Saturday, January 07, 2006

USPTO proposed rulemaking on continuing applications

Several IP blogs and bulletin boards are talking about the USPTO's proposed rules impacting the practice of continuing applications.

For example, ip-updates:

On January 3, 2006, the U.S. Patent and Trademark Office issued two Notices of proposed rulemaking that are intended to "reduce the amount of rework by the USPTO" and "prioritize the claims reviewed during the examination process." The Notices give lengthy justifications for the changes, a sure sign that they will be quite controversial. Written comments must be received on or before May 3, 2006. No public hearing will be held.

Under the first proposed rule, a second or subsequent continued examination filing (whether a continuation application, a continuation-in-part application, or a request for continued examination) must be supported by a showing to the satisfaction of the Director as to why the amendment, argument, or evidence presented could not have been previously submitted, along with a $400 petition fee. Multiple applications that have the same effective filing date, overlapping disclosure, a common inventor, and a common assignee must include either an explanation of how the claims are patentably distinct, or a terminal disclaimer and explanation of why patentably indistinct claims have been filed in multiple applications. Commonly-owned applications and patents having a filing date within two months of each other and at least one common inventor must also be identified.

Given that Congressional patent reform 2005, in the form of H.R. 2795 is dead now, and was already perceived to be a goner after July 2005, the USPTO is stepping in to take some control over one issue discussed in the proposed reform, the "re-work imposed upon the USPTO" by continuing applications.

I had talked about some of the issues in "You only look twice," in the November 2005 issue of Intellectual Property Today. First Quillen and Webster, and then Lemley and Moore, had drawn attention to the perceived issue. Unfortunately, the numbers of Quillen and Webster, as adopted by Lemley and Moore, are wrong, so their perception of the problem is incorrect [see "Things aren't always what they seem to be," in Intellectual Property Today.]

Given that nothing is happening about fee diversion, and nothing is happening about other problems raised in the discussion of HR 2795, it's not surprising that the USPTO would play this card on "re-work". However, the reality is that for some applications, 18 or so hours of time at the USPTO isn't enough. Taking a second (or third) look through an RCE may be needed for some applications, and, if the process of further study crystallizes issues, it's not a bad thing for the public, or for the PTO (if things are being narrowed down, probably less time is needed for these second (or third) looks at the application) For applications filed on the same day, applicants are in some cases merely trying to avoid the delay created by USPTO restriction practices. Divisional practice at the USPTO is a form of "re-work" that the USPTO imposes on itself (and which generates revenue).


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