Boston Intellectual Property Law Association Response to USPTO Request for Comments Regarding Initiatives to Ensure the Robustness and Reliability of Patent Rights

Jonathan Roses was the lead author on behalf of the Boston Intellectual Property Law Association (BIPLA) of a January 2023 Response to USPTO Request for Comments regarding proposed initiatives to ensure the robustness and reliability of patent rights in the US that have recently become the focus of inquiries and actions in both the Executive and Legislative branches of the US government. While the Response supported the USPTO’s stated goals of fostering innovation, competition, and access to information through robust and reliable patents, it raised a number of concerns with many of the proposals discussed in the Request.  In particular, the Response explained that implementation of such proposals, such as requiring explanation or identification of support for each claim or claim limitation in the written description and/or every prior-filed application for which the benefit of priority is sought on application filing or when making claim amendments, would place an undue and unjustified burden on all patent applications, but with a disproportionate effect on applicants of more limited means, whose contributions to the technological landscape and the American economy are of critical importance. In addition, the Response supported some USPTO proposals, such as transferring applications to a new examiner after a set number of Requests for Continued Examination had been filed, but opposed the implementation of suggestions for “increasing the scrutiny” of examination of any application.

The Response also supported proposals to allow for examination of multiple sets of claims in a single application and potentially adopting a unity of invention standard for Restriction Requirements, but opposed any resulting “offset” to Patent Term Adjustment in such circumstances.  However, the Response opposed proposals to impose time or other limitations on the filing of divisional or other continuing applications, to limit or change non-statutory (obviousness-type) double patenting (“OTDP”) practice because these proposals would have a negative impact on patent applicants and would do nothing to address the policy concern that prompted creation of the OTDP regime in the first place—preventing unjustified time-wise extensions of patent term for obvious variants of earlier-expiring claims.

Finally, the Response opposed the proposals in six questions presented essentially verbatim as they appeared in the June 8, 2022 letter to the USPTO from six members of Congress, pointing out incomplete premises upon which these questions were based, and detailing unintended consequences and harm to patent applicants that would ensue from implementing any of these proposals, such as the elimination of Terminal Disclaimers (“TDs”), treating TDs as admissions of obviousness, requiring a “second look” or “heightened examination requirements” for continuing applications, applying time limitations on the filing of continuation applications, and increasing fees for initial and/or continuation applications.