Monday, June 30, 2008


In the article titled "THE CONTROVERSY SURROUNDING CONTINUING APPLICATIONS AND REQUESTS FOR CONTINUED EXAMINATION," [7 J. Marshall Rev. Intell. Prop. L. 545], Scott D. Barnett concludes:

It is evident that there is a real need to increase patent prosecution efficiency, improve the quality of patents that issue, and decrease the current backlog. n215 Further, permitting applicants to file an unlimited number of continuing applications and RCEs has led to occasional abuses of the patent system. n216 (...)

This proposal suggests that the Federal Circuit, if it gets the opportunity, should affirm the district court's decision to void the Final Rules. In doing so, the Court would protect a process that serves as a vital means of obtaining adequate patent protection and compel the USPTO to seek less intrusive means of achieving its goals. Such more narrowly tailored means of achieving the USPTO's goals include: (1) modifying the Final Rules to enable applicants to file more continuing applications or RCEs without a petition and showing for patent applications directed to the unpredictable arts, n222 (2) increasing the hiring and training of examiners, n223 and (3) charging higher fees for filing multiple continuing applications or RCEs to deter abuse. n224

LBE was cited in footnote 181: Letter from Lawrence Ebert, to the U.S. Pat. & Trademark Office 2 (Apr. 30, 2006), available at comments/fpp-continuation/ebert2.pdf [hereinafter Ebert Letter] (quoting the just-n-examiner blog, http://just-n, as saying: "I would think limiting continuations would hurt examiner productivity, as applicants will be unlikely to ever cancel claims to expedite issuance, thereby further increasing the number of appeals").

that is, cited for citing someone else, in this case, an anonymous blog.

LBE's article on the continuation issue, which appeared in 88 JPTOS 743 was not cited.

The Lemley and Moore "Ending Abuse" article appeared in footnote 3:

But cf. Mark A. Lemley & Kimberly A. Moore, Ending Abuse of Patent Continuations, 84 B.U.L. Rev. 63, 64 (2004). This article suggests that an applicant's right to file an unlimited number of continuing applications is "[o]ne of the oddest things about the United States patent system." Id. The right to file an unlimited number of continuing applications is criticized because it "introduces substantial delay and uncertainty into the lives of a patentee's competitors," wears down examiners, may be used to broaden a patentee's claims through hindsight, and allows for "submarine patenting." Id. at 65.

Footnote 66 observes: ); Lemley & Moore, supra note 3, at 74-75 (noting that the only way an examiner can dispose of an application is by allowing it and therefore, when faced with a determined applicant, the examiner has an incentive to allow the application).

Mark Lemley was also cited in footnote 197: John R. Allison & Mark A. Lemley, Who's Patenting What: An Empirical Exploration of Patent Prosecution, 53 VAND. L. REV. 2099, 2125 (2000). "There is a strong relationship between area of technology and the total number of applications filed before a patent issued." Id.

and in footnote 203: Allison & Lemley, supra note 197, at 2154 tbl.9. While the average patent in 1996-1998 issued from 1.50 applications, the aver-age pharmaceutical patent issued from 2.27 applications and the average biotechnology patent from 2.38 applications


Post a Comment

<< Home