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Patent Office Issues New Guidelines to Crack Down on Trolls

September 11, 2007

Heather Mewes, a patent litigation partner at Fenwick & West, was recently quoted in The San Francisco Daily Journal. She discusses how recent reforms to the patent system will affect patent litigation.

Last month, in an effort to reform the patent system and reduce "patent trolling," officials at the US Patent and Trademark Office published new guidelines that will curtail the number of continuation applications allowed. Continuations are filed by applicants seeking additional claims to an invention disclosed in an earlier application.

Patent trolls, also called "patent stalkers," abuse the patent system by capturing patents for emerging technologies and keeping chains of continuous patents alive. They then target business in these technological areas and demand licensing money. When arguments are made against them during litigation, they file new continuations to present additional claims.

The reform measures, which take effect in November 2007, will limit the continuations that may be filed and the number of claims in each patent.

According to Mewes, a limited number of claims will make it easier for patent litigators to defend against infringement lawsuits by decreasing the difficulty and cost of rebutting infringement charges.

"I've had cases where there are over 100 claims in patents," she says. "When you're dealing with that many claims, it can be a huge burden."