[Federal Register Volume 87, Number 191 (Tuesday, October 4, 2022)]
[Notices]
[Pages 60130-60134]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2022-21481]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO-P-2022-0025]
Request for Comments on USPTO Initiatives To Ensure the
Robustness and Reliability of Patent Rights
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Request for comments.
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SUMMARY: The United States Patent and Trademark Office (USPTO or
Office) seeks initial public comments on proposed initiatives directed
at bolstering the robustness and reliability of patents to incentivize
and protect new and nonobvious inventions while facilitating the
broader dissemination of public knowledge to promote innovation and
competition. This request for comments (RFC) addresses a variety of
topics, including prior art searching, support for claimed subject
matter, request for continued examination (RCE) practice, and
restriction practice, and certain initiatives related to these topics
that are outlined in the USPTO's July 6, 2022, letter to the Food and
Drug Administration (FDA). This RFC also seeks comments on the
questions set forth in a June 8, 2022, letter to the USPTO from six
United States Senators. The USPTO is studying additional topics and
initiatives to bolster the robustness and reliability of U.S. patents
and will seek public comments on those separately.
DATES: Comment Deadline: Written comments must be received on or before
January 3, 2023, to ensure consideration.
ADDRESSES: For reasons of government efficiency, comments must be
submitted through the Federal eRulemaking Portal at
www.regulations.gov. To submit comments via the portal, enter docket
number PTO-P-2022-0025 on the homepage and click ``search.'' The site
will provide a search results page listing all documents associated
with this docket. Find a reference to this RFC and click on the
``Comment Now!'' icon, complete the required fields, and enter or
attach your comments. Attachments to electronic comments will be
accepted in ADOBE[supreg] portable document format or MICROSOFT
WORD[supreg] format. Because comments will be made available for public
inspection, information that the submitter does not desire to make
public, such as an address or phone number, should not be included in
the comments.
Visit the Federal eRulemaking Portal (www.regulations.gov) for
additional instructions on providing comments via the portal. If
electronic submission of comments is not feasible due to a lack of
access to a computer and/or the internet, please contact the USPTO
using the contact information below for special instructions regarding
how to submit comments by mail or by hand delivery, based on the
public's ability to obtain access to USPTO facilities at the time.
FOR FURTHER INFORMATION CONTACT: Linda Horner, Administrative Patent
Judge, at 571-272-9797; June Cohan, Senior Legal Advisor, Office of
Patent Legal Administration, Office of the Deputy Commissioner for
Patents, at 571-272-7744; or Raul Tamayo, Senior Legal Advisor, Office
of Patent Legal Administration, Office of the Deputy Commissioner for
Patents, at 571-272-7728.
SUPPLEMENTARY INFORMATION: The USPTO is seeking public input and
guidance on proposed initiatives directed at bolstering the robustness
and reliability of patents. These initiatives are meant to ensure that
the patent rights granted by the USPTO fulfill their intended purpose
of furthering the common good, incentivizing innovation, and promoting
economic prosperity.
I. Background and the USPTO's July 6, 2022, Letter to the FDA
On July 9, 2021, President Biden issued an Executive Order (E.O.)
on ``Promoting Competition in the American Economy,'' 86 FR 36987 (July
14, 2021) (``Competition E.O.''). To advance the Biden Administration's
goals of promoting access to prescription pharmaceuticals for American
families and increasing competition in the marketplace, section
5(p)(vi) of the E.O. directs the Secretary of Health and Human Services
(HHS) ``to help ensure that the patent system, while incentivizing
innovation, does not also unjustifiably delay generic drug and
biosimilar competition beyond that reasonably contemplated by
applicable law.'' In particular, section 5(p)(vi) of the E.O. directs
the HHS Secretary, ``through the Commissioner of Food and Drugs'' and
``not later than 45 days after the date of this order,'' to ``write a
letter to the Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office enumerating
and describing any relevant concerns of the FDA.''
In response to the Competition E.O., on September 10, 2021, the FDA
sent a letter to the USPTO outlining ideas for further engagement with
the USPTO. On July 6, 2022, the USPTO sent a responsive letter (USPTO
Letter) discussing specific initiatives the USPTO was exploring to
further promote robust and reliable patent rights across all technology
areas and suggesting additional ways in which the USPTO could work with
the FDA to ensure that our patent system properly and adequately
protects innovation while not unnecessarily delaying generic and
biosimilar competition, which provides more affordable versions of
pharmaceuticals for Americans who need them. The Competition E.O. and
the letters are available at www.uspto.gov/initiatives/drug-pricing-initiatives.
The USPTO Letter explains that the United States is a global leader
in the development of drugs and biologics due to its strong patent
system. Robust and reliable patents are needed to incentivize and
protect the immense research and development investment
[[Page 60131]]
essential to bringing such products to market and to spur the
collaboration necessary for quick and speedy drug and biologic
development. Our laws also strive to ensure that our system, as a
whole, does not unnecessarily delay generic and biosimilar competition,
which provide cost savings to Americans when they purchase
pharmaceutical products.
To further the objectives of the Competition E.O., the USPTO
recently outlined initiatives to execute the President's agenda. The
USPTO's initiatives to ensure robust and reliable patents, as discussed
in Paragraph 2 of the USPTO Letter, are reproduced below.
2. Improve procedures for obtaining a patent so that the USPTO
issues robust and reliable patents. Specifically, the USPTO will:
a. Introduce more examining time into the patent examination
system. The USPTO recently made changes to examination time and is
exploring further changes, particularly in cases with several
continuations (large family cases) and cases with evidence submitted
in support of patentability.
b. Give patent examiners more training and resources. The USPTO
has released a new search system for patent examiners to use in
identifying relevant prior art to make patentability determinations.
The new Patents End-to-End Search system includes significant
enhancements, such as access to more than 76 million foreign
documents with high-quality English translations and new, improved
search capabilities. The USPTO is exploring additional technology
and resources of prior art to improve patent quality. The USPTO also
recently announced a collaboration with the American Intellectual
Property Law Association and the Intellectual Property Owners
Association to develop examiner training on enhancing the clarity of
the prosecution record. The USPTO also is exploring additional
training for examiners on new matter, assessing claim scope, and the
use of functional claiming.
c. Enhance communication between patent examiners and the Patent
Trial and Appeal Board (PTAB), which hears challenges to patents
once they have issued as well as appeals from rejections of pending
patent applications during examination. The USPTO has put in place
processes for the PTAB to share feedback as it relates to ex parte
appeals, including sharing final decision tables with detailed
information about the PTAB's ruling on each individual rejection and
claim in an ex parte appeal and using surveys to facilitate
information sharing between PTAB judges and the patent examination
corps. Examiners are also notified when they have an application
related to an AIA proceeding, so they can easily access prior art
and relevant statements that may impact their examination in the
application before them. In addition, examiners are now able to more
quickly identify prior art relied upon and PTAB's rulings on each
individual ground and claim in the post-grant proceeding via final
written decision tables, which are now incorporated into all final
written decisions. The USPTO is also exploring how data collected
from the decision tables in both ex parte appeal and AIA proceedings
can be relied upon to identify quality trends, such as prior art
trends in post-grant proceedings (e.g., commonly relied upon non-
patent literature and foreign language patents) as well as
opportunities to develop examiner training or guidance based on
findings or lessons learned from surveys.
d. Consider enhancing the process for information disclosure
statements. The USPTO will continue our efforts to explore changes
to the procedures for identifying prior art on information
disclosure forms to provide efficiencies for applicants and to allow
examiners to more readily identify key prior art through the
development of an automated tool for USPTO examiners that imports
relevant prior art and other pertinent information into pending U.S.
patent applications.
e. Consider applying greater scrutiny to continuation
applications in large families and/or the use of declaratory
evidence to overcome rejections. The USPTO is considering additional
guidance for examiners and quality reviews by the Office of Patent
Quality Assurance when continuation applications in large families
are filed, or when applicants submit declaratory evidence to rebut
an examiner's determination of unpatentability.
f. Revisit obviousness-type double patenting practice.
Obviousness-type double patenting occurs when a patent owner tries
to secure a patent for an obvious variation of the innovation
covered by another of their own patents. In these instances, under
current practices, a patent applicant is required to file a terminal
disclaimer so that the later patent application on an obvious
variant of an earlier-patented invention may not be used to extend
the term of patent protection. Although a terminal disclaimer
ensures that the later patent will remain commonly owned with and
have the same patent term as the earlier patent, multiple patents
directed to obvious variants of an invention could potentially deter
competition if the number of patents is prohibitively expensive to
challenge in post-grant proceedings before PTAB and in district
court. And later issued patents to obvious variants may delay
resolution of ongoing district court litigation thereby potentially
delaying generic and biosimilar entry into the market. The USPTO
will explore whether any changes need to be made to the patent
system regarding obviousness-type double patenting.
g. Revisit procedures for third-party input. The USPTO is
considering revising its procedures for allowing third-party input
during prosecution. The USPTO currently has a procedure to allow
third-party submissions of prior art in applications under
examination. This procedure is not widely used. The USPTO will seek
public input on whether aspects of the current procedure could be
changed to make it more useful.
h. Conduct a comparative analysis of the examination and
issuance of pharmaceutical and biological patents in the U.S. versus
in other countries and any underlying lessons learned from the same.
The USPTO plans to conduct a comparative analysis to evaluate
whether any additional initiatives or changes will strengthen our
intellectual property system. Director Vidal and the USPTO team will
also explore this topic in bilateral and multilateral discussions
with other countries.
i. The USPTO will provide technical input on proposed
legislative efforts.
A primary intention of this RFC is to seek written public comments
on the initiatives described in the USPTO Letter reproduced above
(2(a)-2(i)), and as reflected in questions 1-5 below. The questions in
this RFC focus on some of these initiatives, and the USPTO plans to
issue an additional RFC that will address other initiatives and
additional topics concerning improvements to the patent application
process, including, without limitation, enhancing the information
disclosure statement process, increasing clarity and certainty in
functional claiming, and transcribing inventor interviews.
II. June 8, 2022, Letter From Senators to the USPTO
On June 8, 2022, the USPTO received a letter from United States
Senators Leahy, Blumenthal, Klobuchar, Cornyn, Collins and Braun
raising a concern about ``large numbers of patents that cover a single
product or minor variations on a single product, commonly known as
patent thickets.'' In the letter, the Senators commented that the
practice of obtaining large numbers of patents on a single drug product
``impedes generic drugs' production, hurts competition, and can even
extend exclusivity beyond the congressionally mandated patent term.''
The Senators requested that the USPTO consider changes to its
regulations and practices by issuing a notice of proposed rulemaking or
a public RFC on a list of six questions. We are including the Senators'
six questions in this RFC (questions 6-11 below) and welcome feedback
on them, in addition to the proposed USPTO initiatives as reflected in
questions 1-5 below.
III. Specific Topics and Initiatives
A. Prior Art Searching
The USPTO Letter, section 2(b), indicates the USPTO ``is exploring
additional technology and resources of prior art.'' Patent examiners
have access to many resources for searching for prior art during the
examination of patent applications. The new Patents End-to-End Search
system includes access to U.S. patents and pre-grant publications and
more than 76 million foreign patent documents with high-quality English
[[Page 60132]]
translations and new, improved search capabilities. In addition,
examiners search general and technology-specific databases for non-
patent prior art and are provided the services of trained professional
online search personnel for non-patent prior art searching. See Manual
of Patent Examining Procedure (MPEP) 904. In question 1 below, the
USPTO seeks public input on specific sources of prior art to ensure
that patent examiners have access to the most relevant information.
Specifically, the USPTO seeks public input on robust sources of
technology-specific, non-patent literature. The USPTO also seeks public
input on best practices to ensure that examiners are aware of public
use and on-sale activity that is relevant to examination.
B. Support for Patent Claims
The USPTO Letter, section 2(e), indicates the USPTO will
``[c]onsider applying greater scrutiny to continuation applications in
large families.'' More broadly, to ensure that all claims are properly
supported by the specification, greater scrutiny should be considered
any time the claims presented do not form part of the original
specification or specifications on which the claims rely for priority,
i.e., when new claims are presented in continuing applications (e.g.,
continuation, continuation-in-part, and divisional applications) as
well as when new claims are presented or claims are amended during
prosecution. In all such circumstances, because such new claims and
amendments to claims may not have support under 35 U.S.C. 112 since
they do not form part of the original specification, these new and
amended claims require additional scrutiny to: (1) ensure they have
proper written description and enablement support in the application
itself, see 35 U.S.C. 112(a); and (2) ensure they have proper written
description and enablement support in the application from which they
claim entitlement to the benefit of an earlier filing date (e.g., a
benefit or priority claim under 35 U.S.C. 119, 120, 121, or 365).
Because an examiner must establish the effective filing date of each
claim in order to identify applicable prior art and evaluate the claims
for compliance with the requirements of 35 U.S.C. 102 and 103,
examiners often spend a significant amount of time, particularly on
continuing applications, or applications that contain numerous benefit
or priority claims, evaluating issues related to 35 U.S.C. 112(a)
(e.g., ascertaining the filing date of individual claims).
Currently, the MPEP states that applicants ``should'' show
``support'' for claims during prosecution. See, e.g., MPEP 2163 II.A.
(``With respect to newly added or amended claims, applicant should show
support in the original disclosure for the new or amended claims.'').
By contrast, the reexamination and reissue rules (rules 1.530(e) and
1.173(c), respectively) require that during reexamination or reissue
proceedings, patentees ``must'' supply an ``explanation of the support
in the disclosure'' for new and amended claims:
(e) Status of claims and support for claim changes. Whenever
there is an amendment to the claims pursuant to paragraph (d) of
this section, there must also be supplied, on pages separate from
the pages containing the changes, the status (i.e., pending or
canceled), as of the date of the amendment, of all patent claims and
of all added claims, and an explanation of the support in the
disclosure of the patent for the changes to the claims made by the
amendment paper.
Similarly, in inter partes review and post-grant review
proceedings, motions to amend ``must'' set forth ``[t]he support in the
original disclosure of the patent for each claim that is added or
amended.'' 37 CFR 42.121(b)(1), 42.221(b)(1). In promulgating rules
related to motions to amend, the Office explained that the rules
``enhance efficiency,'' for example, because the PTAB may deny the
motion to amend when the patent owner cannot show support for the new
claims, as opposed to a more burdensome procedure of entering the
amendment and then substantively rejecting the claims. 77 FR 48680,
48706, Col. 2 to 3 (Aug. 14, 2012); later amended in 85 FR 82923 (Dec.
21, 2021) (placing the burden of persuasion on the patent owner to
show, by a preponderance of the evidence, that the motion to amend
complies with the requirements of 35 U.S.C. 316(d)(1) and (3); 37 CFR
42.121(a)(2), (a)(3), b(1), and (b)(2); and 42.221(a)(2), (a)(3),
(b)(1), and (b)(2)).
As detailed further in question 2 below, the USPTO seeks input on
the impact of applying a similar approach to all applications and
whether any change would enhance the public record and reduce the
burden on examiners. This approach would impose minimal burden on
applicants because they are required to file claims that ``conform to
the invention as set forth in the remainder of the specification,''
with claim terms that ``find clear support or antecedent basis in the
description so that the meaning of the terms in the claims may be
ascertainable by reference to the description.'' 37 CFR 1.75(d)(1).
C. RCE Practice
With rare exception, after an examiner closes prosecution,
including after the mailing of a notice of allowance or when an appeal
has been taken to the PTAB, an applicant may file an RCE under 37 CFR
1.114. Upon receipt of an appropriate RCE, the examiner will reopen
prosecution and issue another action. Currently, this cycle may proceed
indefinitely, subject only to a finding of prosecution laches. See MPEP
706.07(h) and 2190. The USPTO seeks input through question 3 below on
this current practice and whether there should be internal process
changes once the number of RCEs filed in an application reaches a
certain threshold, such as transferring the application to a new
examiner or increasing the scrutiny given in the examination of the
application.
D. Restriction, Divisional, Rejoinder and Non-Statutory Double
Patenting Practice
In situations in which two or more independent and distinct
inventions are claimed in a single patent application, the USPTO is
authorized by the patent laws and implementing regulations to require
the applicant to restrict the application to one invention. The
practice for requiring an applicant to restrict an application to one
invention in such situations is known as restriction practice. See MPEP
800.
According to the USPTO's records, the number of divisional
applications fell from more than 21,000 in fiscal year (FY) 2010 to
fewer than 15,500 in FY 2021, while the total application filings
increased significantly. At the same time, the filing of continuation
applications increased significantly. The USPTO has received feedback
that one reason many continuing applications are filed is related to
restriction practice. See MPEP 800.
With respect to question 4 below, the USPTO seeks input on
improvements to restriction practice, including by allowing for the
examination of two or more distinct inventions in the same proceeding
in a manner similar to the practice authorized by 37 CFR 1.129(b), and
also seeks input on whether any offset to patent term adjustment should
be considered in such cases. The USPTO also seeks input on whether the
burden requirement before the examiner to impose a restriction should
be revised, and if so, how. See MPEP 808.02. In particular, the USPTO
seeks input on whether it should adjust the method by which an examiner
appropriately establishes burden. The USPTO also seeks input on its
[[Page 60133]]
restriction practice with respect to Markush claims. See MPEP 803.02.
For example, the USPTO seeks input on whether the applicant should be
authorized to suggest how the scope of the claim searched should be
expanded if the elected species is not found in an effort to present
closely related inventions for consideration together. The USPTO also
seeks input on the advantages, or disadvantages, of unity of invention
practice as compared to restriction practice.
Additionally, with respect to question 4 below the USPTO seeks
feedback on serial filings of divisional applications, including
whether the current practice of authorizing the filing of divisional
applications in a series should be revised to require all divisional
applications to be filed within a set period of time after the
restriction requirement is made final and after any petition for review
has been resolved.
Specifically, the USPTO also seeks feedback on guidance, petition
practice, rejoinder, and harmonization with respect to restriction
practice. The USPTO seeks input on whether to make changes to the
rejoinder practice after a final rejection has been made. See MPEP
821.04(a). For example, the USPTO seeks input on whether applicants
should be given a certain time period after final rejection to provide
appropriate claims for rejoinder.
As a corollary to restriction practice, non-statutory double
patenting occurs when a patent owner tries to secure a patent for a
patentably indistinct variation of the same invention, or otherwise
tries to obtain an unjustified timewise extension of patent rights. See
MPEP 804 and 1504.06. A common form of non-statutory double patenting
occurs when a patent owner files a patent application claiming an
obvious variation of the innovation covered by another of their own
patents. In these instances, under current practices, a patent
applicant is required to file a terminal disclaimer so that the later
patent application on an obvious variant of an earlier-patented
invention may not be used to extend the term of patent protection.
Although a terminal disclaimer ensures that the later patent will
remain commonly owned with and have the same patent term as the earlier
patent, multiple patents directed to obvious variants of an invention
could potentially deter competition if the number of patents is
prohibitively expensive to challenge in post-grant proceedings before
PTAB and in district court. Also, multiple patents directed to obvious
variants of an invention can pose a heavy burden on examiners because
examiners are required to compare the claims in these multiple patents
and pending applications to determine if the claims are patentably
indistinct from one another such that a non-statutory double patenting
rejection is proper. The USPTO seeks input, through question 4 below,
on whether any changes need to be made to the patent system regarding
non-statutory double patenting.
IV. Questions for Public Comment
The USPTO invites written responses to the following questions and
requests. Commenters are welcome to respond to any or all of the
questions.
1. Identify any specific sources of prior art not currently
available through the Patents End-to-End Search system that you believe
examiners should be searching. How should the USPTO 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)?
2. How, if at all, should the USPTO change claim support and/or
continuation practice to achieve the aims of fostering innovation,
competition, and access to information through robust and reliable
patents? Specifically, should the USPTO:
a. require applicants to explain or identify the corresponding
support in the written description for each claim, or claim limitation,
upon the original presentation of the claim(s), and/or upon any
subsequent amendment to the claim(s) (including requiring a showing of
express or inherent support in the written description for negative
claim limitations)?
b. require applicants to explain or identify the corresponding
support for each claim, or claim limitation, in the written description
of every prior-filed application for which the benefit of an earlier
filing date is sought, under, e.g., 35 U.S.C. 119, 120, 121, or 365?
c. require applicants to explain or identify the corresponding
support for each claim, or claim limitation, in the written description
of every prior-filed application for which the benefit of an earlier
filing date is sought, under, e.g., 35 U.S.C. 119, 120, 121, or 365
(including requiring such support whenever a benefit or priority claim
is presented, including upon the filing of a petition for a delayed
benefit or priority claim and upon the filing of a request for a
certificate of correction to add a benefit or priority claim)?
d. make clear that claims must find clear support and antecedent
basis in the written description by replacing the ``or'' in 37 CFR
1.75(d)(1) with an ``and'' as follows: ``The claim or claims must
conform to the invention as set forth in the remainder of the
specification, and the terms and phrases used in the claims must find
clear support or and antecedent basis in the description so that the
meaning of the terms in the claims may be ascertainable by reference to
the description?''
e. require applicants to provide detailed analysis showing support
for genus or Markush claims, and require applicants to identify each
claim limitation that is a genus, and explain or identify the
corresponding support in the written description for each species
encompassed in the claimed genus?
f. require applicants to describe what subject matter is new in
continuing applications (e.g., continuation, continuation-in-part, and
divisional applications) to explain or identify subject matter that has
been added, deleted, or changed in the disclosure of the application,
as compared to the parent application(s)?
3. How, if at all, should the USPTO change RCE practice to achieve
the aims of fostering innovation, competition, and access to
information through robust and reliable patents? Specifically, should
the USPTO implement internal process changes once the number of RCEs
filed in an application reaches a certain threshold, such as
transferring the application to a new examiner or increasing the
scrutiny given in the examination of the application?
4. How, if at all, should the USPTO limit or change restriction,
divisional, rejoinder, and/or non-statutory double patenting practice
to achieve the aims of fostering innovation, competition, and access to
information through robust and reliable patents? Specifically, should
the USPTO:
a. allow for the examination of two or more distinct inventions in
the same proceeding in a manner similar to the practice authorized by
37 CFR 1.129(b), and, if so, consider an offset to patent term
adjustment in such cases?
b. revise the burden requirement before the examiner to impose a
restriction, and if so, how?
c. adjust the method by which an examiner appropriately establishes
burden for imposing a restriction requirement?
d. authorize applicants, in the case of a Markush group, to suggest
how the scope of the claim searched should be expanded if the elected
species is not found in an effort to present closely related inventions
for consideration together?
e. adopt a unity of invention requirement in place of the
restriction requirement?
f. revise the current practice of authorizing the filing of
divisional
[[Page 60134]]
applications in a series to require all divisional applications to be
filed within a set period of time after the restriction requirement is
made final and after any petition for review has been resolved?
g. make changes to the rejoinder practice after a final rejection
has been made, such as giving applicants a certain time period after
final rejection to provide appropriate claims for rejoinder?
h. limit or change non-statutory double patenting practice,
including requiring applicants seeking patents on obvious variations to
prior claims to stipulate that the claims are not patentably distinct
from the previously considered claims as a condition of filing a
terminal disclaimer to obviate the rejection; rejecting such claims as
not differing substantially from each other or as unduly multiplied
under 37 CFR 1.75; and/or requiring a common applicant or assignee to
include all patentably indistinct claims in a single application or to
explain a good and sufficient reason for retaining patentably
indistinct claims in two or more applications? See 37 CFR 1.78(f).
5. Please provide any other input on any of the proposals listed
under initiatives 2(a)-2(i) of the USPTO Letter, or any other
suggestions to achieve the aims of fostering innovation, competition,
and access to information through robust and reliable patents.
The USPTO also invites public input on the following questions,
which are presented verbatim (except for minor changes to internal
citation format) as they appeared in the June 8 letter from Members of
Congress. Any comments relating to fee setting will be taken into
consideration when the USPTO takes up fee setting more broadly.
6. Terminal disclaimers, allowed under 37 CFR 1.321(d), allow
applicants to receive patents that are obvious variations of each other
as long as the expiration dates match. How would eliminating terminal
disclaimers, thus prohibiting patents that are obvious variations of
each other, affect patent prosecution strategies and patent quality
overall?
7. Currently, patents tied together with a terminal disclaimer
after an obviousness-type double patent rejection must be separately
challenged on validity grounds. However, if these patents are obvious
variations of each other, should the filing of a terminal disclaimer be
an admission of obviousness? And if so, would these patents, when their
validity is challenged after issuance, stand and fall together?
8. Should the USPTO require a second look, by a team of patent
quality specialists, before issuing a continuation patent on a first
office action, with special emphasis on whether the claims satisfy the
written description, enablement, and definiteness requirements of 35
U.S.C. 112, and whether the claims do not cover the same invention as a
related application?
9. Should there be heightened examination requirements for
continuation patents, to ensure that minor modifications do not receive
second or subsequent patents?
10. The Patent Act requires the USPTO Director to set a ``time
during the pendency of the [original] application'' in which
continuation status may be filed. Currently there is no time limit
relative to the original application. Can the USPTO implement a rule
change that requires any continuation application to be filed within a
set timeframe of the ultimate parent application? What is the
appropriate timeframe after the applicant files an application before
the applicant should know what types of inventions the patent will
actually cover? Would a benchmark (e.g., within six months of the first
office action on the earliest application in a family) be preferable to
a specific deadline (e.g., one year after the earliest application in a
family)?
11. The USPTO has fee-setting authority and has set [fees] for
filing, search, and examination of applications below the actual costs
of carrying out these activities, while maintenance fees for issued
patents are above the actual cost. If the up-front fees reflected the
actual cost of obtaining a patent, would this increase patent quality
by discouraging filing of patents unlikely to succeed? Similarly, if
fees for continuation applications were increased above the initial
filing fees, would examination be more thorough and would applicants be
less likely to use continuations to cover, for example, inventions that
are obvious variations of each other?
Katherine K. Vidal,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2022-21481 Filed 10-3-22; 8:45 am]
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