Patent Office Has Stopped Examining Patents with 25+ Claims
Oct 16, 2007
Those of you following your docket through the PTO’s PAIR system may note that
the Office has begun its ‘identification process’ of unexamined patents with either
(1) more than 25 claims issued or (2) more than 5 independent claims. The docket
- Entry: Flagged for 5/25
- Status: “Request for SIR -- Recorded” or “Preexam Flag for 1.75(b) Issues”
According to a telephone conversation with the Office of the Commissioner for
Patents, these cases have been pulled from Examiner dockets because they exceed
the 5/25 limit and are thus-far unexamined. We will be able to do a retrospective
in Mid-November to estimate the number of cases impacted by this pre-rule activity.
Of course, this appears to be a de facto implementation of the new rules prior to
the stated November 1 effective date.
In other news:
- For an example, look at the PAIR data [ http://portal.uspto.gov/external/portal/pair
] for App. No. 20060294241.
- Thanks to James McEwen [ http://www.smbiplaw.com/ ] and Randall Svihla [
http://www.smbiplaw.com/pro_svihla.cfm ] alerting me to this issue.
- This alert will help many practitioners ensure that they have found all
their cases that exceed the new limits. Many attorneys keep no specific records
of the number of claims filed. For published cases, Derwent keeps track of the
number of claims.
- UPDATE 10/17/07 — App. No. 20060294241 referenced above is no longer ‘flagged.’
- CAFC Docket: The CAFC heard 13% fewer cases in FY2007 — freeing their docket
for additional BPAI appeals. [ http://www.cafc.uscourts.gov/statistics.html
- Preemptive Strike: In another preemptive strike, on October 15th, ESN sued
Cisco for infringing Patent No. 7,283,519. Unfortunately, the patent did
not issue until the 16th of October. [ http://www.patentlyo.com/patent/law/ESN.Complaint.pdf