Welcome to 2009!
For the first post of the New Year, I thought I’d break tradition a bit. Instead of looking forward and listing all the things I’m hoping for in 2009, I’ve decided to look backward and commemorate an anniversary.
Three years ago this week (January 3rd), the Patent and Trademark Office published the controversial continuation and claim limit rules (read the original Promote the Progress post here).
Three years! Can you believe it?
Since that date, the patent community has lived under an inescapable cloud of doubt as to whether the right to claim a properly disclosed invention would be severely limited by agency rule-making. While we’ll soon have an answer from the Court of Appeals for the Federal Circuit regarding the legality of the continuation rules, the “final” answer on the issue of limiting the right to claim an invention – independent from these rules - might not be known for some time. The philosophy and clout of the next Director, the political climate that develops under the new Administration, and the willingness of the 111th Congress to consider the issue under the patent reform banner will certainly influence the issue.
But this is an anniversary, so let’s reflect a bit. Even though these three-year old rules have yet to become law, their enormous impact on the patent community is undeniable. Most owners of large portfolios of applications made an effort to review their applications to determine if any continuation filings should be made ahead of the original Halloween deadline. These efforts required a significant investment of time and money that, if the rules die in the end, might have been completely unnecessary.
And the Office, no doubt, has spent a small fortune defending the rules.
More importantly, though, the impact of the proposed rules goes way beyond time and money. Over these past three years, I’ve had the opportunity to talk to practitioners and other patent stakeholders around the country and from all sections of the community (private practice, in-house, small company, large company). One thing is clear – the rules have contributed significantly to the deterioration of the sense of partnership between stakeholders and the Office that seemed to exist just a few short years ago.
Happy Anniversary!
Related posts:
- The curious case of the new rules timeline
- Two excellent summaries of Tafas v. Doll
- Cross your fingers – Bush administration set to issue twenty ‘highly contentious’ rules in final weeks
- The USPTO Practitioner Maintenance Fee – Back on the table?
- The best choice for Under Secretary for IP/Director of the Patent and Trademark Office – a fresh face with more than the right resume
Tags: claim limit rules, continuation rules, USPTO