A Simple Solution for the Patent Office
Recently I wrote about the new rules the U.S. Patent and Trademark Office (PTO) wants to force on inventors. The rules limit the number of claims which may be present in a case and limit the ability to file continuation applications. The PTO's theory is that this will help reduce the backlog in examining patent applications.
There is a simple suggestion which would have a much greater impact on the backlog - allow applicants to pay an additional fee instead of filing divisional applications. It is not uncommon for the patent examiner to enter a restriction requirement on a case with even a modest number of claims. I have cases with less than 25 claims which are restricted three or four ways even though the claims are closely related. At some point in the process I will file two or more divisional applications. The first application (A) will get examined. Many months (years) later the second and third applications (B & C) will get examined. Often this will be with the same examiner or one from the same art unit.
The problem is that whoever examines applications B and C must get up to speed on those applications when it is their turn to be examined. This will take some time even if it is the same examiner, as he or she may have examined 50 to 100 cases since application A and is unlikely to remember all of the details of the application and the cited art. When done by a different examiner, the examiner must read the specification and the art. The different examiner also raises the very real concern that the examiner views the claim terms differently than the original examiner. This can lead to situations in which the PTO is applying the same art differently against the same claim element in two or more of the cases.
The two applications just add to the "backlog" and provide less effecient examination. A better approach would be to require the payment of an additional fee - as is done in some foreign jurisdictions - to allow the examination of all of the claims to continue. The examiner will be able to process the two or more groups of claims faster than the PTO will be able to process multiple applications. The examination will also be more consistent. If this approach were coupled with a substantial attempt by the PTO to avoid junk office actions (you know - five independent claims and twenty dependents rejected under 103 in a five sentence paragraph with no explanation of where there elements are found in the art or why one of skill in the art would combine the three references), the PTO would have less of a backlog. Many fewer divisionals would be filed (many times the present number of third continuations) and the examiner and patent attorney would more quickly move to either allowance or appeal.
Just a thought.
There is a simple suggestion which would have a much greater impact on the backlog - allow applicants to pay an additional fee instead of filing divisional applications. It is not uncommon for the patent examiner to enter a restriction requirement on a case with even a modest number of claims. I have cases with less than 25 claims which are restricted three or four ways even though the claims are closely related. At some point in the process I will file two or more divisional applications. The first application (A) will get examined. Many months (years) later the second and third applications (B & C) will get examined. Often this will be with the same examiner or one from the same art unit.
The problem is that whoever examines applications B and C must get up to speed on those applications when it is their turn to be examined. This will take some time even if it is the same examiner, as he or she may have examined 50 to 100 cases since application A and is unlikely to remember all of the details of the application and the cited art. When done by a different examiner, the examiner must read the specification and the art. The different examiner also raises the very real concern that the examiner views the claim terms differently than the original examiner. This can lead to situations in which the PTO is applying the same art differently against the same claim element in two or more of the cases.
The two applications just add to the "backlog" and provide less effecient examination. A better approach would be to require the payment of an additional fee - as is done in some foreign jurisdictions - to allow the examination of all of the claims to continue. The examiner will be able to process the two or more groups of claims faster than the PTO will be able to process multiple applications. The examination will also be more consistent. If this approach were coupled with a substantial attempt by the PTO to avoid junk office actions (you know - five independent claims and twenty dependents rejected under 103 in a five sentence paragraph with no explanation of where there elements are found in the art or why one of skill in the art would combine the three references), the PTO would have less of a backlog. Many fewer divisionals would be filed (many times the present number of third continuations) and the examiner and patent attorney would more quickly move to either allowance or appeal.
Just a thought.
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