Congress & USPTO Prepare for Busy Fall Season

As Congress turns back to patent reform efforts in the Fall there will also be a fair amount of activity at the USPTO. The “executive actions” released by the White House months ago were aimed primarily at the USPTO. In response, several proposed rule making packages and changes to examination practice are  expected in the coming months.

1. The USPTO is expected to issue strict guidelines requiring the identification of the real-party-in-interest for issued patents. 

The USPTO privately acknowledges that their expected RPI proposal will almost certainly spur outrage among large patent filers and require significant modification from their initital, overreaching form. But, the idea that the identification of the real-party-in-interest will somehow curtail abusive litigation practices was spawned in the executive branch. As such, the USPTO has no choice but to advance an idea that all major bar associations and stakeholders have dismissed as missing the mark. It is now up to stakeholders to insist that this anti-troll provision be watered down so that it doesn’t punish innovators.

2. Functional Claiming Addressed

Coming to an office action near you….although not a rule package, the USPTO is diligently re-training examiners to aggressively challenge functional claiming. Training materials (here).

3. The USPTO will issue a final rule package to calibrate Rule 56 to be consistent with Therasense.


As to Congress, last week’s GAO Report was a kick to the groin for the anti-troll lobby. The suprisingly objective report pointed out that the real issue is patent quality, and the AIA is addressing that problem. Curiously, many of the biggest proponents of further reforms have yet to avail themselves in any meaningful manner of those provided by the AIA. Nevertheless, you can expect Congress to continue moving full-speed ahead. Recall that the AIA was touted as a “jobs bill.” With so few bills pending that can garner anything close to bipartisan support, politicians are not going to walk away from a chance to pass something…needed or not.