Sunday, March 04, 2007

Where is the origin of abuse in continuation applications?

In the continuing saga of continuation applications at the USPTO, the is a comment on Patently-O of some relevance. It suggests that continuation abuse might not originate with patent applicants, but rather with the method of examining. From Patently-O -->

While going through the process of becoming a primary examiner, I developed a simple approach to every application before me. I viewed the first action as the most important act that would dictate course of the remaining prosecution. A great majority of my time allotted per BD was spent searching for the art most relevant *to the invention.* Sure, claims as filed were very broad, but when a prosecutor saw the art I presented, the claims were most often amended accordingly. There was never a need to search again except for art that published since my first search. This worked well for everyone involved. I continued examining this way until I left the PTO, but not without someone challenging me from time-to-time. I had no fear of these challenges. Each time I confronted the accusers, and they would melt away.

The point of all this is that the PTO management does not appreciate any philosophy of providing assistance to the applicant, which works to reduce unnecessary continuations and result in the most efficient disposal of applications. If the PTO would embrace and promote professionalism, the position of examiner would receive more respect, and more would decide to continue examining as a career. (The above comment about “Office Space II” is so true.) It would reduce unnecessary continuations of all kinds and provide an atmosphere of greater efficiency.

The "above comment" was -->

EPA - what strikes me about the "sweeping changes" [for reform of continuing applications] the USPTO wants to implement is that, for the most part, only USPTO management seems to like them. Patent attorneys don't like them. Patent applicants don't like them. Patent examiners don't like them. Yet, USPTO management does not seem to care (or want to listen). I have a great idea for new movie: "Office Space II - PTO Commissioner Lumbergh"

Further to various discussion of whether the proposed rulemaking on continuations is "dead as a doornail" or vibrant, recall some text from Robert Clarke:

I said the proposed rules were determined previously to be "significant" (not substantive) so we should assume that if the Office went forward with similar final rules they will continue to be treated as significant. One aspect of a "significant" rulemaking is an up to 90 day review at OMB. The review at OMB can result in a return of the package from OMB to the PTO. Note these are standard rule making issues for any "significant" rule making and is not linked to the particular package.

After publication as a final rule there would be at least a 30 delay in the effective date.


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