CCIA Applauds New Patent Office Rules

File Under: News, 2007, CCIA

Aug 22, 2007

Washington, DC - The Computer & Communications Industry Association announced its support for the new rules issued today by U.S. Patent and Trademark Office (PTO) on patent applications.  “This shows two things,” said CCIA President Ed Black.  “It means that the PTO is serious about putting its house in order and getting its enormous backlog under control.  It also shows that the Office is willing to discipline some of the abuses that have spurred demands for reform”.

The PTO has a backlog of over a million pending applications.  The new rules address several practices that divert PTO’s resources away from tackling genuinely new inventions.  These practices, which have become increasingly common over the years, include filing of “continuations” (which allow applicants to restart the process over and over), applications with very large numbers of claims, and overlapping applications.

“Many people are amazed to learn that there is never a final “no” from the PTO,”
commented CCIA Senior Fellow Brian Kahin.  “You can keep refiling over and over.  This practice, unique to the U.S., has been widely criticized by scholars, especially because it enables applicants and their lawyers to tweak their applications to capture emerging industry standards and products.”

Curtailing continuation applications and burdens imposed by applicants is important because patent applications bring in less than they cost to examine and process.  The application process is subsidized by maintenance fees, which are paid over the term of the patent – a cross-subsidy which gives the office an incentive to grant patents in the expectation that future maintenance fees will augment its budget.

“The PTO is trying to undo some problems of its creation, such as the “help customers get patents” philosophy of the 1990s,” said Black, “but the present Undersecretary and his staff deserve credit for tackling some issues that they inherited.  They have had to confront fierce opposition from a patent bar that resents any limitations on their freedom to manipulate the application process.”