Monday, December 20, 2004

Cases citing Lemley/Moore BULR

Speaking of laches, District Court Judge JOHN R. TUNHEIM in Anchor Wall v. Rockwood Retaining Wall, 2004 U.S. Dist. LEXIS 18458 wrote of the Lemley/Moore article in the Boston University Law Review:

-->This doctrine has been used to combat what some commentators describe as a frequently "used and abused" practice of "continuation" applications.

See generally Mark A. Lemley and Kimberly A. Moore, Ending Abuse of Patent Continuations, 84 B.U. L. Rev. 63, 64 (2004). [HN18] "Continuation" is the term used to describe an applicant's ability to get perpetual "bites at the apple" by resubmitting applications. Id. Continuations allow "applicants dissatisfied with the course of patent prosecution" to "abandon an application and file a continuation." Id. "Alternatively, a patentee can prosecute one or more patents to issue and also keep a continuation application on file, hoping to win a better patent from the PTO in the future." Id. Patentees control whether or not a patent issues, even if the PTO has approved the patent. Id. ("Even when the examiner concludes that an invention is patentable and issues a 'notice of allowance,' the patent applicant always retains the right to abandon the application that was deemed patentable and start the process over again."). "Applicants similarly manipulate the system by taking the patent awarded by the PTO, but also seeking additional or broader claims arising out of the same patent application." Id. (also discussing problems with continuation). n12

n12 These commentators believe that these practices constitute "abuse" of the continuation process. Other commentators no doubt believe that these practices are good for competition. There is no disagreement that the practices are allowed by the PTO.<--

The term "continuation" is not used to describe a patent applicant's ability to get perpetual "bites at the apple" by resubmitting applications. Under current law, the patent term is limited to 20 years from the date of filing of the earliest priority application. There is nothing "perpetual" about this. Further, if the applicant submitted the same claims in a later continuation application with no different argument, the applicant would get an immediate "final" rejection of the claims in the continuation application. Of "withdrawals from issue," one notes that they are not frequent and most typically occur because of newly uncovered prior art. Further, if an applicant merely wanted broader claims, the applicant would take allowance of the application with narrower claims (and file an application with broader claims), rather than abandon the application with narrower claims.

A different issue is with RCE's, which are different from the continuation applications discussed by Lemley and Moore. From an IP board:

-->My favorite was when I would get Examiners call me about my AF [after final] response and they would tell me some BS excuse that they can't allow the claims, but they would suggest an amendment. Then, if I agreed to the amendment, they would indicate that they were un-willing to enter the amendments after final, but if I filed an RCE, they could then examine the claims. And 9 times out of 10, the cases were allowed on a first action post RCE.<--

Later, the court mentions the BULR article again: See, e.g., Lemley and Moore, supra, at 65 (noting that "In the last ten years, [the courts] created an entirely new defense of prosecution laches." The authors later note, however, that prosecution laches is really a "revived" defense).

A different court addressed the prosecution laches issue in the case Biogen v. Trustees of Columbia University, 332 F. Supp. 2d 286 (D Mass 2004):

-->In the instant case, the '275 patent was issued twenty-two years after the application from which it derives was filed. There were several delays in the prosecution of the application. Columbia [University] has provided no evidence, or even argument, to explain why it took twenty-two years to obtain the '275 patent or to justify the delays in that process. n6 The timing of its issuance strongly suggests that Columbia deliberately delayed obtaining a patent that it always intended to secure in order to make it effective just as the other Axel patents expired and thus increase its commercial value by maximizing the period in which the public would have to pay Columbia royalties for the use of the Axel patents.<--

n6 "Analyzing the 2,224,379 patents that issued from 1976 through 2000, two commentators found that prosecution of these patents 'took an average of 2.47 years from the earliest claimed filing date to issuance date.'" Pls.' Mem. in Supp. of Mot. for Prelim. Injunction at 29 n.8 (quoting Mark A Lemley & Kimberly A Moore, "Ending Abuse of Patent Continuations," 84 B.U. L. Rev. 63, 71 (2004)).

The article "Ending Abuse of Patent Continuations" was not well-received by practitioners. Before the above-noted district courts had cited "Ending Abuse of Patent Continuations," there were comments as the following:

From a board:

+++>These people blew their credibilty with any competent patent attorney in the first few sentences:

>> One of the oddest things to an outsider about the United States patent system is that due to continuation practice it is impossible for the U.S. Patent and Trademark Office (PTO) ever to finally reject a patent application.


>> Continuation applications have led to abuse of the patent prosecution process.


>> They serve very little useful purpose

Wrong. Way wrong.

>> and what benefits they confer may be outweighed by their potential for mischief.


Nobody denies that Lemelson-type submarining is a problem. However, the courts have tools at their disposal to limit this problem out of existence, namely laches and inequitable conduct. Why do the authors blame the PTO, and the patent system in general, for the court system's failure to apply equitable doctrines in an adequate manner??<+++

+++>Perhaps I am missing something by only reading the abstract but, aside from the misleading premise that it is " ever finally reject an application", what is inherently bad about continuations that this author predicts that "The world would probably be a better place if they were abolished"?

In spite of an antagonistic attitude towards them from the beginning, I don't see a single reason recited that links continuations with any remotely negative societal, commercial, or personal ramification. <+++

Moreover, the article had been criticized in the legal literature.

The argument by Quillen/Webster and Lemley/Moore has been that continuing application practice (including continuations, continuations-in-part, divisionals) both diminishes patent quality (as manifested by an elevated grant rate) and consumes resources at the PTO for aggressive re-argumentation. Lemley/Moore asserted that there is no such thing as a final rejection at the PTO.

The idea that there is an elevated grant rate has been challenged, first by Robert Clarke. The article by Lemley and Moore in the Boston University Law Review misrepresented the work of Robert Clarke on patent grant rate. Contrary to what Lemley and Moore said, Clarke did not assume that every continuation application resulted in a patent. With this assertion of Lemley and Moore invalidated, there is nothing within the Lemley and Moore article to distinguish between the models of Clarke and those of Quillen/Webster and no justification for saying that the patent grant numbers of Quillen/Webster are the best we have. In fact, they are not.

An article on had the following "tip":

If you're interested in applying for a patent, contact your attorney to act promptly. You need to secure your rights and file continuation and divisional applications. Otherwise, you run the risk a court ruling involving the laches doctrine when you try to enforce the validity of the patent.

[As an aside, the problem with Lemelson was BECAUSE he filed lots of continuation and divisional applications. The perceived problem with Lemelson was that he waited long periods of time, and created so-called submarine patents. Under current law, this can no longer happen for applications filed after 1995. A separate perceived problem with Lemelson was that the later patent applications didn't really "cover" the later technology. Ironically, in the foreseeability test of Festo (535 US 722 (2002)), one allows equivalent patent protection to items that were NOT FORESEEABLE to one of ordinary skill at the time the amendment was made. That is, for patent applications that didn't teach the later technology.]

initial tip from


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