Patent Law

Another example of rising restriction requirements?

By J. Matthew Buchanan, Stephen M. Nipper, and Douglas Sorocco.

As some of you may know, I’m one of the parachute packers here at RethinkIP. That means I’m usually behind the scenes updating the RSS Mojo with the latest news from the USPTO.  But, I’m also a law student with a slight obsession for everything IP and sometimes I just gotta lend my two cents.

In a recent post Stephen Nipper revealed he was spending some time saying “hmm” over the possibility that the recent drop in the allowance rate and rising restriction requirements might indeed be evidence of a secret change to official USPTO policy.

Well now it’s official, at least for applications containing nucleotide sequences. 

On March 12^th the USPTO issued a pre-OG notice indicating it is rescinding the partial waiver of requirements and unity of invention it provided in November 1996 for applications that included claims for isolated and purified DNA fragments and other certain DNA fragment combinations.

In 1996, the PTO remarked that it needed to “simplify and standardize” its policies and procedures in order to promote the growth of the biotech industry. The waiver allowed applicants to claim up to ten independent and distinct nucleotide sequences in one application. 

The numbers indicate the waiver worked. According to statistics from the Georgetown University DNA database, in 1996 there were a little over 1,500 DNA-based patents issued in that year. At its peak in 2001, 4,500 DNA-based patents issued. According to Georgetown, there are over 37,000 DNA-based patents that have issued to date. That’s of course not counting all those pending applications claiming nucleotide sequences (as of today, there are over 41,000 DNA-based applications in the pipeline).

Sheer volume and advances over the past ten years in biotechnology have obviously forced the PTO to rethink its policy.

Might the PTO be forced to do the same thing in other areas where patents have been proliferating at high rates (e.g. software and business method patents)?  I look forward to your comments.

Full post as published by Rethink(IP) on March 22, 2007 (boomark / email).