In August 2007 the United States Patent and Trademark Office (USPTO) issued a rules package intended to limit the number of patent claims in a single patent application to 25 (including a maximum of 5 independent claims) and also to restrict the possibility of filing what are known as “continuation applications”.
The main aim of the proposed rule change was to reduce the amount of work involved for the Patent Office, e.g. in examining applications with multiple patent claims and, as a consequence of this, to give the USPTO an opportunity to catch up on the backlog of unexamined applications.
However, just one day before the new regulations were due to enter into force, the process was halted by a federal court following a complaint filed against the USPTO by the pharmaceutical giant GlaxoSmithKline. The USPTO then appealed against the decision in a higher instance, the Federal Circuit.
The situation today
The Federal Circuit’s decision of 20 March 2009 amounts to only a partial restriction of the USPTO’s prerogative to introduce the new rules. Specifically, the court finds that the USPTO has no legal authority to limit the number of continuation applications, which is very good news for the life science sector in particular. As many as 70–80% of the patents granted to certain biotechnology companies are based on this kind of application.
Nevertheless, the court concedes that the USPTO does have the right to limit the number of requests for continued examination (RCEs) and to impose a maximum limit of 25 patent claims.
The matter will now be referred back to the district court for further investigation. For example, a decision must be reached on whether the proposed new regulations exceed the powers of the patent office in any other way.
How the USPTO will subsequently set to work to introduce the new regulations remains to be seen. It is worth recalling just how much has changed since the proposal was initially submitted; the economic landscape is totally different, there is a new president in the White House, and there are signs that the number of applications filed with the USPTO is falling. This in itself may be sufficient to sweep away the problems that the new regulations were intended to solve.
The news that the USPTO does not have the authority to limit the number of continuation applications is welcome. A possible limitation of the number of RCEs is less significant, since a continuation can always be filed instead of an RCE. And, anyway, RCEs may be filed if the applicant can cite special reasons for doing so.
On the other hand, if the number of patent claims is limited to a maximum of 25, this will likely have a greater effect – especially among life science and pharmaceutical companies, which often have many claim categories and, by extension, many patent claims. It will, of course, still be possible to file more than 25 patent claims, but only on condition that an examination support document (ESD) is included with the application. The demands made on the ESD are, however, extremely high: in effect, they require applicants themselves to do the work of the patent examiner. Presumably it will therefore be both cheaper and simpler for applicants to file one or more continuation applications rather than an ESD.
Similar and dissimilar developments in Europe
It is interesting to note that, in many ways, developments in European patent legislation are mirroring what is happening in the USA. However, instead of setting specific limits, the Europeans have opted to use fees as a means of controlling the number of patent claims. Extremely high fees were introduced around 12 months ago for applications containing more than 15 patent claims. With effect from 1 April 2009 fees for applications with more than 50 patent claims have been increased even further, and a new excess-page fee has been introduced for page 36 onwards in applications of more than 35 pages.
Like in the US, there has been much discussion about introducing limits on filing divisional patent applications in Europe due to an asserted misuse of the system, a phenomenon referred to as “abusive” divisional applications. As a result, the European Patent Office (EPO) has very recently, on March 26, 2009, decided on restricting an applicant’s possibilities to file divisional application. You can read more about the EPO’s decision on my colleague Eva Carlsson’s blog post.
This is in contrast to the latest developments in the US, where it has been established that the possibilities to file continuation applications (corresponding to divisional applications) may not be limited.
Inga-Lill Andersson, European Patent Attorney