Monday, October 30, 2006

47 IDEA 9-41 discusses issues in continuations at USPTO

Further to the "Town Hall" meetings on continuations, the beginning of Volume 47 of the journal IDEA has a transcript of some discussion.

A comment on someone else's blog in February 2006 had observed:

Rather, it seemed apparent that the real reason for restricting continuations was to restrict applicants’ ability to use a continuation application to address competitors’ efforts to design around.

In the discussion in IDEA, this was termed "late claiming." IPBiz notes that just from the words used to describe the issue, one can see these two people have a different take on the issue.

One really needed historical background to appreciate some of the comments in IDEA. The case Muncie Gear Works, Inc. v. Outboard Marine & Mfg. Co., 315 U.S. 759, 62 S.Ct. 865, 86 L.Ed. 1171 (1942) became the pivotal case on late claiming.

The case was cited, for example, in General Instrument v. Hughes Aircraft:

We are drawn to the conclusion that claim 60 is invalid in that it is not linked integrally or essentially enough with what had been set forth in the prior disclosures of the North patent. Since what was old did not describe what was added, the latter must be considered new matter. Harries v. Air King Products Co., 183 F.2d 158 (2d Cir. 1950). And since commercial sales of the 'Hughes commercial diode', which embodied all the 'new matter' embraced in claim 60, had commenced over a year prior to the filing thereof the claim fails for 'late claiming'. 35 U.S.C. 102(b); Muncie Gear Works, Inc. v. Outboard Marine & Mfg. Co., 315 U.S. 759, 62 S.Ct. 865, 86 L.Ed. 1171 (1942).

For historical perspective, General Instrument was represented by W. Houston Kenyon, Jr. and Theodore S. Kenyon of Kenyon & Kenyon.

**Some isolated text from IDEA-->

page 9

Mr. Jepson: The delta between the number of applications that are being filed and the applications that are being disposed of is therefore growing dramatically. The PTO believes that it cannot hire its way out of this problem and as a consequence is looking for alternative solutions.

page 11
Anyway, at the PTO Town Hall Meetings, there was little support from very large and active crowds of mostly patent practitioners. Most were strongly opposed to these proposals.

Mr Figg
But I think we should all keep in mind that there are two issues here. One is the effect that continuations have on backlog at the Patent Office and the other is the abuse ...

Mr Kirk

" seems to me that you are catching up, and you are outrunning the workload through the hiring of new people."

Mr. Simon
As a result, and in light of the points made by Professors Moore and Lemley, we think continuations are bad, as it makes it virtually impossible to have a licensing discussion with somebody on why you don't infringe because whatever you tell them, they're going to turn around and rewrite their claims to try to cover. But the examiners are overworked, and as pointed out by Mr. Rines, inexperienced.

Ms. Hogle
a straight continuation, a CIP, and an RCE are very different beasts. They're used in very different situations. An RCE, of course, is a function of the, what I consider, very poor patent examination process that's going on right now.

Muncie Gear Works, 315 us 759 (1942) on late claiming

p.41 end

***Other stuff -->
The paper "Probabilistic Patents" mentions the possible solution "hire more examiners" exactly once, without any discussion.

Jim Ivey made a point about the "patent grant rate" discussion:

My unscientific guesstimate is that fewer than 25% of application are allowed without substantial narrowing during prosecution -- perhaps fewer than 15% or even 10%.

The reality is that it's extremely rare that an applicant's specific implementation is so exactly duplicative of prior implementations that the applicant can't get some level of patent protection, albeit fairly narrow at times. That "extremely rare" circumstance is probably at or below the 3% suggested by the statistic. More often, I find applicants determine that, although they could get very narrow protection in view of circumstances revealed during prosecution, the narrowness of the available protection does not justify the expense and effort of continuing the application. I would guess that such determinations make up the difference between the "extremely rare" case I mentioned and the quoted 3%. The remainder accept the substantially narrowed protection to allow the case to issue.


My very rough guess would be 10% or less of all filed claims are allowed without modification of any kind. Perhaps 15% are allowed without any substantive modification (I know, a subjective criteria that's hard to evaluate -- but that's the nature of the patent business).

So, the presumption that allowance of many applications means the Patent Office isn't a meaningful filter is just not valid from the quoted statistics.

My second problem is the logical leap from many applications issued to many applications improperly issued. It's simply not a valid assumption.


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