Recently, the United States Patent and Trademark Office proposed changes to the way prior art documents would be submitted, with a view to reduce Patent Office workload and shorten the time it takes to obtain a patent. These changes, however, could drastically affect the ability to secure strong patents unless competent counsel is employed.
The present rules require that patent applicants must submit copies of prior art, that is, other patents and publications disclosing information pertinent to the invention being patented. There is no limit on the number of such documents that can be submitted to the Patent Office, and there is no duty to explain what these documents teach. This enables the patent applicant to submit twenty, thirty, or even one hundred or more documents without having to comment on what these documents teach, and, under the present rules, the Patent Examiner must consider them all before granting the patent.
If the proposed rule changes become law, patent applicants can no more submit unlimited number of documents. The submission would be limited to twenty documents. If the inventor or his lawyer submits more than twenty documents, he must explain to the Examiner, in writing, identifying those parts of the documents that pertain to the invention he is attempting to patent.
The obligation of the patent applicant does not stop there. If the patent applicant comes to know of new documents after the Patent Examiner has completed his examination, then he needs to submit that document to the Patent Office and provide, in addition to an explanation, why this new document is being submitted and how this document teaches more than documents previously disclosed to the Patent Office.
In addition, under the new rules, there is a duty to update the disclosure and explanation continues until the patent application matures into a patent. Every time the patent applicant attempts to redefine his invention, he must point out how each of the documents submitted so far do not disclose the redefined invention.
The immediate effect of the new rules would be to increase the attorney fees for securing a patent, as the rules would require the patent attorney to review each of the documents thoroughly before submitting it to the Patent Office. More importantly, every statement or explanation provided to the Patent Office could constitute potential ammunition that a competitor could use defeat the strength of the patent.
Even more importantly, if the patent applicant selected and disclosed twenty documents selected from among his collection of many documents, the competitor might accuse that the patentee deliberately and intentionally withheld an important document. The competitor would argue that the patent was procured fraudulently, and therefore, the patent should be thrown out.
The proposed rules are complex and have heightened the duty of patent applicants for disclosing prior art documents. Needless to say that competent counsel is vital to insure the strength and vitality of the patent.
The European Patent Office
Recently, the United States Patent and Trademark Office proposed changes to the way patents will be processed with a view to reduce patent Examiner's work load. These changes could drastically limit the company's ability to secure strong patents. Under the current practice, if the company is not happy with the Examiner's refusal to grant a patent, the company can file one, two, or more continuation patent applications so that additional exchanges can take place between the applicant and the Examiner.
If the proposed rule changes are made permanent, and it is widely expected they will be, the patent applicant will have opportunity to file only one continuation application, which means only a limited number of exchanges are possible. If such exchanges do not result in patent grant, the applicant may have to narrow the scope of invention by further distancing the invention from a known drug formulation; or in some cases, lose its patent entirely.
When the patent applicant tries to amend or narrow the application, he may face several legal hurdles. For example, the Examiner may refuse saying that the originally filed application does not contain the language that applicant wants to use for amending the application. To avoid such an unfavorable result, the patent application must have been prepared in such a way that the Examiner cannot refuse the amendment.
To illustrate this, consider the following situation where the applicant describes his invention which is a drug formulation containing a drug in an amount from 1 to 50%. The Examiner rejects the application since a formulation containing 7% drug is known. If the patent application had disclosed only 1 to 50% drug, the inventor cannot amend the application to say 8 to 50% to avoid the known formulation. On the other hand, if a cascade of fall back positions had been built into the application at the time of patent filing, such as 5 to 30%, 10 to 20%, and 12 to 15%, then he can amend the application by defining 10 to 30% or 10 to 20% drug so as to cover his invention which may contain 11% drug. In the absence of a fall back position, the applicant will have to forego the entire patent.
A patent application is a serious legal document and should be prepared with great care. This requires knowledge of the industry, for example, what has been done before and what the competition might try to get around the patent. In the wake of the proposed rules, the importance of writing a good patent application cannot be overemphasized.
