Backlash

The rule changes are controversial, and unrest is brewing. Lawsuits have been filed against the USPTO that challenge the validity of the rules. One of the first was filed in August by Triantafyllos Tafas against Undersecretary of Commerce Jon Dudas in his capacity as director of the USPTO, and against the USPTO itself. Tafas is chief technology officer of Ikonisys, in New Haven, Conn., and an inventor who has coauthored six patents and contributed to more than 17 pending patents. The complaint, filed in the U.S. District Court for the Eastern District of Virginia, states that the new rules will prevent Tafas and similarly situated inventors from realizing the full economic potential of their work. More recently, on 9 October, GlaxoSmithKline also sued the USPTO, on the grounds that the new rules extend well beyond the rulemaking authority of the Patent Office. Numerous other parties are lining up to file amicus briefs in these cases.

While the 25 claims limit has certainly riled many inventors, even more controversial is that the new rules are being retroactively applied to pending applications. For complex inventions, that might result in certain subject matter not being claimed and thus left unpatented and dedicated to the public. Some critics have even gone so far as to describe the scenario as the government taking property without compensation.

Basically, the goalposts have been moved during the game. It is critical to understand how to continue in the game given the new layout of the playing field. In addition to a careful review of the new rules provided by the USPTO on its Web site, a consultation with your patent practitioner makes good sense. Some opportunities to take beneficial actions are scheduled to close on 1 November. Prompt and intelligent actions may save you big headaches in the coming months.