Tuesday, August 08, 2006

An open call to patent attorneys about the continuing application issue

On August 4, IPBiz noted that a "letter to the editor," critical of an article on continuation applications (313 Science 425) had been submitted to Science. On August 8, Science stated that the letter would NOT be printed AND that Science stood by the accuracy of the article. Eli Kintisch stated that both noted patent attorneys and USPTO officials had verified the accuracy of the article.

The latter reminded me of what the editor of Energy & Fuels once told me of an article by Wertz & Bissell in Energy & Fuels, 1994, 8, 613-617, discussed at
SSI11. Of course, the experts who backed that paper remained anonymous and never furnished any reasoning to back the paper.

Blogs weren't readily available back in 1994. However, now I am submitting an open invitation to all noted patent attorneys who believe that new matter can be added to continuations to step forward and identify yourselves. Also, anyone who believes that continuation applications constituted nearly one third of all patent applications last year can also step forward and sign in. As an added bonus, such noted patent attorneys may be publicized at places other than IPBiz.

An email to Science on 8 August 06:

I understand that you will not be publishing my "letter to the editor" concerning your article "U.S. Wants to Curtail Add-On Patents to Reduce Backlog," 313 Science 425.

For future reference, I dispute the accuracy of the following statement which appears in your article.

"Companies can continually add detail to a pending application while benefiting from the early filing date of the initial 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)."

A continuation application utilizes the specification of the parent application and does not ADD detail to the parent. Every claim of a continuation application must conform to the written description and enablement requirements of 35 USC 112. A continuation-in-part application does add detail to the parent, but the effective priority date of the added detail is NOT the early filing date of the initial discovery.

Continuation applications do not make up nearly one third of all filings to the PTO.

One does understand the Hwang Woo-Suk matter in view of the reluctance of Science to change/correct/modify articles which are in error.


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