Order Code RL34422
U.S. Patent and Trademark Office Reforms:
Regulatory Impacts Upon
Innovation and Competition
March 21, 2008
John R. Thomas
Visiting Scholar
Resources, Science and Industry Division

U.S. Patent and Trademark Office Reforms:
Regulatory Impacts Upon Innovation and Competition
Summary
The interest of the 110th Congress in the patent system has been evidenced by
the advancement of substantial reform bills in both the House and Senate. Alongside
these congressional proposals, the United States Patent and Trademark Office
(USPTO) has engaged in a significant rulemaking effort in recent years. This process
culminated in new rules that would make several significant changes to the patent
acquisition process.
First, the rules would limit the number of “continued applications” that could
be filed, absent a petition and showing by the patent applicant of the need for such
applications. Stated generally, a continued application is one that has been re-filed
at the USPTO, commonly following an examiner’s rejection. The USPTO has
justified this limitation on the basis that the increasing number of continued
examination filings is hampering its ability to review new applications.
Second, the rules would limit the number of “claims” that can be filed in a
particular patent application, unless the applicant supplies the USPTO with an
“Examination Support Document” in furtherance of that application. The USPTO
asserts that these rules would lead to a more effective examination process.
Critics of the new rules contend that they will negatively impact the ability of
innovators to obtain effective proprietary rights. Legal challenges to the rules
resulted in the October 31, 2007 decision in Tafas v. Dudas. There, the U.S. District
Court for the Eastern District of Virginia issued a preliminary injunction against the
USPTO. Although this ruling is temporary in nature, its immediate impact is that the
USPTO may not implement its rules until the court makes a final determination. The
Tafas v. Dudas litigation is ongoing at the time of the publication of this report.
In addition, the USPTO has proposed reforms that would impose additional
applicant disclosure obligations with respect to “Information Disclosure Statements”
filed in support of a particular patent application. The USPTO has not yet taken
action concerning this rule.
Should Congress conclude that the current situation with respect to claims and
continued application practice at the USPTO is satisfactory, then no action need be
taken. If Congress wishes to intervene, however, a number of options present
themselves. In the 110th Congress, H.R. 1908 would expressly provide the USPTO
with regulatory authority to specify the circumstances under which a patent applicant
may file a continued application. Other possibilities include providing the USPTO
with substantive rulemaking authority and more specific reforms directed to the
relevant substantive provisions of the Patent Act.

Contents
Patents and Innovation Policy . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
The Mechanics of the Patent System . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
Innovation Policy . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
Continuing Application Practice Reform . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
Continued Application Practice . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
The USPTO Continued Application Rules . . . . . . . . . . . . . . . . . . . . . . . . . . 8
Patent Claiming Practice Reform . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10
Patent Claiming Practice . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10
The USPTO Claim Rules . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13
The Tafas v. Dudas Litigation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16
IDS Practice Reform . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18
Congressional Issues and Alternatives . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19
Patents and Innovation Policy . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
The Mechanics of the Patent System . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3
Innovation Policy . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
Continued Application Practice Reform . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
Continued Application Practice . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 6
The USPTO Continued Application Rules . . . . . . . . . . . . . . . . . . . . . . . . . . 8
Patent Claiming Practice Reform . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11
Patent Claiming Practice . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11
The USPTO Claim Rules . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13
The Tafas v. Dudas Litigation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 16
IDS Practice Reform . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18
Congressional Issues and Alternatives . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 19

U.S. Patent and Trademark Office Reforms:
Regulatory Impacts Upon
Innovation and Competition
Legislative interest in the patent system has been evidenced by the advancement
of substantial reform bills in both houses of the 110th Congress.1 Some of the
reforms currently under consideration by Congress would impact the United States
Patent and Trademark Office (USPTO). Among these proposals are the adoption of
patent opposition proceedings,2 changes to the rules governing the publication of
pending patent applications,3 and third party submission of information to the
USPTO that may be pertinent to the decisions whether to allow a patent to issue or
not.4
Alongside these congressional proposals, the USPTO itself has engaged in a
substantial rulemaking effort in recent years. This process culminated in new rules
that would make several significant changes to the patent acquisition process. First,
the rules would limit the number of “claims” that can be filed in a particular patent
application, unless the applicant supplies the USPTO with an “Examination Support
Document” in furtherance of that application.5 Second, the rules would limit the
number of “continued applications” that could be filed, absent a petition and showing
by the patent applicant of the need for such applications.6 In addition, the USPTO
has proposed reforms that would impose additional applicant disclosure obligations
with respect to “Information Disclosure Statements” filed in support of a particular
patent application.7
1See CRS Report for Congress, “Patent Reform in the 110th Congress: Innovation Issues,”
by John R. Thomas & Wendy H. Schacht.
2H.R. 1908 at § 6; S. 1145 at § 5.
3H.R. 1908 at § 9; S. 1145 at § 7.
4H.R. 1908 at § 9; S. 1145 at § 7.
5See Department of Commerce, Patent and Trademark Office, Final Rule “Change to
Practice for Continued Examination Filings, Patent Applications Containing Patentably
Indistinct Claims, and Examination of Claims in Patent Applications,” 72 Federal
Register
(August 21, 2007), 46716 (hereinafter “USPTO Rules”).
6Id.
7Department of Commerce, USPTO, “Changes to Information Disclosure Statement
Requirements and Other Related Matters,” 71 Federal Register 38,808 (July 10, 2006)
(hereinafter “IDS Notice”). In addition to the reforms with respect to claiming, continued
applications, and IDS practice, the USPTO has also proposed changes to the rules governing
claims that define alternative inventions, see Department of Commerce, USPTO,
(continued...)

CRS-2
The USPTO rules concerning claims and continued applications are
controversial. Some patent professionals are concerned that the rules would make
the process of patent acquisition more costly, impede the ability of innovators to
protect their inventions adequately, and ultimately harm innovation. Some have also
opined that the rules are inconsistent with the provisions of the governing patent
legislation, the Patent Act of 1952. On the other hand, other observers believe that
current claiming and continued application practices are subject to abuses that can
potentially place undue burdens upon the USPTO during its examination tasks, be
harmful to competitive industry, and at times work against the public interest.8 These
observers favor reforms that would limit what they see as applicant abuses of the
current system.
Criticisms of the USPTO rules have led to legal challenges before the U.S.
District Court for the Eastern District of Virginia. The result was the October 31,
2007, order in Tafas v. Dudas, that issued a preliminary injunction against the
USPTO.9 Although this ruling is temporary in nature, its immediate impact is that
the USPTO may not implement its rules until the court makes a final determination.
The Tafas v. Dudas litigation is ongoing at the time of the publication of this report.
Congressional response to the claims and continuing application rules has thus
far been limited. In the 110th Congress, H.R. 1908 would expressly provide the
USPTO with regulatory authority to specify the circumstances under which a patent
applicant may file a continuing application.10 That bill passed the House on
September 7, 2007, as the “Patent Reform Act of 2007.” No other pending
legislation — including S. 1145, the Senate legislation also titled the “Patent Reform
Act of 2007” — addresses the new USPTO rules.
This report reviews the USPTO rules that would restrict claims and continuing
applications. It begins by offering a summary of the patent system and the role of
patents in innovation policy. The context, details, and legal challenges to the new
USPTO rules are then explained. The report then offers both the policy justifications
for the new rules, as well as concerns that patent professionals and other observers
have expressed over their effectiveness and impact. The report closes by identifying
congressional issues and options.
7(...continued)
“Examination of Patent Applications That Include Claims Containing Alternative
Language,” 72 Federal Register 44,992 (August 10, 2007), and has also provided for
accelerated examination in certain circumstances, see Department of Commerce, USPTO,
“Changes to Practice for Petitions in Patent Applications to Make Special and for
Accelerated Examination,” 71 Federal Register 36,323 (June 26, 2006).
8See Mark A. Lemley & Kimberly A. Moore, “Ending Abuse of Patent Continuations,” 84
Boston University Law Review (2004), 63.
9The district court’s opinion resulted from two separate lawsuits, Tafas v. Dudas, Case No.
1:07cv846 (E.D. Va. 2007), and Smithkline Beecham Corp. v. Dudas, Case No. 1:07cv1008
(E.D. Va. 2007), that were consolidated.
10H.R. 1908, § 14.

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Patents and Innovation Policy
The Mechanics of the Patent System
The U.S. Constitution provides Congress with the power “To promote the
Progress of Science and useful Arts, by securing for limited Times to . . . Inventors
the exclusive Right to their . . . Discoveries . . . .”11 In accordance with the Patent
Act of 1952 (the “Patent Act”),12 an inventor may seek the grant of a patent by
preparing and submitting an application to the USPTO. USPTO officials known as
examiners then determine whether the invention disclosed in the application merits
the award of a patent.13
In determining whether to approve a patent application, a USPTO examiner will
consider whether the submitted application fully discloses and distinctly claims the
invention.14 In particular, the application must enable persons skilled in the art to
make and use the invention without undue experimentation.15 In addition, the
application must disclose the “best mode,” or preferred way, that the applicant knows
to practice the invention.16
The examiner will also determine whether the invention itself fulfills certain
substantive standards set by the patent statute. To be patentable, an invention must
meet four primary requirements. First, the invention must fall within at least one
category of patentable subject matter. According to the Patent Act, an invention
which is a “process, machine, manufacture, or composition of matter” is eligible for
patenting.17 Second, the invention must be useful, a requirement that is satisfied if
the invention is operable and provides a tangible benefit.18
Third, the invention must be novel, or different, from subject matter disclosed
by an earlier patent, publication, or other state-of-the-art knowledge.19 Finally, an
invention is not patentable if “the subject matter as a whole would have been obvious
at the time the invention was made to a person having ordinary skill in the art to
which said subject matter pertains.”20 This requirement of “nonobviousness”
11U.S. Constitution, Article I, Section 8, Clause 8.
12P.L. 82-593, 66 Stat. 792 (codified at Title 35 of the United States Code).
1335 U.S.C. § 131 (2006).
1435 U.S.C. § 112 (2006).
15See Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d 1052, 1070-71 (Fed. Cir. 2005).
16See High Concrete Structures, Inc. v. New Enterprise Stone and Lime Co., 377 F.3d 1379,
1382 (Fed. Cir. 2004).
1735 U.S.C. § 101 (2006).
18Id. See In re Fischer, 421 F.3d 1365, 1371 (Fed. Cir. 2005).
1935 U.S.C. § 102 (2006).
2035 U.S.C. § 103(a) (2006).

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prevents the issuance of patents claiming subject matter that a skilled artisan would
have been able to implement in view of the knowledge of the state of the art.21
If the USPTO allows the patent to issue, its owner obtains the right to exclude
others from making, using, selling, offering to sell or importing into the United States
the patented invention.22 Those who engage in those acts without the permission of
the patentee during the term of the patent can be held liable for infringement.
Adjudicated infringers may be enjoined from further infringing acts.23 The patent
statute also provides for an award of damages “adequate to compensate for the
infringement, but in no event less than a reasonable royalty for the use made of the
invention by the infringer.”24
The maximum term of patent protection is ordinarily set at 20 years from the
date the application is filed.25 At the end of that period, others may employ that
invention without regard to the expired patent.
Patent rights do not enforce themselves. Patent proprietors who wish to compel
others to respect their rights must commence enforcement proceedings, which most
commonly consist of litigation in the federal courts. Although issued patents enjoy
a presumption of validity, accused infringers may assert that a patent is invalid or
unenforceable on a number of grounds. The Court of Appeals for the Federal Circuit
(Federal Circuit) possesses nationwide jurisdiction over most patent appeals from the
district courts.26 The Supreme Court enjoys discretionary authority to review cases
decided by the Federal Circuit.27
Innovation Policy
Patent ownership is perceived to encourage innovation, which in turn leads to
industry advancement and economic growth. One characteristic of the new
knowledge that results from innovation is that it is a “public good.” Public goods are
non-rivalrous and non-excludable, for use of the good by one individual does not
limit the amount of the good available for consumption by others, and no one can be
prevented from using that good.28
21See KSR International Co. v. Teleflex Inc., 127 S.Ct. 1727 (2007).
2235 U.S.C. § 271(a) (2006).
2335 U.S.C. § 283 (2006). See eBay Inc. v. MercExchange L.L.C., 126 S.Ct. 1837 (2006).
2435 U.S.C. § 284 (2006).
2535 U.S.C. § 154(a)(2) (2006). Although the patent term is based upon the filing date, the
patentee obtains no enforceable legal rights until the USPTO allows the application to issue
as a granted patent. A number of Patent Act provisions may modify the basic 20-year term,
including examination delays at the USPTO and delays in obtaining marketing approval for
the patented invention from other federal agencies.
2628 U.S.C. § 1295(a)(1) (2006).
2728 U.S.C. § 1254(1) (2006).
28See Dotan Oliar, “Making Sense of the Intellectual Property Clause: Promotion of Progress
(continued...)

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The lack of excludability in particular is believed to result in an environment
where too few inventions would be made. Absent a patent system, “free riders”
could easily duplicate and exploit the inventions of others. Further, because they
incurred no cost to develop and perfect the technology involved, copyists could
undersell the original inventor. Aware that they would be unable to capitalize upon
their inventions, individuals might be discouraged from innovating in the first
instance. The patent system corrects this market failure problem by providing
innovators with an exclusive interest in their inventions, thereby allowing them to
capture their marketplace value.29
The patent system purportedly serves other goals as well. The patent law
encourages the disclosure of new products and processes, for each issued patent must
include a description sufficient to enable skilled artisans to practice the patented
invention.30 At the close of the patent’s twenty-year term,31 others may employ the
claimed invention without regard to the expired patent. In this manner the patent
system ultimately contributes to the growth of the public domain.
Even during their term, issued patents may encourage others to “invent around”
the patentee’s proprietary interest. A patentee may point the way to new products,
markets, economies of production and even entire industries. Others can build upon
the disclosure of a patent instrument to produce their own technologies that fall
outside the exclusive rights associated with the patent.32
The regime of patents has also been identified as a facilitator of markets.
Absent patent rights, an inventor may have scant tangible assets to sell or license. In
addition, an inventor might otherwise be unable to police the conduct of a contracting
party. Any technology or know-how that has been disclosed to a prospective licensee
might be appropriated without compensation to the inventor. The availability of
patent protection decreases the ability of contracting parties to engage in
opportunistic behavior. By lowering such transaction costs, the patent system may
make transactions concerning information goods more feasible.33
Through these mechanisms, the patent system can act in a more socially
desirable way than its chief legal alternative, trade secret protection. Trade secrecy
guards against the improper appropriation of valuable, commercially useful and
secret information. In contrast to patenting, trade secret protection does not result in
28(...continued)
as a Limitation on Congress’s Intellectual Property Power,” 94 Georgetown Law
Journal
(2006), 1771.
29See Dan L. Burk & Mark A. Lemley, “Is Patent Law Technology-Specific?,” 17 Berkeley
Technology Law Journal
(2002), 1155.
3035 U.S.C. § 112 (2006).
3135 U.S.C. § 154 (2006).
32See Rebecca Eisenberg, “Patents and the Progress of Science: Exclusive Rights and
Experimental Use,” 56 University of Chicago Law Review (1989), 1017.
33Robert P . Merges, “Intellectual Property and the Costs of Commercial Exchange: A
Review Essay,” 93 Michigan Law Review (1995), 1570.

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the disclosure of publicly available information. That is because an enterprise must
take reasonable measures to keep secret the information for which trade secret
protection is sought. Taking the steps necessary to maintain secrecy, such as
implementing physical security measures, also imposes costs that may ultimately be
unproductive for society.34
The patent system has long been subject to criticism, however. Some observers
have asserted that the patent system is unnecessary due to market forces that already
suffice to create an optimal level of innovation. The desire to obtain a lead time
advantage over competitors, as well as the recognition that passive firms may lose
out to their more innovative rivals, may provide sufficient inducement to invent
without the need for further incentives.35 Other commentators believe that the patent
system encourages industry concentration and presents a barrier to entry in some
markets.36
Because the relationship between the rate of innovation and the availability of
patent rights is not well-understood, we lack rigorous analytical methods for studying
the impact of the patent system upon the economy as a whole. As a result, current
economic and policy tools do not allow us to calibrate the patent system precisely in
order to produce an optimal level of investment in innovation. Thus, each of these
arguments for and against the patent system remain open to challenge by those who
are unpersuaded by their internal logic.
Continuing Application Practice Reform
Continued Application Practice
The Patent Act allows inventors to file “continued applications.”37 Stated
generally, a continued application is one that has been “re-filed” at the USPTO,
commonly following the rejection of some or all of its claims. Continued patent
applications allow inventors to extend the period of examination at the USPTO in
order to negotiate further with a patent examiner, amend claims, submit new claims,
and gain additional time to prepare evidence to be submitted to the USPTO in
support of their applications, among other potential benefits.38
34David D. Friedman et al., “Some Economics of Trade Secret Law,” 5 Journal of Economic
Perspectives
(1991), 61.
35See Frederic M. Sherer, Industrial Market Structure and Economic Performance (1970),
384-87.
36See John R. Thomas, “Collusion and Collective Action in the Patent System: A Proposal
for Patent Bounties,” University of Illinois Law Review (2001), 305.
3735 U.S.C. § 120 (2006). Continued applications are also commonly termed “continuing”
applications.
38See Gary C. Ganzi, “Patent Continuation Practice and Public Notice: Can They Coexist?,”
89 Journal of the Patent and Trademark Office Society 545, 574-80 (July 2007).

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Under current patent practice, several different types of continued applications
exist. A “continuation” application discloses the same subject matter as the original
application.39 A “continuation-in-part” application, or CIP, adds some additional
subject matter to the original application.40 Finally, a “request for continued
application,” or RCE, allows applicants to request additional examination of an
application without the need to file a continuation application.41
A simple example illustrates continuation practice. Suppose that an inventor
files a patent application on January 1, 2000. After the USPTO examiner
subsequently issues a “final rejection” of that application, the inventor files a
continuation application on February 1, 2004. The continuation application includes
the same disclosure as the 2000 application. By filing it, the inventor may continue
to assert to the USPTO that a patent should issue on that invention. If the USPTO
approves the continuation application, it will issue as a patent that expires on January
1, 2020 — twenty years from the date of filing of the original or “parent” application.
Section 120 of the Patent Act imposes several technical requirements that must
be met with respect to continuation applications. First, the continuation application
must be filed prior to the patenting, abandonment, or termination of proceedings of
its predecessor application. Second, the predecessor and continuation application
must have at least one inventor in common. Third, the continuation application must
expressly identify the predecessor application.42
Finally, to be entitled to the benefit of the predecessor application, claims within
the continuation application must be fully supported by the technical disclosure found
within the predecessor application. Claims that reference “new matter” found in the
continued application, but not in the predecessor application, are entitled only to the
actual filing date of the continued application. As noted earlier, such an application
is termed a “continuation-in-part,” or CIP.43
It should be appreciated that an applicant may file a continuation application
even though the “parent” application has resulted in an issued patent itself. Even in
circumstances where the USPTO examiner has allowed all of the claims of a patent
application to issue, the inventor may nonetheless file a continuation application. He
may do so in order to obtain broader claims, to obtain claims that more closely track
his competitor’s products, or for any other reason.
39See Transco Products Inc. v. Performance Contracting Inc., 38 F.3d 551, 555 (Fed. Cir.
1994).
40Id.
4135 U.S.C. § 132(b) (2006).
4235 U.S.C. § 120 (2006).
43See also Leesona Corp. v. Varta Batteries, Inc., 522 F. Supp. 1304, 1335 n.153 (D. Del.
1981) (“by definition continuation-in-part applications add matter not disclosed in earlier
applications. But, in the face of intervening art, any “new matter” disclosed in a
continuation-in-part application cannot be accorded a filing date earlier than the date of
filing of the continuation-in-part application.”).

CRS-8
Continued applications are widely used in modern patent practice. In 2006,
about 29.4% of the applications filed at the USPTO were continued applications, as
compared to approximately 18.9% in 1990 and approximately 11.4% in 1980.44
Furthermore, the relevant provisions of the Patent Act place no numerical limits upon
the number of continued applications that may be filed. Many existing U.S. patents
have relied upon a chain of four, five, or even greater number of continuations, CIPs,
and RCEs.45
The USPTO Continued Application Rules
As part of its rules announcement of August 21, 2007, the USPTO imposed
some limitations upon the number of continued applications that could be filed
absent a petition by the applicant. In particular, the USPTO rules stipulate that
applicants may file only two continuations or CIPs, plus one RCE, with respect to an
original application as a matter of right. In order to file additional continued
applications, the applicant must submit a petition showing an amendment, argument,
or evidence that could not have been previously submitted.
The USPTO issued the rules on August 21, 2007, and followed them with an
additional “clarification” memorandum on October 10, 2007.46 The rules were to
apply to applications filed after November 1, 2007. In addition, the rules were to
apply to applications that had been filed at the USPTO prior to November 1, 2007,
provided that they had not yet been reviewed by the USPTO.
The USPTO rationalized its rule in part on the basis of administrative efficiency.
As explained by the USPTO:
The volume of continued examination filings . . . is having a crippling effect on
the Office’s ability to examine “new” (i.e., non-continuing) applications. . . . The
cumulative effect of these continued examination filings is too often to divert
patent examining resources from the examination of new applications disclosing
new technology and innovations, to the examination of applications that are a
repetition of prior applications that have already been examined and have either
issued or become abandoned.47
The USPTO has also explained that the public interest lies in knowledge of the scope
of patent claims. According to the USPTO, the filing of a sequence of continued
44USPTO Rules, supra, at 46,718.
45See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1367 (Fed. Cir. 2007) (observing that the five
applications at issue in the litigation were “all continuation applications with lineages that
can be traced back for decades.”).
46USPTO, “Clarification of the Transitional Provisions Relating to Continuing Applications
and Applications Containing Patentably Indistinct Claims” (October 10, 2007) (available
at [http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/clmcontclarification.pdf]).
47USPTO Rules, supra, at 46,718. See also Bruce A. Kaser, “Patent Application Recycling:
How Continuations Impact Patent Quality & What the USPTO Is Doing About It,”
88 Journal of the Patent and Trademark Office Society (2006), 426.

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applications leaves the public “with an uncertainty as to what the set of patents
resulting from the initial application will cover.”48
Academics have also criticized continued application practice. Mark Lemley
and Kimberly Moore, then members of the Berkeley and George Mason law school
faculties respectively,49 stated that continued application practice has introduced a
number of deleterious consequences into the patent law:
First, at a minimum, continuation practice introduces substantial delay and
uncertainty into the lives of a patentee’s competitors, who cannot know whether
a patent application is pending in most circumstances. Second, the structure of
the PTO suggests that continuations may well succeed in “wearing down” the
examiner, so that the applicant obtains a broad patent not because he deserves
one, but because the examiner has neither incentive nor will to hold out any
longer. Third, continuation practice can be — and has been — used strategically
to gain advantages over competitors by waiting to see what product the
competitor will make, and then drafting patent claims specifically designed to
cover that product. Finally, some patentees have used continuation practice to
delay the issuance of their patent precisely in order to surprise a mature industry,
a process known as “submarine patenting.”50
On the other hand, critics of the USPTO rules explain that continuation practice
has a number of beneficial attributes. First, some observers believe that continued
application practice allows inventors to pursue a cautious, deliberate strategy before
the USPTO, allowing them to obtain robust patent rights. This tactic may be
appropriate in view of recent judicial opinions that have emphasized the doctrine of
“prosecution history estoppel.”51 Broadly stated, this principle allows courts to
consider negotiations between the applicant and the examiner when determining the
scope of rights associated with a particular patent. In view of these judicial
developments, some patent practitioners believe that it is unwise to make certain
concessions to the examiner during the course of prosecution. The ability to file a
continued application supports this strategy by allowing additional opportunities for
discourse between the applicant and examiner.52
Second, critics of the USPTO rules state that continued applications allow
innovative firms to procure patent claims that relate to the products that they will
ultimately market. For example, a pharmaceutical and biotechnology firm may file
48USPTO Rules, supra, at 46,718.
49Professor Lemley has since joined the faculty of the Stanford Law School, while Professor
Moore has been appointed as a Circuit Judge of the United States Court of Appeals for the
Federal Circuit.
50Mark A. Lemley & Kimberly A. Moore, “Ending Abuse of Patent Continuations,” 84
Boston University Law Review (2004), 65.
51See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 532 U.S. 722 (2002).
52See Letter to the Honorable Jon Dudas, Under Secretary of Commerce and Director of the
USPTO, from Michael Kirk, Executive Director, American Intellectual Property Law
Association (April 24, 2006), at 5 (available at [http://www.uspto.gov/web/offices
/pac/dapp/opla/comments/fpp_continuation/aipla.pdf]).

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a patent application incorporating claims directed towards a broad category of
compounds. At the time of the initial filing, however, that firm may not have
conducted the extensive testing and research that is often needed to identify the
particular member of that category that will be brought to market. Under current
law, once that particular compound has been identified, the firm may file a
continuation application specifically claiming it.53
Should administrative rulemaking impose limitations upon continuing
applications, some observers believe that pharmaceutical and biotechnology firms in
particular may potentially be unable to obtain claims that both cover their marketed
products and be able to withstand validity challenges on a reliable basis.54 This
tendency could potentially diminish the effectiveness of patent protection within
industries where the patent system is widely acknowledged as crucial to innovation.55
Third, critics of the USPTO rules have asserted that some examiners at times
do not understand the invention presented to them in particular applications. The use
of continued applications is, in their view, necessary to obtain a competent
examination.56 In addition, some observers believe that certain examiners have
encouraged the filing of continued applications in order to inflate statistics pertaining
to their workplace productivity.57
Patent Claiming Practice Reform
Patent Claiming Practice
In addition to addressing continued applications, the USPTO Rules also
announced changes to claiming practice. As noted previously, the Patent Act
requires each patent to include “one or more claims particularly pointing out and
53See Letter to the Honorable Jon Dudas, Under Secretary of Commerce and Director of the
USPTO, from David E. Korn, Assistant General Counsel, Pharmaceutical Research and
Manuf act ur er s of Amer i c a ( M a y 2 , 2 0 0 6 ) , a t 3 ( a va i l a b l e at
[http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/phrma_
con.pdf]).
54Id.
55See Claude E. Barfield & Mark A. Groombridge, “Parallel Trade in the Pharmaceutical
Industry: Implications for Innovation, Consumer Welfare, and Health Policy,” 10 Fordham
Intellectual Property, Media and Entertainment Law Journal
(1999), 185.
56See Letter to the Honorable Jon Dudas, Under Secretary of Commerce and Director of the
USPTO, from Marc S. Adler, President, Intellectual Property Owners (May 3, 2006), at 3
(available at [http://www.uspto.gov/web/offices/pac/dapp/opla/comments/
fpp_continuation/ipo_con.pdf]).
57See Memorandum to the Honorable Jon Dudas, Under Secretary of Commerce and
Director of the USPTO, from Graciela Cowger, Director, Oregon Patent Law Association
(May 3, 2006), at 3 (available at [http://www.uspto.gov/web/offices/pac/dapp
/opla/comments/fpp_continuation/opla_con.pdf]).

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distinctly claiming the subject matter which the applicant regards as his invention.”58
The claims set forth the proprietary rights that the patent owner asserts for itself. In
particular, the words of a patent’s claims are compared to the physical features of an
accused product to determine whether infringement has occurred.59 As well, the
teachings of earlier publications, patents, and other relevant “prior art” is compared
to a patent’s claims in order to decide whether the patented invention has been
anticipated or would have been obvious.60
Claims may be drafted in either “independent” or “dependent” format. A
dependent claim references an earlier claim, but then provides additional limitations
upon the scope of that claim. Claims 1 and 2 of U.S. Patent No. 4,161,079, which
relate to traps for mice and other pests, provides an example of independent and
dependent claims:
1. A trap for rodents or like pests comprising:
an enclosure for the pest to enter;
means for ensnaring the pest in the enclosure;
a charge of separately covered bait material mounted to the enclosure;
means for uncovering said covered bait material within the enclosure, said
means for uncovering being operable externally of said enclosure;
whereby covered bait material may be stored for a long period of time and
yet easily released when desired.
2. The invention of claim 1 wherein:
said enclosure includes a window through which a user may look to see if
a mouse or like pest is entrapped therein.
The use of dependent claims is largely a drafting convenience for patent applicants.
In the mouse trap example, rather than reciting each of the features of claim 1 once
more, claim 2 merely references them but also incorporates an additional limitation.61
In practice, most patents contain multiple claims. Each claim is ordinarily
viewed as presenting a separate statement of the patented invention. It is possible
that the patent proprietor’s competitor may infringe some of the patent’s claims, but
not others, depending upon the precise wording of the claim. Similarly, a court may
declare that some of the patent’s claims are invalid, but uphold other claims, in view
of novelty, nonobviousness, or other legal requirements to obtain a patent.62 For the
most part, then, each claim in a patent affords the patent owner separate proprietary
rights that must be judged on its individual merits.63
5835 U.S.C. § 112 (2006).
59See Roger E. Schechter & John R. Thomas, Intellectual Property: The Law of Copyrights,
Patents, and Trademarks
§ 20.2 (2003).
60Id. at § 16.4.
61Schechter & Thomas, supra, at § 18.2.2.1.
62See 35 U.S.C. § 282 (2006).
63Schechter & Thomas, supra, at § 18.2.

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Determinations as to the precise number of claims that a particular patent
contains falls largely within the discretion of the individual who drafted the patent.
As Paul Janicke, a member of the University of Houston law faculty, has explained:
No limit is placed on the number of claims that can be included in an application.
Most good patent attorneys write many of them of varying scope, in case the
broadest turn out to be invalid because they cover some unknown piece of prior
art, and in case the narrowest fail to provide commercially effective scope
because they are easily designed around. Each claim is judged for validity and
infringement as though it were a sort of mini-patent unto itself. To win an
infringement case, the patentee need only establish infringement of one claim
that the defendant is unable to invalidate. Such a system encourages the most
diverse possible claiming. It is a good system for protecting inventions.64
The USPTO fee schedule provides some financial incentives to limit the number
of claims in a particular patent. The basic filing fee for patent applications is
currently $310.65 For each independent claim in excess of three, the USPTO imposes
a surcharge of $210. In addition, for each claim in excess of 20, whether dependent
or independent, the USPTO imposes a surcharge of $50.66 As a result, incorporating
large numbers of claims within a patent may lead to a substantial increase in the
official fees associated with its acquisition.
Empirical studies have arrived at varying results on the average number of
claims per patent, depending on the sampling technique employed and the time frame
under consideration. Patent lawyer Peter L. Giunta reported an average of 3.09
independent claims and 18.15 total claims per patent issued in 2003.67 John Allison
and Mark Lemley, members of the faculties of the University of Texas and Stanford
University respectively, sampled 1,000 patents issued between 1976 and 1978, and
another 1,000 patents issued between 1996 and 1998. Allison and Lemley reported
an average of 9.94 claims per patent for the 1970’s patents, and 14.87 claims per
patent for the 1990’s patents.68 Both the Giunta and Allison-Lemley studies agreed
that the average number of claims per patent has increased over time.
It should be appreciated, however, that some patents incorporate considerably
more claims than average. For example, in the well-known patent litigation
64See Paul Janicke, “Heat of Passion: What Really Happened in Graver Tank,” 24 American
Intellectual Property Law Association Quarterly Journal
(1996), 1.
65It should be appreciated that the USPTO will ordinarily charge additional fees during the
course of the patent acquisition process beyond the assessment for filing the application.
Among these are a $510 search fee, $210 examination fee and $1,440 issuance fee. See
USPTO, FY2008 Fee Schedule (available at [http://www.uspto.gov/web/offices/ac/qs/ope/
fee2007september30.htm]).
66Id.
67Peter L. Giunta, “Quid Pro Whoa!: An Exponential Fee Structure for Patent Applications,”
25 Cardozo Law Review (2004), 2317.
68John Allison & Mark Lemley, “The Growing Complexity of the United States Patent
System,” 82 Boston University Law Review (2002), 77.

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involving the BlackBerry® mobile communications device,69 the patent proprietor
asserted charges of infringement based upon five patents. The first of these patents
to issue incorporated 89 claims; the remaining four included 276, 223, 341, and 665
claims respectively.70 As a general matter, one empirical study has concluded that
patents of greater value to their owners tend to have a larger number of claims than
average.71
The USPTO Claim Rules
Following issuance of notice and a period of public commentary, the USPTO
promulgated rules that would impose an obligation upon inventors who file patent
applications that have more than five independent claims, or more than 25 total
claims (dependent or independent).72 That obligation consists of the duty to prepare
and file an Examination Support Document, or ESD. The ESD contains information
about the claimed inventions that may assist the USPTO in conducting its
examination tasks. In order to prepare the ESD, the applicant must conduct a search
of databases of patents and the scientific literature. The applicant must then provide
a detailed explanation of why the submitted claims are patentable over the prior art
discovered during the search, as well as provide additional information pertinent to
the patentability determination.73
The USPTO is concerned that applicants might attempt to file multiple
applications directed toward the same or similar inventions in order to avoid the
obligation to submit an ESD. The USPTO rules therefore require applicants to
disclose all applications that are commonly owned and have at least one inventor in
common.74 If the examiner determines that the applications have “substantially
overlapping disclosures,” the examiner may presume that the claims are not
“patentably distinct” and will apply the 5/25 claim limitation to the total number of
claims in the relevant applications. The USPTO further “cautioned” applicants from
69NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1281 (Fed. Cir. 2005). See Gerard N.
Magliocca, “Blackberries and Barnyards: Patent Trolls and the Perils of Innovation,” 82
Notre Dame Law Review (2007), 1809.
70The five patents asserted in the NTP v. RIM litigation were U.S. Patent Nos. 5,436,960;
5,625,670; 5,819,172; 6,067,451; and 6,317,592.
71John R. Allison et al., “Valuable Patents,” 92 Georgetown Law Journal (2004), 435.
72USPTO Rules, supra, at 46,721.
73More specifically, an ESD must include (1) a statement explaining that a prior art search
was done; (2) a listing of the search results most closely related to the subject matter of each
claim; (3) identification of all the limitations of each claim that are disclosed by the prior
art; (4) a detailed explanation particularly pointing out how each of the independent claims
is patentable over the prior art; and (5) a showing where each limitation of each of the
claims is supported by the patent’s specification. Id. at 46,741 (discussing Rule 265).
74USPTO Rules, supra, at 46,721.

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attempting to avoid this rule by filing separate applications outside the two-month
window.75
On the other hand, the USPTO has recognized that applicants may permissibly
file continued applications in order to obtain additional claims without the filing of
an ESD. As the new continuation rules allow applicants to file two continuation
applications and one RCE without special justification, applicants may potentially
obtain 15 independent claims, and 75 total claims without the filing of an ESD.76
As with the rules with respect to continued applications, the claiming practice
rules were to apply to applications filed after November 1, 2007. In addition, the
rules were to apply to applications that had been filed at the USPTO prior to
November 1, 2007, provided that they had not yet been reviewed by the USPTO.
The USPTO justified these restrictions upon claiming practice on a number of
grounds. One rationale was that these reforms would lead to a “better focused and
effective examination process” that would allow examiners to concentrate upon a
smaller number of claims, or in the alternative be assisted by an ESD.77 According
to the USPTO, the result would be a reduction in “the large and growing backlog of
unexamined applications,” while “the quality of issued patents” would be maintained
or possibly improved.78
The USPTO also expressed concerns that, absent rule changes, the public would
face difficulty in analyzing numerous claims in issued patents that were directed
towards “patentably indistinct inventions.”79 Patents are often complex, technical
instruments that may prove difficult to parse.80 It is not uncommon for jurists who
frequently adjudicate disputes concerning patents to disagree on their appropriate
construction.81 The transaction costs and uncertainty surrounding determinations of
patent scope may be further exaggerated if the patent includes a large number of
claims. These circumstances may not favor the ability of others to innovate
themselves, and also to compete in the marketplace.
Although the USPTO rules place no absolute restrictions upon the number of
claims that may be incorporated within a particular application, they were subject to
negative commentary by many patent professionals. In particular, some observers
viewed the filing of an ESD as a costly, time-consuming, and potentially risky
endeavor. Patent attorneys John Pegram and Ronald Lundquist opined that preparing
75Id. at 46,722.
76Id. at 46,721.
77Id. at 46,717.
78Id.
79Id. at 46,718.
80See Allison & Lemley, supra.
81See Andrew B. Dzeguze, “Did Markman and Phillips Answer the Right Question? A
Review of the Fractured State of Claim Construction Law and the Potential Use of Equity
to Unify It,” 15 Texas Intellectual Property Law Journal (2007), 457.

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an ESD may require more technical and legal effort than drafting its associated patent
application.82 Submitting an ESD might therefore significantly increase the costs of
procuring patent rights in the United States.
In addition, some observers believe that ESDs will commonly incorporate
statements and disclosures that might potentially be viewed as admissions. An ESD
might therefore limit the scope of protection and enforceability of any patent that
resulted from its application.83 Other observers believed that the claim rules would
negatively impact patent rights without meaningfully serving the goals identified by
the USPTO. As explained by patent attorneys John R. Harris and Daniel E. Sineway:
For the USPTO to claim that an ESD will “improve examination quality” seems
disingenuous — the improvement in quality will likely result not from any
greater scrutiny or effort by the patent examiner, but from patent applicants
providing the examiner with the ammunition to reject the application. The ESD
will give examiners the information and reasoning needed to deny a patent,
and/or force the applicant to fill the file history with information that helps
infringers avoid liability in later litigation.84
As a result, patent attorney Kevin Noonan opined that “an applicant should avoid
filing an ESD under any circumstances.”85
If inventors widely subscribe to this view, then they will be practically limited
in the number of claims that they can obtain from the USPTO. This effect may limit
the extent of patent protection an inventor may effectively procure, particularly in
view of a number of judicial opinions that have stressed that inventors possess the
ability to draft claims using words of their own choosing.86 Courts have further
observed that a patent’s claims are intended to provide notice to third parties of its
owner’s proprietary rights.87 If the claims do not match the accused infringer’s
product or process literally, then courts may be reluctant to employ equitable
principles such as the “doctrine of equivalents” to reach a finding of infringement.88
82John B. Pegram & Ronald C. Lundquist, “USPTO Final Rule Changes for Continuations
and Claims,” (September 6, 2007) (available at [http://www.fr.com/news/2007/
Sept/v3%209%206%2007%20Rules%20Webinar.pdf]).
83John R. Harris & Daniel E. Sineway, “New USPTO Rules Will Significantly Affect Patent
Strategy: Several New Rules Create Sweeping Changes in Patent Office Procedure,”
(September 27, 2007) (available at [http://www.mmmlaw.com/downloads/clientalerts/
NewUSPTORulesMaySignificantlyAffectProsecutionStrategy.pdf]).
84Harris & Sineway, supra, at 3.
85Kevin E. Noonan, “An Analysis of the New Rules: USPTO Releases ESD Guidelines,”
(September 17, 2007) (available at [http://www.patentdocs.us/patent_docs/2007/09/ an-
analysis-o-8.html]).
86See Sage Products, Inc. v. Devon Industries, Inc., 126 F.3d 1420, 1425 (Fed. Cir. 1997).
87See Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 28-29 (1997).
88See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1364 (Fed. Cir. 2007) (“A finding
of infringement under the doctrine of equivalents requires a showing that the difference
(continued...)

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As the Federal Circuit explained, “as between the patentee who had a clear
opportunity to negotiate broader claims but did not do so, and the public at large, it
is the patentee who must bear the cost of its failure to seek protection for [a]
forseeable alteration of its claimed [invention].”89 Some observers believe that the
combination of judicial stress upon precise claim drafting and administrative
limitations upon claims will make the patent system less attractive, thereby
decreasing investment in R&D, diminishing innovation, and encouraging use of trade
secret law.90
The Tafas v. Dudas Litigation
Criticisms over the propriety of the claims and continued application rules led
to litigation against the USPTO in federal court. The result was the October 31, 2007
decision of the U.S. District Court for the Eastern District of Virginia in Tafas v.
Dudas.
91 That decision led to the issuance of a preliminary injunction against the
USPTO. As a result of this ruling, the USPTO may not implement its claims and
continued application rules until the court makes a final determination.
The Tafas v. Dudas ruling arose from lawsuits filed by two separate plaintiffs:
(1) individual inventor Triantafyllos Tafas, and (2) the multinational pharmaceutical
enterprise organized as Smithkline Beecham Corp. and Glaxo Group Limited
(collectively known as “GSK”). The plaintiffs requested a preliminary injunction
that would prevent the USPTO from implementing the claims and continued
application rules. The District Court consolidated the two cases, although its analysis
emphasized the arguments offered by GSK.
In analyzing GSK’s assertions, Judge Cacheris considered four factors: (1) the
likelihood of GSK’s success on the merits, (2) irreparable harm if the injunction is
not granted, (3) the balance of hardships between the parties, and (4) the public
interest.92 The District Court determined that each of these four factors favored GSK.
Likelihood of Success on the Merits. The District Court reasoned that there was
a “genuine possibility” that the USPTO would lose a full trial on the merits.93 Judge
Cacheris observed that the Patent Act provided the USPTO with authority to engage
88(...continued)
between the claimed invention and the accused product was insubstantial.”).
89Sage Products, supra, at 1425.
90See Letter to the Honorable Jon Dudas, Under Secretary of Commerce and Director of the
USPTO, from E. Anthony Figg, Chair, American Bar Association Section of Intellectual
Property Law (May 3, 2006) (available at [http://www.uspto.gov/web/
offices/pac/dapp/opla/comments/fpp_claims/aba-ipl.pdf]).
91See Tafas v. Dudas, Case No. 1:07cv846 (E.D. Va. 2007); Smithkline Beecham Corp. v.
Dudas, Case No. 1:07cv1008 (E.D. Va. 2007).
92Tafas v. Dudas, slip op. at 8-9.
93Id. at 21.

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in rulemaking with respect to the “conduct of proceedings before the Office,”94 but
not with respect to substantive matters. Judge Cacheris believed that GSK had raised
at least a “colorable question” whether the claims and continuation rules were
substantive in nature, and therefore beyond the reach of USPTO authority.95
Judge Cacheris further observed that the statutory provisions governing
continued applications place no express limitations upon the number of such
applications that could be filed.96 The district court also concluded that the case law
of the Federal Circuit “suggests that a decision by the [USPTO] to limit the number
of continuing applications would run contrary to the mandate of Section 120.”97 In
view of the potential conflict between the statutory language and the USPTO rules,
the District Court believed that GSK had raised “serious concerns” over the legality
of the claim and continuation rules.98
Judge Cacheris next addressed GSK’s assertion that the claims and continued
application rules were retroactive in effect. Under governing law, an agency’s
rulemaking cannot be retroactive unless expressly authorized by Congress.99 Because
Congress has not so authorized the USPTO, and because the rules applied to patent
applications that had been filed prior to their effective date, Judge Cacheris
concluded that GSK had “demonstrated a real likelihood of success” with respect to
impermissible retroactivity.100
Irreparable Harm. Observing that GSK had filed numerous applications that
would be affected by the USPTO rules,101 Judge Cacheris concluded that the claims
and continued application rules would immediately harm GSK’s investments and
create a disincentive to innovate and file patent applications. He further concluded
that “GSK will be unable to recover their losses if the Final Rules are ultimately
determined to be invalid.”102 The District Court therefore concluded that GSK would
be likely to suffer irreparable harm if the preliminary injunction was not granted.
Balance of Hardships Between the Parties. Judge Cacheris reasoned that GSK
would suffer immediate damage to its investments if the claims and continued
application rules were implemented. On the other hand, the USPTO would
9435 U.S.C. § 2(b)(2) (2006).
95Tafas v. Dudas, slip op. at 21.
96The two statutory provisions are section 120 of the Patent Act, which governs
continuations and CIPS (continuations-in-part), and section 132(b), relating to RCEs
(requests for continued examination).
97Tafas v. Dudas, slip op. at 23.
98Id. at 21.
99Id. at 27 (citing Bowen v. Georgetown University Hospital, 488 U.S. 204, 208 (1988)).
100Id. at 29.
101Id. at 6.
102Id. at 35.

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experience only the costs of maintaining its older claims and continued application
rules.103
The Public Interest. Judge Cacheris reasoned that the public interest favored the
maintenance of a stable, reliable patent system. In this respect, he explained that
“[a]llowing the implementation of rules that may or may not remain in effect is likely
to cause much greater uncertainty and squelching of innovation than a preliminary
injunction giving the Court time to consider the validity of the Final Rules before
they go into affect.”104
Because all four factors favored GSK, the District Court issued a preliminary
injunction blocking the USPTO from implementing its claims and continued
application rules. Although the ruling in Tafas v. Dudas is temporary in nature, its
immediate impact is that the USPTO may not implement its rules until the court
makes a final determination. These proceedings are underway at the time of the
publication of this report.
Reactions to the ruling in Tafas v. Dudas have varied. Patent attorney Kevin
Noonan described the opinion as “thorough and well-reasoned.”105 In contrast, Arti
Rai, a member of the faculty of the Duke University School of Law, concluded that
“[t]he court’s reasoning about the alleged conflict between the statute and the rules
contains several errors of administrative law.”106 In general, Rai believes that the
District Court failed to defer sufficiently to the USPTO’s interpretation of the Patent
Act as required by the judicial opinions of the Supreme Court. As these proceedings
continue, parties with diverse views about the legality of the claims and continued
application rules will have the opportunity to present them before the court.
IDS Practice Reform
Although patent professionals have focused attention upon the claims and
continued application rules, the USPTO has proposed additional reforms as well.
One of these reforms relates to the so-called Information Disclosure Statement, or
IDS.107 An IDS is a document submitted to the USPTO that discloses all journal
articles, patents, and other “prior art” of which a patent applicant is aware.108 The
USPTO has expressed concerns that applicants too frequently include numerous
103Id. at 35-37.
104Id. at 38.
105Kevin E. Noonan, “Tafas v. Dudas; SmithKline Beecham Corp. v. Dudas (E.D. Va.
2007)” (available at [http://www.patentdocs.net/patent_docs/2007/10/tafas-v-dudas-1.html])
106Arti K. Rai, “The GSK Case: An Administrative Perspective,” Patently-O Blog Law
Journal
(2007) (available at [http://www.patentlyo.com/lawjournal/files/RAIGSK.pdf]).
107Department of Commerce, USPTO, “Changes to Information Disclosure Statement
Requirements and Other Related Matters,” 71 Federal Register 38,808 (July 10, 2006)
(hereinafter “IDS Notice”).
108See Black’s Law Dictionary 795 (Thomson-West, 8th ed. 2004).

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“irrelevant or marginally relevant” prior art reference that not only fail to bring the
most relevant material to the attention of examiners, but also require them to sort
through dozens or hundreds of documents that are not pertinent to the question of
patentability.109
As a result, the USPTO has proposed rules that would impose additional
applicant responsibilities with respect to IDS filings. In particular, the USPTO
proposes that if more than 20 documents are disclosed in an IDS, the applicant must
provide an explanation of each cited document. That explanation consists of “an
identification of a portion of a document that caused it to be cited, and an explanation
of how the specific feature, showing, or teaching of the document correlates with
language in one or more claims.”110 If an IDS contains fewer than 20 documents, the
applicant would be required to provide an explanation only for documents not
published in English, or for English-language documents over 25 pages in length.111
Critics of the proposed IDS rules assert that “their practical effect will be to
dramatically increase the cost of obtaining patent protection” and “make it much
more difficult for inventors and innovators to protect their legitimate intellectual
property rights . . ..”112 At present time, the USPTO has not taken final action with
respect to the proposed IDS rules.
Congressional Issues and Alternatives
Should Congress conclude that the current situation with respect to the USPTO
rulemaking is satisfactory, then no action need be taken. If Congress wishes to
intervene, however, a number of options present themselves. In the 110th Congress,
H.R. 1908 would expressly provide the USPTO with regulatory authority to specify
the circumstances under which a patent applicant may file a continued application.113
That bill passed the House on September 7, 2007, as the “Patent Reform Act of
2007,” and was referred to the Senate. No other pending legislation — including S.
1145, the Senate legislation also titled the “Patent Reform Act of 2007” — addresses
the subject matter of the claims or continuation rules.
One possibility would be to provide the USPTO with substantive rulemaking
authority. In the 110th Congress, an earlier verison of H.R. 1908 would have granted
the USPTO Director the authority to “promulgate such rules, regulations, and orders
that the Director determines appropriate to carry out the provisions of this title or any
109IDS Notice, 71 Fed. Reg. at 38,809.
110Id. at 38,810.
111Id.
112See Letter to the Honorable Susan E. Dudley, Administrator, Office of Information and
Regulatory Affairs, Office of Management of Budget, from David E. Boundy, Cantor
Fitzgerald L.P. (October 17, 2007), at 2 (available at [http://www.whitehouse.gov/omb/oira/
0651/comments/477.pdf]).
113H.R. 1908, § 14.

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other law applicable to the United States Patent and Trademark Office.”114 This
provision was ultimately removed from the bill in favor of a more narrow grant of
authority with respect to continued applications.
More specific legislative amendments provide another option. Amendments to
the relevant provisions of the Patent Act could confirm that no limitations should be
imposed upon the number of claims or continuations that applicants may file. They
could also address IDS filing requirements or other aspects of USPTO procedures.
Alternatively, amended statutory provisions could impose such limitations, or grant
the USPTO the authority to do so.
Patent administration has becoming increasingly difficult as the USPTO faces
both a rising number of filings and more technologically complex applications. On
the other hand, many patent professionals have viewed both judicial and legislative
developments as emphasizing well-crafted applications.115 Limitations upon claims
and continued application practice have been widely viewed as constraining the
ability of patent professionals to achieve this goal.116 Establishing the appropriate
balance of rights and responsibilities between applicants and the USPTO forms an
important consideration in maintaining a fair and efficient patent system.
114H.R. 1908, § 11 (as originally introduced).
115See, e.g., Paul Gillette, “‘Maximum Security’: Continuation and Reissue as Means of
Obtaining Optimum Patent Protection After Festo,” 27 Thomas Jefferson Law Review
(2005), 371.
116See, e.g., Mary Ann Liebert, “The Comments of the Biotechnology Industry Organization
on the United States Patent & Trademark Office Proposed Rules Changes Concerning
Continuation Practice and Claim Limitations,” 25 Biotechnology Law Report (2006), 473.