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The Patent Office's Proposed Rules For Disclosing Prior Art Increase Patent App

By Xavier Pillai

Chemical and pharmaceutical companies protect their huge investment in research and development and the future of the companies by securing patents on their inventions. Success or failure of the company often depends on the strength of the patent in its ability to resist competition.

Recently, the United States Patent and Trademark Office proposed changes to the way prior art documents would be submitted, with a view to reduce Patent Office Examiner�s workload and shorten the time it takes to obtain a patent. These changes, however, could drastically limit the company�s ability to secure strong patents unless competent counsel is employed.

The present rules require that patent applicants must submit copies of prior art, that is, other patents and publications disclosing information pertinent to the invention being patented. There is no limit on the number of such documents that can be submitted to the Patent Office, and there is no duty to explain what these documents teach. This enables the patent applicant to submit twenty, thirty, or even one hundred or more documents without having to comment on what these documents teach, and, under the present rules, the Patent Examiner must consider them all before granting the patent.

If the proposed rule changes become law, patent applicants can no more submit unlimited number of documents. The submission would be limited to twenty documents. If the inventor or his lawyer submits more than twenty documents, he must explain to the Examiner, in writing, identifying those parts of the documents that pertain to the invention he is attempting to patent.

The obligation of the patent applicant does not stop there. If the patent applicant comes to know of new documents after the Patent Examiner has completed his examination, then he needs to submit that document to the Patent Office and provide, in addition to an explanation, why this new document is being submitted and how this document teaches more than documents previously disclosed to the Patent Office.

In addition, under the new rules, there is a duty to update the disclosure and explanation continues until the patent application matures into a patent. Every time the patent applicant attempts to redefine his invention, he must point out how each of the documents submitted so far do not disclose the redefined invention.

The immediate effect of the new rules would be to increase the attorney�s fees for securing a patent, as the rules would require the patent attorney to review each of the documents thoroughly before submitting it to the Patent Office. More importantly, every statement or explanation provided to the Patent Office could constitute potential ammunition that a competitor could use defeat the strength of the patent.

Even more importantly, if the patent applicant selected and disclosed twenty documents selected from among his collection of many documents, the competitor might accuse that the patentee deliberately and intentionally withheld an important document. The competitor would argue that the patent was procured fraudulently, and therefore, the patent should be thrown out.

The proposed rules are complex and have heightened the duty of patent applicants for disclosing prior art documents. Needless to say that competent counsel is vital to insure the strength and vitality of the patent.

About the Author

Dr. Xavier Pillai is a registered patent attorney and partner in the law firm of Leydig, Voit & Mayer, Ltd. in Chicago, Illinois. He specializes in patents relating to chemicals, phamrmaceuticals, and biotechology. See http://www.leydig.com

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