Increased applications and requirements drain resources.

It is out of deep concern for the for the future innovative capacity for the United States that I submit the following brief comments regarding the Board of Patent Appeals and Interferences’ Rules of Practice in Ex Parte Appeals, Advance Notice of Proposed Rulemaking, published on December 22, 2009. I am commenting in the capacity of a prolific inventor, with numerous issued patents and patent applications, as a consultant to inventors and investors in innovation, as an investor, and as a concerned citizen.

Many of the rules in the above referenced document will have a profoundly negative impact in invention and innovation in the US, especially on its economy and its innovative capacity, as well as on its capacity to attract and benefit from new innovative talent. The time and resources simply do not allow me to adequately address all of these negative effects in detail, however a few rules in particular are worth close examination:

Bd. R. 41.39, transfers responsibility for an incomplete, faulty, or inadequately researched examiner response to the applicant. This is not only burdensome to the applicant, but effectively creates a process (potentially repeated at each stage application and appeal) that has no upper bound in expense for the applicant, or the USPTO.

At each stage in the process, the applicant can be confronted with new, previously undisclosed material to which he must respond, making it impossible to make any determination of expected costs in terms of technical, financial or other resources. Such an unbounded, open-ended process also discourages responsible performance on the part of examiners, and wastes limited USPTO resources on what is essentially a game of attrition in which the party with the fewest resources is ultimately forced to capitulate. The immediate outcome of such a rule will be to drive all but the largest and most resource-rich applicants from the system, and drain USPTO resources in open-ended disputes in which the outcome is determined by the amount of resources that can be brought to bear, rather than the merits of the case. The ultimate effect will be an exodus of individual and small-scale inventors, who are responsible for the bulk of field-opening innovation, from the US system to other countries where more rational processes are employed.