Friday, September 28, 2007

New PTO rules package

Being the IP manager for OQO is quite an experience.


There are many inventors here who collaborate deeply and often, seeding incredible ideas and developing IP faster than I have ever before experienced. Of course, for me this becomes a bit of a problem in light of 37 CFR 1.78(f) in the USPTO new rules package.


It may be that the listing of commonly owned applications and patents will be the most important rule change in terms of the day to day management of patent applications.


The clerical listing of cases should be a trivial filing. However, avoiding the rebuttable presumption under 37 CFR 1.78(f)(2)(i) is going to take real creativity and diligence for compliance. The essence of this rule is that when a company files a new application within a couple months of another case having one or more inventors in common, that case is assumed to contain a claim that is not patentably distinct from claims in the other case when the earlier application contains written description support under the first paragraph of 35 U.S.C. 112 for at least one claim in the later application.


That is going to be very difficult to check for every filing. When filing cases on a new combination of elements, a new method of making those elements, additional patentable implementations using those elements, and all of those cases have long specifications, it makes the pre-filing analysis, complicated at least.


There should be a way to semi-automate the checking process by being more rigid in spec and claim drafting regarding defining claim elements, separately recording in the docketing system what elements are detailed in a given spec, then cross checking those elements with applications filed within two months of the filing date.


This will require a lot of time, coordination, and diligence, especially when dealing with more than one firm.   


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