Rules of Woe Patent prosecution becomes “a hornet’s nest” because of new PTO rules Steven Moore of the Stamford, Connecticut office of Kelley Drye & Warren is the patent lawyer who stepped up to the plate and is representing Connecticut inventor Triantafyllos Tafas in his suit against the Patent and Trademark Office aiming to stop the new PTO rules on continuations. Those rules, announced in August and to be implemented on November 1, essentially limit the number of times patent applicants can amend their application and expand its scope. Moore says it’s not just inventors and small companies that will suffer if the new patent filing rules go into effect?patent prosecutors are going to be just as unhappy. The new rules make patent prosecution “a hornet’s nest for malpractice,” he says. “There’s just enormous traps all over the place for lawyers to trip and fall.”
One rule that will clearly give prosecutors trouble is the requirement that they provide a so-called examination support document, or ESD, when they include more than five independent claims and 25 dependent claims in a single application. Patent claims in an application describe and explain the scope of an innovation, and many patent attorneys have thought it wise to write as many claims as they think necessary to cover all the possible permutations. The new rules will penalize those who file more than the set limits by requiring them to help examiners search for prior art. The patent attorney will be required to search all relevant U.S. patents, U.S. patent publications, foreign patents and patent applications, and non-patent related literature, according to Moore. “I think that covers every conceivable relevant document on earth,” he adds. Applicants, including their attorneys and patent agents, are required to certify that they’ve done an exhaustive search, opening them up for possible malpractice suits and charges of inequitable conduct during litigation if they fail to unearth relevant documents.
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