In August, the US Patent and Trademark Office (USPTO) announced new rules for the patenting process, which will take effect on November 1. Under the new rules, patent submissions can not include more than 25 claims, and inventors will only be able to file two new “continuing applications,” which allow inventors to add further claims to preexisting patents. In addition, the USPTO will only accept one request for a continued examination, which can be filed by an inventor whose patent application has been rejected. The current rules allow for unlimited requests for additional patent claims or continued examinations. These new rules are an attempt to respond to the USPTO’s estimated backlog of approximately 750,000 cases. In fiscal 2004, almost one-third of the 355,000 applications received were “resubmissions of previous applications,” which the USPTO claims have interfered with the process of granting new patents. Members of the biotech industry have registered their concern about the new rules, particularly in relation to the uncertainty of the USPTO’s criteria for approving additional claims and continued examination requests and the likelihood that applicants are likely to face difficult negotiations with the Office.

Source: The Scientist

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