USPTO Publishes Measures to Improve Patent Quality
Claims and Continuations Rules will improve effectiveness and efficiency of patent examination

The United States Patent and Trademark Office (USPTO) has published in the Federal Register new rules that will allow the agency to continue to make the patent examination process more effective and efficient by encouraging applicants to use greater precision in describing the scope of their inventions.  The new rules will be effective on November 1, 2007.

“Patent quality is the shared responsibility of applicants and the USPTO,” noted Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office.  “Higher quality applications result in a more effective examination.  These rules better focus examination and will bring closure to the examination process more quickly, while ensuring quality and maintaining the right balance between flexibility for applicants and the rights of the public. The U.S. patent system plays a tremendous role in motivating innovation, and these changes to examining patent applications will help ensure that America remains on the leading edge in the knowledge driven global economy.”

The new rules have been modified, relative to the rules that were originally proposed early last year, in response to the extensive comments the USPTO received from the public.  Under the new rules, applicants may file two new continuing applications and one request for continued examination as a matter of right.  Also, under the new rules, each application may contain up to 25 claims, with no more than five of them independent claims, without any additional effort on the part of the applicant.  Beyond these thresholds, however, the new rules require applicants to show why an additional continuation is necessary or to provide supplementary information relevant to the claimed invention to present additional claims.

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