Patent Reform in the United States

Contrary to the hopes (or fears) of many, the 109th Congress adjourned without enacting any of the changes (sometimes characterized as "reforms") in patent law proposed over the past two years. New legislation will therefore need to be introduced in the 110th Congress which convened on January 4, 2007, for revision to occur. Since the composition of the new Congress is controlled by the Democrats, and equally significantly the chairmanship of key committees has changed, it is difficult to predict whether there will now be movement on any of the issues included in the prior legislative packages.

On the administrative front, speeches made by senior officials of the United States Patent and Trademark Office (USPTO) indicate that it is keen to push forward with its proposals to reduce the number of claims to be initially examined by the examiner by requiring applicants to specify no more than ten claims for initial examination. The USPTO is also keen to reduce the burden on examiners in having to review large amounts of prior art submitted in information disclosure statements where the applicant does not explain the significance of the art. Otherwise, the USPTO seems to be moving cautiously in view of the widespread criticism of its proposed rule changes that were issued last summer on the number of claims and the filing of continuation applications and Requests for Continued Examination (RCEs).

We at Ladas & Parry filed objections to many of the proposals of the USPTO, which we felt, on the whole, to be ill-considered. Our objections to the proposed changes to the current Continuation and RCE practice are available on-line at the USPTO website.