More legal academic confusion about continuation applications

Further to the discussion of errors in Eli Kintisch's discussion of patent continuations in the July 28 issue of Science, one notes other interesting discussion of continuing applications.

CHRISTOPHER M. HOLMAN (University of Missouri-Kansas City School of Law) in an article entitled Biotechnology's Prescription for Patent Reform which appeared in 5 J. Marshall Rev. Intell. Prop. L. 317 (2006) wrote:

Not only does continuation practice enable a patent applicant to
keep an application alive in the PTO indefinitely, but it also allows the
applicant to change and broaden the claims during prosecution, and to file
divisional applications. n123 The divisional applications can result in multiple
patents, with overlapping claims and different expiration dates, ultimately
issuing out of the filing of a single initial patent application. n124 As a
result, a patent applicant can strategically exploit continuation practice in a
variety of ways.

(...)

Furthermore, by allowing applicants to amend and file new and broader
claims during the course of patent prosecution, it has been possible for
applicants to introduce claims that cover new developments in technology that were
not envisioned by the patentee at the time the original patent application
was filed. n126 Patent applicants also can abuse the process by filing
divisional patent applications incorporating new or revised claims to obtain
multiple patents that all cover essentially the same invention, a tactic
referred to as "evergreening" that has become especially associated with
pharmaceutical inventions. n127

Note to Professor Holman-->

After 1995, USPTO rules indicate that a patent will expire 20 years after the date of the earliest priority filing. Thus, continuation practice does NOT enable a patent applicant to keep an application alive in the PTO indefinitely. You are over ten years out of date.

Divisional applications are filed in response to a restriction requirement of the USPTO, NOT at the discretion of the applicant. Post-1995, all divisional applications out of a common parent will give rise to patents which expire AT THE SAME DATE.

It has NOT been possible for applicants to introduce claims that cover new developments in technology that were not envisioned by the patentee at the time the original patent application was filed. Read Chiron v. Genentech (especially 363 F.3d at 1255) or 88 JPTOS 743.

**
For those interested:

n126 See Lemley & Moore, Ending Abuse of Patent Continuations, 84 B.U. L. Rev. 63, 64 (2004) at 76.


n127 See Lemley & Moore, at 81-82.

The Lemley / Moore article in the Boston University Law Review has the erroneous footnote about the work of Robert Clarke, which has not been corrected to date.

****

As a minor footnote, in the case Pharmacia and Columbia University v. Par Pharmaceuticals, (CAFC 10 Aug 2005), there were two continuation applications leading to patents (US 5,296,504 and 5,422,368) based on a common parent, the '442 application. The CAFC affirmed the findings of DNJ judge Stanley Chesler that the '368 was invalid through inequitable conduct but that the sibling '504 was not (even though they were united by a terminal disclaimer). The CAFC, in passing, noted that Columbia University had not appealed a finding of inequitable conduct as to US 4,599,353.

The case concerned Par's attempt to sell a generic version of the glaucoma drug Xalatan.

The inequitable conduct concerned the failure of patentees to cite a research paper by their own declarant (Johan Stjernschantz) as well as false statements in the declaration.

***

A student paper by Christopher L. Logan entitled PATENT REFORM 2005: HR 2795 AND THE ROAD TO POST-GRANT OPPOSITIONS (74 UMKC L. Rev. 975 (2006) and thanking Professor Chris Holman for his assistance in developing this Comment) got through 15154 words without once mentioning Joe Hosteny's publications on oppositions.

The paper concludes: Patent quality has been and continues to be a persistent problem in the United States. While steps should be taken to improve patent quality,
it should not come at the expense of small-firm and independent inventors. The
proposed post-grant opposition system, while possibly improving patent quality,
would have a decided adverse impact on innovation provided by the little guy.

For issues of patent quality, Logan cites: Bronwyn H. Hall & Dietmar Harhoff, Post-Grant Reviews in the U.S. Patent System-Design Choices and Expected Impact, 19 Berkeley Tech. L.J. 989, 991 (2004).