The United States Patent and Trademark Office has published new rules, set to take effect November 1, 2007, limiting the number of continuations to two and restricting each patent application to 25 claims, no more than five of which can be independent claims. Beyond those limits, applicants must show why an additional continuation is necessary or provide supplementary information to present additional claims. It’s unclear on what basis appeals for additional claims and continuations will be evaluated. The rules are less restrictive than the original proposal, which would have limited inventors to one continuation and only 10 claims. But they still represent a serious challenge for university tech transfer programs, since they will now need to deal with an appeals process when seeking claims or continuations beyond the new limits. The new rule will “have a big effect on biotechs, universities, and nonprofits because it limits their ability to fight with the PTO,” noted Ronald Eisenstein, with IP law firm Nixon Peabody in Boston. “If all that the patent examiner has to say is ‘no,’ it’s going to get much harder to negotiate and will lead to applicants having to file costly appeals.” There is a bright side, however, in that the streamlined process could help reduce the enormous backlog of cases faced by the PTO, now estimated at 750,000. Many of those are resubmissions, which the PTO says leads to delays in reviews of new patents. “Some accommodation has to be made for the bad situation due to the backlog,” commented Carl Gulbrandsen, managing director of the Wisconsin Alumni Research Foundation. “I would rather give a little bit [on claims and continuations] and hope that we get more patents on the back end.” Go to: http://www.the-scientist.com/news/home/53497/ and http://www.uspto.gov/main/homepagenews/bak2007aug20.htm

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