2006 kicks off with a bang - Patent and Trademark Office proposes major shift in patent examination policy

This morning, the Patent and Trademark Office announced two sets of proposed rules that represent a major shift in patent examination policy in the United States. You can view and/or download .pdf copies of the proposed rule changes here and here

In short, the Office is proposing that applicants identify the most important claims to the invention. From the second Notice:

“The Office is proposing to focus its initial examination on the claims identified by the applicant as the representative claims. The representative claims will be all of the independent claims and only the dependent claims that are expressly designated by the applicant for initial examination. The Office is also proposing that if an application contains more than ten independent claims…or if the applicant wishes to have initial examination of more than ten representative claims, then the applicant must provide an examination support document that covers all of the independent claims and the dependent claims designated for initial examination. The changes proposed in this notice will allow the Office to do a better, more thorough and reliable examination since the number of claims receiving initial examination will be at a level which can be more effectively and efficiently evaluated by the examiner.” (emphasis added)

Major changes are also proposed for continuation practice:

“…the Office is proposing…to require that second or subsequent continued examination filings, whether a continuation application, a continuation-in-part application, or a request for continued examination, be supported by a showing as to why the amendment, argument, or evidence presented could not have been previously submitted. It is expected that these rules will make the exchange between examiners and applicants more efficient and effective.” (emphasis added)

I’ll post more on the proposed rules in the near future.

Written comments on both of the proposed rule changes must be received on or before May 3, 2006.