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Patent Procedure Clarified

December 17, 2007 | A version of this story appeared in Volume 85, Issue 51

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Information from the American Chemical Society's 2006 Form 990 is now available to ACS members on www.acs.org. To access the information, please have your ACS membership number handy and follow these instructions: Go to www.acs.org. In the upper right-hand corner, log in. If you are already a registered user, enter your user name and password. If you're a new user, follow the link and register (a process that requires your ACS membership number and takes less than a minute). Once you have logged in, you will see a link titled "Member Information." Click on this link, go to the heading "Your Organization" at the bottom of the screen, and click on the link titled "Access the Compensation of ACS Officers and Key Employees." You will immediately go to the introductory text; the Form 990 is available by clicking on the link at the bottom of the page titled "2006 Compensation Schedules." If you have any problems, contact webmaster@acs.org.

Once again C&EN inaccurately describes an issue involving the U.S. Patent & Trademark Office (PTO). Specifically, the article states that the new patent rules "would limit the number of times an inventor could modify an existing patent application or contest a rejected claim. Currently, applicants can file an unlimited number of amendments or challenges" (C&EN, Nov. 5, page 19).

Applicants have never been allowed an unlimited number of amendments and challenges in a single application. After filing a patent application, the applicants can amend it as many times as they want until the examiner writes a first Office Action. If the first Office Action is a rejection, the applicants have the right to amend the claims in their response. The examiner then either allows the application or writes a second Office Action. Normally, this is a final rejection. After the final rejection, the applicant does not have the right to amend the claims. However, the examiner will usually enter After Final Amendments if they place the claims for allowance.

If the applicants disagree with the examiner's final rejection, the appropriate response is to file an appeal with the PTO board of appeals. However, applicants have an alternative. They can abandon the application and file a continuing application (refiling). Filing a continuing application starts the process over again.

From my 21 years of experience as a patent examiner, it appears that applicants use this alternative more often than filing an appeal. In fact, applicants often file one continuing application after another, frequently with no amendments to the claims. To end this abuse, the new patent rules would limit the number of continuing applications an applicant could file.

John Starsiak Jr.
Woodbridge, Va.

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