Tuesday, October 30, 2007

Sen. Schummer Asks PTO to Delay Implementation of Continuation Rules

Gene Quinn from the PLI Patent Blog broke this recent development in the continuation rules saga - Senator Charles Schummer (D-NY), who is a member of the Judiciary Committee, sent Undersecretary of Commerce for Intellectual Property Jon Dudas a letter raising concerns about the claims and continuations rules that are to go into effect on November 1, 2007.

From the letter:

[C]oncerns have been raised as to the impact this proposed rule will have on certain types of inventions. In addition, there are questions as to whether the PTO has the necessary authority to limit the number of continuation applications. More time would allow all interested parties to analyze these questions further.

The proposed rule regarding examination of claims raises additional concerns. It would require the filing of an extensive examination support document whenever an applicant needs to file more than ten representative claims to accurately describe its invention. Examination support documents can be very costly, thereby requiring an inventor to choose between significant costs and additional claims in the patent (which may be appropriate to accurately define and describe an invention). The proposed rule may thus serve to undermine core principles of patenting process, full candor and disclosure to the PTO and the public.

As you know, there is a pending lawsuit in the Eastern District of Virginia seeking an injunction of the new rules. This court case also cautions against making the proposed rules final at this time. A delay would allow the courts to assess the merits of the pending suit. Finally, Congress is currently considering a patent reform bill in which these issues may be addressed.

I appreciate the PTO's goal to create the most efficient and effective process to ensure both continued innovation and protection for the research and development efforts of patentholders. The proposed rules, however, may have the unintended consequences of stifling such innovation, and I urge you to consider delaying their implementation. Please do not hesitate to contact me with any questions. Thank you very much for your time and close attention.

View the letter here (link)

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