Friday, August 04, 2006

The July 28 issue of Science on continuations and proposed rules at the USPTO

The July 28 issue of Science had some remarkable misstatements about continuation applications at the USPTO. If you ever wondered how the fraud of Hwang Woo-Suk got published in Science, look at the following:

313 Science 425 (July 28, 2006)


Although Genentech eventually won the case, patent
attorneys say that Chiron's attempt to strike back at
a rival that gotten to the market first exposes a
well-used loophole in U.S. patent law: Companies can
continually add detail to a pending application while
benefitting from the early filing date of the initial
scientific discovery. Such revised applications,
known as continuations, last year made up nearly
one-third of all filings with the U.S. Patent and
Trademark Office (PTO).

"Examiners review the same applications over and over
instead of reviewing new applications," says PTO
Patent Commissioner John Doll. The new limit, he told
Science this week, will "improve quality and move
[PTO] backlog."

Although the comment period closed in May, the
proposal continues to generate buzz among the
intellectual-property community. Like other proposed
reforms at PTO [sic], the changes have pitted biotech
companies and biomedical research institutions against
the computing and software sectors. The former argue
that the system works well enough now; the latter say
that so-called patent trolls use continued
applications to prey on true innovators.

Yes, I did submit a "letter to the editor" of Science on August 3, 2006.

from Science on August 3, 2006:

Dear author:

Thank you for using Science's Web submission site.


from ezine:

In the November 2005 issue of Intellectual Property Today, I presented some data on continuing applications for FY 2004 from the PTO, and noted the USPTO is evaluating the possibility of limiting continuations, which crystallized in the Federal Register in January 2006. Two readers from Chicago, Kevin Noonan and Paul Reinfelds, sent along data for FY 2005, and noted, with the small number of “second” continuing applications, that the PTO proposal limiting continuing applications, even if effected, would not likely solve the problem faced by the PTO.

[Endnote 18 stated of the data for FY 2005: There were 63,000 continuing applications, which included 44,500 cons/cips and 18,500 divisionals. Of these, 11,800 were second, or subsequent, applications. Separately, there were 52,000 RCEs, of which 10,000 were second, or subsequent. Thus, 21,800 applications of 384,228, were second or subsequent, which is 5.7%. As for FY2004, RCEs were the single most abundant “continuing” form, 52,000 of 384,228 [13.5%]. All “continuing” forms combined constituted 115,000 of 384,228 [30%]. The contents of Endnote 18 were cited in comments made to the USPTO about proposed rulemaking in the area of continuing applications: The comments referred to my April 2006 article in Intellectual Property Today, which unknown to me at the time of the comments, was not actually published by Intellectual Property Today. These comments to the USPTO objected to the proposed limitations on second, and subsequent, continuing applications on the basis that, even if implemented, the proposed limitations would NOT resolve the application backlog problem AND separately would adversely impact many reasonable uses of continuing application practice.]

from Ebert, Lawrence. "Edison as a Patent Troll, or Where is California Going in Stem Cell Research?." EzineArticles 16 June 2006.

One of the errors made in the July 28 article in Science (confusing the number of ALL continuing applications with only continuations) had been previously made by a legal author and was discussed in Intellectual Property Today and thus is within LEXIS. Apparently, Science doesn't check the prior literature. The idea that "new matter" can be in continuations is baffling.


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