Proposed U.S. Patent Office Rule Changes Could Significantly Affect Portfolio Development

Earlier this year, the United States Patent and Trademark Office (USPTO) proposed a series of new rules to streamline the examination of patent applications. If adopted in their current form, the rules will significantly affect how applicants develop their patent portfolios. At the moment, it is unclear what the final rules will be. Furthermore, the USPTO has not specified when the new rules will go into effect, but has indicated that at least 30 days’ advance notice will be given.

The three most relevant areas include: (i) the disclosure of information to the USPTO during the examination of patent applications; (ii) the filing of continuing applications; and (iii) the manner and extent to which an invention is claimed and examined.