A USPTO Examination Policy Change You May Have Missed

August 19, 2020

On August 19, 2020, Law360 published an article co-authored by Partner David Gass discussing the June 2020 Manual of Patent Examining Procedure (MPEP)’s policy change.

“With little fanfare, the latest MPEP revision in June 2020 inserted a subtle, but potentially significant change to the first-action final rejection practice that may make the patent examination process more costly for patent applicants, and more profitable for the U.S. Patent and Trademark Office (USPTO),” the authors explain.

Of the 100-plus changes made to Chapter 700, the authors detail those made to Section 706.07(b) which broaden the first-action final rejection trigger, permitting a first-action final rejection when claims are “patentably indistinct” from previously presented claims. The authors note that with this expansion in the criteria from “same invention” to “patentably indistinct,” the USPTO may permit examiners to make a first-action final rejection when there is more than a de minimis amendment to the claims. This change to MPEP Section 706.07(b) applies to both requests for continued examination (RCEs) and continuation applications that until now would have most likely resulted in nonfinal office actions (or allowances).

“Even under the existing practice scheme, RCE practice is stacked against a patent applicant,” the authors write. Combined with the USPTO’s long-standing policy that incentivizes patent examiners to spend significantly less time during continued examination, even though the USPTO charges patent applicants more for the privilege of receiving continued examination, the authors argue that “the new first-action final rejection policy threatens to exacerbate this trend of paying more, but getting less.”

While it remains to be seen how the USPTO will implement the June first-action final rejection policy change and how patent applicants will respond, our team will continue to closely monitor this development.

Subscribers may access David's full article "A USPTO Examination Policy Change You May Have Missed" on Law360.

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