S. Patent and Trademark Office (PTO) from implementing these new rules, there has certainly been no definitive answer as to if and when they will be implemented. Because there still exists a potential that these rules will be implemented, companies should consider modifying their patent strategies, particularly if the proposal that these new rules be retroactive is implemented.
Limits On Continuation Practice
A parent application is the first application filed for a specific invention. A continuation application is any application that claims priority to the parent application, or any other previous application. The parent application and any subsequent continuations are called "a family." A request for continued examination (RCE) is a continuation that allows prosecution to continue after a final rejection.
Under the current rules, a patentee may file unlimited continuations, so long as a previous application is still pending in the PTO and new claims in the continuation are supported by the original specification. Continuations and RCEs may be used to continue prosecution after a final rejection from the PTO, thus allowing a patentee many attempts to get a patent.
Further, many companies employ continuation practice to keep the family "alive" and draft claims that would directly cover a competitor's products. This strategy provides patentees with an opportunity to get claims that a jury or court would more easily recognize as infringed by a competitor. For example, suppose a parent application described a chair. The claims might include "a sitting device comprising a horizontal member, a backrest member extending from a top surface of the horizontal member, and one or more leg members extending from a bottom surface of the horizontal member." If a patentee were to get those claims, he would be sitting pretty.
But there are many types of chairs out there and jurors are easily led astray. Now suppose a competitor came out with a chair having three legs attached to a round seat and a triangular backrest. If an application in the chair family were still pending, the patentee could now draft claims that included "a sitting device comprising a round horizontal member, a triangular backrest member extending from a top surface of the round horizontal member, and three leg members extending from a bottom surface of the round horizontal member." If the patentee were to get this claim, he would be in a better position to convince a jury that the competitor infringes.
So how would the new proposed rules change this practice? A patentee would only be allowed two continuations and one RCE per family, as a matter of right. After these limits are met, a patentee must petition and show cause to file further continuations or the prosecution of that family ends. However, the burden is high to show cause and must include statements that arguments or amendments could not have been made in the prior continuations, or in response to an earlier office action. According to the PTO, this change is proposed to bring finality to the prosecution process.
Limits On The Number Of Claims Filed
Claims are the individually numbered, single sentence paragraphs at the end of a patent application, which set out the boundary of the patentee's invention, much like a deed sets out the boundaries on a piece of real property. If someone trespasses on the claims, they are said to infringe the claims. There are two types of claims - independent claims and dependent claims. Independent claims are claims that stand by themselves. A dependent claim is a claim that depends on an independent claim, and includes all the limitations of that independent claim, as well as its own limitations.
Looking to our chair example above, independent claim 1 may be "a sitting device comprising (i) a horizontal member, (ii) a backrest member extending from a top surface of the horizontal member, and (iii) a plurality of leg members extending from a bottom surface of the horizontal member." Each of i-iii in this example is a limitation that must be met for a competitor's product to infringe. A dependent claim may be "the sitting device of claim 1 further comprising (iv) a pair of arm members extending from the backrest member," where iv is a further limitation to claim 1 that must be met (in addition to i-iii) for a competitor to infringe.
Currently, a patentee may file as many claims as deemed appropriate or necessary - so long as the fees for excessive claims are paid. It is not unusual to see more than 25 claims in an application, and often hundreds in a biotech patent application. A patentee might include many independent and dependent claims in an attempt to more broadly expand the boundary of the invention, while providing more narrow claims to make sure claims avoid the prior art.
The new proposed rules, however, would effectively restrict the number of claims a patentee can file per application to 25 total claims, of which a maximum of five can be independent claims. Thus, if each of the continuations allowed are used as described above, a patentee can file 75 total claims, of which a maximum of 15 may be independent claims, for each family. However, if the PTO requires the patentee to split out claims through a restriction requirement (i.e., the PTO thinks there are more than one patentably distinct inventions in the application), any divisional application filed in response to the restriction requirement starts the total claim count anew.
In addition, the patentee would also be required to identify any other patent application that (i) is commonly owned, (ii) has a common inventor and (iii) has a filing date or priority date at least within two months of the filing date or a priority date of the subject application. Any such applications would raise a rebuttable presumption that the applications do not claim patentably distinct inventions, and the 5/25 limit on the number of claims would include the claims in any such applications, unless the patentee can rebut the presumption.
Note that I say the new proposed rules would effectively restrict the number of claims. This is because the PTO would provide a vehicle with which a patentee can file more than five independent claims and 25 total claims in an application. The vehicle is called an Examination Support Document (ESD). An ESD would require (i) a pre-examination search statement, (ii) a list of prior art most closely related to the subject matter of the claimed invention, (iii) an identification of limitations disclosed in each prior art reference, (iv) a detailed explanation of patentability, and (v) a showing of support of enablement and possession of the invention.
The EDS is a living document - if claims are amended or new claims added, then the EDS may have to be updated to address the amendments and/or new claims. What this all adds up to is a roadmap for the PTO, or a competitor during litigation, to invalidate the claims. The ESD requires the patentee to take positions and make admissions about the prior art and his invention that can and will be used against him in a court of law. Under more recent case law, any claims that do issue would be subject to a strong validity attack. Further, how the search was conducted and the explanations developed may be fodder during litigation to make out an inequitable conduct charge that may render the patent unenforceable.
Strategies Going Forward
These proposed rules changes may force companies to modify their current patent strategies. Even though the implementation of these new proposed rules has, for now, been enjoined by a federal court, it may be prudent for companies to conduct patenting activities under the assumption that these proposed rules, or some version of them, will be implemented in the future. For example, since there may be a limit on the number of continuation applications one can use to get any claims allowed, it may be prudent to focus each application to a specific invention. Gone may be the days of omnibus specifications describing multiple, interrelated inventions, because the omnibus specification may make it difficult to overcome the presumption that related applications claim patentably indistinct inventions, thereby requiring the cancellation of claims or the filing of an ESD.
Each application must be carefully crafted and then all prosecution routes explored to maximize the potential for a beneficial outcome - allowed claims. These routes may include more examiner interviews, more responses after final and more appeals before filing a continuation or an RCE. It will be important to minimize the use of any continuations and the lone RCE.
To this end, after a final rejection, the best course of action may be to call the examiner to discuss the final rejection and to let the examiner know you will be appealing if an agreement cannot be reached. Hopefully the examiner will then even more carefully consider the inventor's arguments and allow claims sufficient to cover the invention.
However, as with all new procedures (and the courts and the PTO), only time will tell.
Thomas Johnston is a Partner in Holland & Knight's Boston office, where he practices in the Intellectual Property practice group. His practice focuses on patent prosecution and patent litigation. Mr. Johnston may be reached at (888) 688-8500.