USPTO has "backlog" for posting comments on rulemaking about continuing applications
Ironically symbolic, the USPTO has a "backlog" in its posting of comments on the proposed rulemaking about continuing applications. Although the deadline for submission of comments ended on May 3, 2006, the USPTO has only posted comments through April 25, 2006 as of May 9. These posted comments include those of 4 law firms and 76 individuals. [UPDATE, May 11: the postings remain the same (current through April 25, the same 4/76) more than a week after the deadline for response passed.]
One comment that does appear is an email from Cecil Quillen, dated April 22, 2006. Curiously, Mr. Quillen OPPOSES the proposed rulemaking, but only because he wants the USPTO to seek legislation abolishing ALL continuing applications except divisionals. Mr. Quillen and I are in agreement in suspecting that the proposed rulemaking is beyond the authority of the USPTO.
Additionally, Mr. Quillen makes reference to an as-yet unpublished article by Debra Koker on the evils of continuing application practice.
Koker, apparently Boston University Law Class of 2006, reviewed/summarized the Lemley/Moore paper on "ending abuse" [which she cites as Boston University Law Review, Vol. 84, page 63 (2004)] and wrote:
The anything-goes character of patent continuations creates many problems. The biggest is delay. The average continuation adds over two years to the total time required to obtain a patent, though there are examples of continuations dragging on for decades. During this time, the applicant’s competitors may not know that there are pending applications covering the products they are developing. Although many patent applications are published after 18 months, applicants are not required to publish their applications if they are not also applying for foreign patents.
The second problem lies in the fact that 85 percent of applications mature into granted patents at some point. The authors hypothesize that this figure represents the practice of “wearing-down” the patent examiner, or “examiner-shopping,” which results in patents that would otherwise not have been granted.
**
I had written in Kent-J. Int. Prop. in 2004:
In recent proposals for patent reform made by the Federal Trade Commission and by the National Academy of Sciences, there has been discussion of the possibility that the grant rate of patents by the United States Patent and Trademark Office [USPTO] is high compared to that of other industrialized countries, including that of Japan and those of Europe. This discussion began with papers of Quillen and Webster that suggested that the grant rate might be as high as 97% and more reasonably is at least 85%. Although the actual grant rate at the USPTO is typically in the range 62% to 68%, Quillen and Webster suggested the higher numbers based on an analysis of continuing applications (including continuations, divisionals, and continuations-in-part). The present paper suggests that the analysis of Quillen and Webster is flawed both legally and methodologically, and that recent work by Clarke, which places the corrected grant rate at less than 75%, is more accurate.
(...)
There is no basis for the specific criticism by Lemley and Moore of Clarke. In fact, it appears that Clarke's approach is more accurate than that of Quillen and Webster, and, as such, the 74% number, rather than the 85% number, should be deemed more reliable.
One comment that does appear is an email from Cecil Quillen, dated April 22, 2006. Curiously, Mr. Quillen OPPOSES the proposed rulemaking, but only because he wants the USPTO to seek legislation abolishing ALL continuing applications except divisionals. Mr. Quillen and I are in agreement in suspecting that the proposed rulemaking is beyond the authority of the USPTO.
Additionally, Mr. Quillen makes reference to an as-yet unpublished article by Debra Koker on the evils of continuing application practice.
Koker, apparently Boston University Law Class of 2006, reviewed/summarized the Lemley/Moore paper on "ending abuse" [which she cites as Boston University Law Review, Vol. 84, page 63 (2004)] and wrote:
The anything-goes character of patent continuations creates many problems. The biggest is delay. The average continuation adds over two years to the total time required to obtain a patent, though there are examples of continuations dragging on for decades. During this time, the applicant’s competitors may not know that there are pending applications covering the products they are developing. Although many patent applications are published after 18 months, applicants are not required to publish their applications if they are not also applying for foreign patents.
The second problem lies in the fact that 85 percent of applications mature into granted patents at some point. The authors hypothesize that this figure represents the practice of “wearing-down” the patent examiner, or “examiner-shopping,” which results in patents that would otherwise not have been granted.
**
I had written in Kent-J. Int. Prop. in 2004:
In recent proposals for patent reform made by the Federal Trade Commission and by the National Academy of Sciences, there has been discussion of the possibility that the grant rate of patents by the United States Patent and Trademark Office [USPTO] is high compared to that of other industrialized countries, including that of Japan and those of Europe. This discussion began with papers of Quillen and Webster that suggested that the grant rate might be as high as 97% and more reasonably is at least 85%. Although the actual grant rate at the USPTO is typically in the range 62% to 68%, Quillen and Webster suggested the higher numbers based on an analysis of continuing applications (including continuations, divisionals, and continuations-in-part). The present paper suggests that the analysis of Quillen and Webster is flawed both legally and methodologically, and that recent work by Clarke, which places the corrected grant rate at less than 75%, is more accurate.
(...)
There is no basis for the specific criticism by Lemley and Moore of Clarke. In fact, it appears that Clarke's approach is more accurate than that of Quillen and Webster, and, as such, the 74% number, rather than the 85% number, should be deemed more reliable.
posted by Lawrence B. Ebert at 9:01 PM
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