The dominance of RCE's and the Lemley/Moore conjecture
The Patently-O blog presents data showing the growth in RCEs as a total fraction of all continuing applications.
The dominance of RCEs had been noted by LBE in a comment to the USPTO and in an article in JPTOS ["On the proposal to restrict continuing applications," 88 JPTOS 743 (2006)]
In arguing FOR limitations on continuations, Lemley and Moore had written in Ending
Abuse ..., 84 BULR 64, 65 (2004):
Continuation practice has a number of pernicious consequences, which we detail
in Part II. First, at a minimum, continuation practice introduces substantial delay
n4 and uncertainty into the lives of a patentee's competitors, who cannot know
whether a patent application is pending in most circumstances. [FALSE] Second, the
structure of the PTO suggests that continuations may well succeed in "wearing
down" the examiner, so that the applicant obtains a broad patent not because he
deserves one, but because the examiner has neither incentive nor will to hold out
any longer. [FALSE as to RCEs] Third, continuation practice can be - and has been -
used strategically to gain advantages over competitors by waiting to see what
product the competitor will make, and then drafting patent claims specifically
designed to cover that product. [FALSE as to RCEs] Finally, some patentees have used continuation
practice to delay the issuance of their patent precisely in order to
surprise a mature industry, a process known as "submarine patenting." [FALSE]
The fact that RCEs have become the most abundant form of continuing application severely
undercuts the conjecture of Lemley and Moore in the year 2004. [One notes the Patently-O post shows
RCEs were the most abundant form of continuing application in the year 2004 and in the year 2003.]
In an RCE, one cannot add new matter, and one cannot change claim structure to introduce a new invention,
so there is NO ABILITY to use an RCE strategically to gain advantage over competitors. One is not going to use an
RCE to broaden claim scope. Further, the impact of submarine patenting ended with rules changes in 1995, and
submarine patenting could not be done with RCEs.
***
Of other issues with the Lemley/Moore paper, see PATENT GRANT RATES AT THE UNITED STATES PATENT AND TRADEMARK OFFICE
The dominance of RCEs had been noted by LBE in a comment to the USPTO and in an article in JPTOS ["On the proposal to restrict continuing applications," 88 JPTOS 743 (2006)]
In arguing FOR limitations on continuations, Lemley and Moore had written in Ending
Abuse ..., 84 BULR 64, 65 (2004):
Continuation practice has a number of pernicious consequences, which we detail
in Part II. First, at a minimum, continuation practice introduces substantial delay
n4 and uncertainty into the lives of a patentee's competitors, who cannot know
whether a patent application is pending in most circumstances. [FALSE] Second, the
structure of the PTO suggests that continuations may well succeed in "wearing
down" the examiner, so that the applicant obtains a broad patent not because he
deserves one, but because the examiner has neither incentive nor will to hold out
any longer. [FALSE as to RCEs] Third, continuation practice can be - and has been -
used strategically to gain advantages over competitors by waiting to see what
product the competitor will make, and then drafting patent claims specifically
designed to cover that product. [FALSE as to RCEs] Finally, some patentees have used continuation
practice to delay the issuance of their patent precisely in order to
surprise a mature industry, a process known as "submarine patenting." [FALSE]
The fact that RCEs have become the most abundant form of continuing application severely
undercuts the conjecture of Lemley and Moore in the year 2004. [One notes the Patently-O post shows
RCEs were the most abundant form of continuing application in the year 2004 and in the year 2003.]
In an RCE, one cannot add new matter, and one cannot change claim structure to introduce a new invention,
so there is NO ABILITY to use an RCE strategically to gain advantage over competitors. One is not going to use an
RCE to broaden claim scope. Further, the impact of submarine patenting ended with rules changes in 1995, and
submarine patenting could not be done with RCEs.
***
Of other issues with the Lemley/Moore paper, see PATENT GRANT RATES AT THE UNITED STATES PATENT AND TRADEMARK OFFICE
posted by Lawrence B. Ebert at 5:03 AM
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