Monday, March 19, 2007

2006 Proposed Changes To Practice for Continuing Applications, RCE Practice, and Applications Containing Patentably Indistinct Claims

In the January 3, 2006 Federal Register, the U.S. Patent and Trademark Office published proposed changes to practice for continuing applications, requests for continued examining practice, and applications containing patentable indistinct claims. The rule changes would have limited applicants' ability to file continuation patent applications. Among other things, the proposed rule changes would have required that second or subsequent continued examination filings, whether a continuation application, a continuation-in-part application, or a request for continued examination, be supported by a “showing” as to why the amendment, argument, or evidence presented could not have been previously submitted.

The proposed changes can be found here:
Luckily, these rule changes have not been adopted.

The proposed rules start by noting that each continued application filing, whether a continuing application or RCE, requires the USPTO to delay taking up a new application and thus contributes to the backlog of unexamined applications before the office. They state that, in addition, current practice allows an applicant to generate an unlimited string of continued examination filings from an initial application. In such a string of continued examination filing, the exchange between examiners and applicants becomes less beneficial and suffers from diminishing returns. Moreover, the possible issuance of multiple patents arising from such a process tends to defeat the public notice function of patent claims in the initial application.

A flaw with that logic is that the applicants pay a fee for each continuation application and these continuations are less work for examiners that have already read the application and studies the prior art. The Office should be happy to have continuations which provide more fees per man hour than new cases.

The rule change notice mentions that commentators have noted that the current unrestricted continuing application practices preclude the Office from ever finally rejecting an application or even from ever finally allowing an application. The notice refers to an article by Mark A. Lemley and Kimberly A. Moore. However, neither of these authors are practicing registered patent attorneys. Both are professors. Though they are accomplished, perhaps they have not experienced how difficult it can be to obtain reasonable claim coverage when dealing with difficult examiners.

Applicants need continuations because examiners sometimes don't fully understand an invention or do a complete search before a first continuation is filed. As the natural inclination is to reject an application, it is sometimes easier to get broader claims allowed in continuations than in original applications. As the Federal Circuit tends to construe patent claims narrowly and makes it difficult to rely on the Doctrine of Equivalents, continuation practice is necessary to attempt to broaden out claims as much as possible and claim an invention in alternative manners.

Many people believe that the USPTO lacks the statutory authority under 35 U.S.C. § 120 to limit the number of copending continuation applications originating from an original application. There are no provisions in Section 120 that grant statutory authority to the USPTO to limit the number of continuations that can be filed.

Many organizations commented on these proposed rule changes. Please click here:

It is interesting to compare the positions of companies with dominant market positions and existing large patent portfolios with those of everyone else, such as patent bar associations and universities. At present, patents can be a powerful weapon even in the hands of small companies. Contrary to the position of some that the ability to file Continuation applications should be restricted, many patent attorneys feel that continuations are often necessary because Examiners do not have sufficient time to properly examine applications, and routinely issue "Final" rejections before fully understanding the invention. A continuation becomes necessary just to keep the discussion going long enough to make sure the Examiner understands the invention described in a patent application and understands the prior art.

Some companies are part of a lobbying group called the "Coalition for Patent Fairness":

It is suspected by some that the proposed rule changes are the result of lobbying efforts by would-be infringers who want to weaken the patent system now that they are in dominant positions. However, it is often small companies that are major engines of growth and that create jobs in the U.S.

Even though these proposed rule changes were dramatic, no public hearing was planned.