Infotech and the law: Patent system faces extreme makeover

With a burgeoning backlog of patent applications for review, the Patent and Trademark Office recently proposed hiring 1,000 new examiners each year for the next five years.

Such a costly effort may be difficult to push through Congress, however. By all accounts, PTO has been fighting a losing battle to examine patents in a timely manner. Some quasi-official accounts indicate the backlog has increased to more than 700,000 applications, up from an estimated 250,000 applications a few years ago.

But a larger examining corps is not the only proposed change. New rules were proposed earlier this year that, if implemented, will significantly alter the playing field for patent examiners and applicants alike.

Driven by a need to improve operational efficiency, foster innovation and improve patent quality, the proposed rules fall into three areas:

» Information disclosure requirements

» Continuing examination of patent applications

» The manner and extent to which an invention is claimed and examined.

Applicants have long had a duty to disclose information relevant to the patentability of an invention, but PTO's proposed rules are based on the recognition that there may be too much of a good thing.

In theory, who better to understand and provide information regarding competing products, the state-of-the-art and technological innovations than the applicant? But when the underlying technology for the invention involves setting standards or litigation, large numbers of lengthy documents are submitted, leaving the examiner to wade through them to identify what is truly relevant.

Thus, the proposed rules limit both the quantity and length of submitted documents; when those limits are exceeded, analysis of the relevance of the references must be offered.

However, such analysis, referred to as prosecution history estoppel, routinely is used against patent holders during subsequent infringement litigation. As a further complication, the proposed rules motivate earlier submission of relevant documents. As various examination milestones are passed, more analysis is required.

The proposed rules relating to continuing examination of patent applications aim to curtail the number of associated patent applications for a particular inventive concept. It is not uncommon for an invention to be included in a number of patent applications to cover various components, modifications or implementations.

However, the proposed rules would reduce the opportunity to file such related applications to specified circumstances. Moreover, the rules deter repeated filing of continuing examination applications, a practice that is necessary in some circumstances, but in others is based on commercial factors and litigation opportunities.

The third area of proposed rules limits "representative claims," which an examiner initially reviews for patentability to speed review. Here, too, are ways of increasing the claims to be reviewed. However, analysis must be submitted, which inevitably results in prosecution history estoppel.

Other new rules, which have been implemented, provide for an ambitious fast-track examination schedule, giving a patentability determination within one year. However, that fast track comes at a significant cost in that the avoidable analysis in the other proposed new rules areas is a requirement.

The extent to which the new rules will be implemented is unclear, as is the timing. And opinions remain mixed regarding the likely effect, particularly with regard to speed and quality of patent application examination. One may be sure, however, that to some extent the proposed rules will require implementing a new strategy.

Christine McCarthy is a patent attorney at Pillsbury Winthrop Shaw Pittman LLP, McLean, Va. She can be reached at Christine.McCarthy@pillsburylaw.com.