Saturday, September 10, 2005

Business Week: Divided Academic (Patent) Community

Business Week observed of patent reform: As this [patent reform] war heats up, all combatants are hiring lobbyists and appealing to a divided academic community for backup. With billions of dollars in property rights at stake, it's a fight neither side can afford to lose. [Hmmm, the academic community does not appear so much divided as it appears confused and befuddled over the Quillen and Webster work.]

Elswhere in the article: That's particularly frightening to drug and biotech companies. Unlike computer and software makers, Big Pharma and biotech depend on a few blockbuster innovations. ``If someone trespasses on our property, we want to be
able to evict them,'' says Charles Lucas, general counsel of the Biotechnology
Industry Organization. ``We don't want the court to say: 'Sorry, but they can
pay a little rent and stay in your house.''' [LBE note: and what about the Supreme Court decision in Merck v. Integra???]

Washington Outlook; Pg. 45 Vol. 3941 (July 4, 2005).


Miller, 9 Lewis & Clark L. Rev. 177 (2005)

footnote 104: The principal empirical study of these applications reports that, during fiscal years 1993-1998, "28.4% of the utility, plant, and reissue (UPR) applications filed in those years were not new or original applications, but were continuing applications claiming the benefit of the filing dates of previously filed applications." Cecil D. Quillen, Jr. & Ogden H. Webster,
Continuing Patent Applications and Performance of the U.S. Patent and Trademark Office, 11 Fed. Cir. B.J. 1, 3 (2001);
Their 28% figure remains a good estimate for continuing
applications for utility patents alone because reissue and plant patent applications make up such a small portion of the total number of applications filed in a given year.

[Miller's article does not mention RCEs or the data used by QW in the second QW paper, so the idea that 28% remains a good estimate may be questioned.]

footnote 116. See Mark A. Lemley & Kimberly A. Moore, Ending Abuse of Patent Continuations, 84 B.U. L. Rev. 63, 95 n.126 (2004);

Miller concluded: The basic patent document contains the types of information that it does not by accident, or through Providence, but because the Patent Office, using a power delegated by Congress, requires that it do so. Judges, who come to claim construction disputes long after Patent Office rules have forced the patent's
disclosure into a given shape, are relatively powerless to make the
patent document a more informative claim construction input. The Patent Office, by contrast, has plenary authority to mandate a form of patent disclosure that both informs the relevant art and clearly defines the patentee's right to exclude others, all at a reasonable cost to patent applicants and patent readers alike.
Within the broad outlines drawn by the Patent Act, the Patent Office is thus responsible for any basic shortcoming in the form of the patent disclosure that hinders the claim construction process.

[One notes that claim construction is not addressed in HR 2795.]

Bessen, 9 Lewis & Clark L. Rev. 1 (2005):

footnote 97: n97. Lemley & Moore, supra note 87, at 65 ("Congress and the courts have created a number of patent doctrines designed to combat the misuse of continuation applications. In the last ten years, they have changed the term of patents, ended the secrecy of most patent applications, revived the controversial doctrine of written description, and created an entirely new defense of prosecution laches. While these changes have indeed mitigated some of
the worst abuses of the continuation process, our data demonstrate that they are not likely to be effective in tackling the core of the problem."); id. at 69 ("The results of our comprehensive study of patent continuations shows that 23% of all patents granted from 1976 through 2000 claim priority to one or more previously filed applications."); id. ("Although there has been some fluctuation
over the years in the number of continuation patents filed, the trend has been a steady increase. In the mid-1970s, about one-fifth of all issued patents were based on continuations. By the mid-1990s the number of patents issued based on continuation applications climbed to 31%. That number has declined somewhat in the last several years, in part because of changes in the way patent term is calculated, but continuation patents still constitute about one-quarter of all issued patents.").

Hmmm, refer back QWII. Bessen has mistaken "continuation" for continuing.


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