Sunday, November 25, 2007

"Easy counts" still easy, contrary to Lemley and Moore

Back on April 30, 2006, LBE, in comments to the USPTO on the proposed rules on continuing applications, quoted the Just a Patent Examiner blog to negate one of the dumber comments in Lemley and Moore's ENDING ABUSE OF PATENT CONTINUATIONS, 84 B.U.L. Rev. 63 (Feb. 2004).

The blog's text: Examiners have always told me they like continuations (or RCEs)... seemed far more believable than Lemley/Moore saying: it scarcely seems credible an examiner will remember enough...

In a 20 Oct 07 post titled -- Hard Counts, Easy Counts, and the New Rules --, the blog has the text:

The second thing is the easy counts. Abandonments (both final abandonments and abandonments as part of an RCE) are essentially free counts. Allowances usually take a minimal amount of time to write up. The first actions of RCEs should take no more time than any other amendment, but I get the bonus of a count for it. First actions of continuations, while of course requiring a search, don't require as much time to do because I am already familiar with the invention, and have already performed a search on the disclosed invention. IPBiz notes that there simply does not seem to be the "memory problem" unbelievably asserted by Lemley and Moore.

See also a 15 Nov 2007 post titled -- A First Glance at the Proposed New BPAI Rules--, in which the blog writes:

First of all, I always thought that an appeal was supposed to resolve an impasse between the examiner and attorney/applicant. But if the Appellant is going to raise new issues that haven't yet been presented to the examiner, where's the impasse? It just doesn't seem to me as if the application is ripe for appeal if the Appellant has arguments that still have yet to be made to the examiner.

**Returning to ENDING ABUSE OF PATENT CONTINUATIONS, 84 B.U.L. Rev. 63 (Feb. 2004), a really dumb commentary remains footnote 22.

More on the 97% grant rate that never was


Blogger David Woycechowsky said...

I am not a huge fan of ex parte exam in general, but it seems to me that the 20 years from filing (plus appeal time) means that there is no such thing as continuation abuse. Repeated RCE cycles are coming out of any patent term anyway.

I don't see how this "issue" got any reaction in the first place, unless perhaps the USPTO is trying to phase out (pre-appellate) ex parte exam in a way too complicated for the union to really notice. Under this theory, perhaps the reliance on "really dumb" arguments is a smokecreen to confuse the union into failing to mobilize the way it otherwise might.

6:28 AM  
Blogger David Woycechowsky said...

"reaction" should have been --traction--

6:29 AM  

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