October 2007 Summary

Mr. John Daniluck of the law firm Bingham McHale spoke to us about recent actual and potential changes to the patent system. As of 11/1/2007, there are two major changes to Title 37 - Code of Federal Regulations:
  1. In seeking patent protection for an invention, you are limited to filing one family of 3 patent applications (1 original application and 2 continuation applications) and 1 request for continued examination of an application, unless you make a "showing" of why you need more.
  2. Each of those applications is limited to 5 independent claims and 25 total claims (allowing you 15 independent claims and 75 total claims for the family of applications), unless you present an examination support document for all the claims of that application.
These changes could affect your strategy for best protecting your invention. You may want to consult a patent attorney/agent. More change may be on the way. On 9/7/2007 bill HR 1908 passed the House. If the bill passes the Senate, U.S. patent law will likely change from granting a patent to the "first inventor", to granting a patent to the "first inventor to file" a patent application. Learn more and contact your Senators to make sure they include your interests in their actions. "First inventor" has been a cornerstone of the small inventor's success. Although "first to file" will help harmonize U.S. patent law with the rest of the world (particularly advantageous to big corporations), it may hinder the small inventor's success. We thank Mr. Daniluck for helping us understand these significant changes. Note: On 10/31/2007 the U.S. District Court for the Eastern District Court of Virginia issued a Preliminary Injunction enjoining the USPTO from implementing the changes in the Claims and Continuations Final Rule. Therefore, the changes to the rules of practice in the Claims and Continuations Final Rule, including the October 10 clarifications, did not go into effect on November 1, 2007. USPTO employees are to continue processing and examining patent applications under the rules and procedures in effect 10/31/2007, until further notice.