Thursday, July 31, 2008

PubPat, Consumer WatchDog get it wrong in Tafas brief

The "public interest" amicus brief on the Tafas case includes citations to the Lemley/Moore law review in BULR ("Ending Abuse...")

page 12-->it is impossible for an
examiner to ever actually finally reject a patent application so
long as the applicant has sufficient financial resources to keep
paying for continuation applications. Final Rules at 46718-19
(citing Mark A. Lemley & Kimberly A. Moore, Ending Abuse of
Patent Continuations, 84 B. U. L. Rev. 63 (2004)). This results in
USPTO examiners who have repeatedly rejected an application
facing the possibility of an endless stream of continuation
applications being filed by the applicant that “may well succeed
in 'wearing down' the examiner, so that the applicant obtains a
(page 13)broad patent not because he deserves one, but because the
examiner has neither incentive nor will to hold out any longer.”
Lemley & Moore, 85 B. U. L. Rev. at 65. Such “wearing down” of
examiners is an abhorrent abuse of continuation applications.

page 13-->Applicants also abuse the continuation application process
in other ways. Some monitor commercial actors who attempt to
design around a previously issued patent and then submit claims
in a much later filed continuation application that are directed
specifically at those design-around efforts. Id. at 76-77.

IPBiz notes that the most abundant form of continuing application is the
RCE, and one can't do this in an RCE.

Page 22-->A recent study showed that about one third of patent
applications are continuations. Lemley & Moore, 85 B. U. L. Rev.
at 69. This not only provides opportunities for the
gamesmanship discussed above, but it also results in a
significant amount of rework by patent examiners, which adds
substantial inefficiency into the patent application process.

IPBiz notes that this is an irresponsible citation for the year 2008. About
one third of applications are CONTINUING applications, the most abundant of
which is an RCE, which is NOT a continuation. Ravicher simply does not
understand what he is talking about in the brief.

Page 25-->First, continuation applications, as compared with original
applications, are more likely to result in patents that are
undeserved. Lemley & Moore, 85 B. U. L. Rev. at 75.

***See also
[Much of what Ravicher said in the amicus brief is negated by the article
published in 88 JPTOS 743 (2006)]

which comment says:

Interestingly, Arti K. Rai, who wrote the Patently-O article as to why the district court judge was wrong to issue the preliminary injunction in the Tafas case, is on the Pubpat Board of Directors:

And we thought she was just giving us a scholarly, unbiased, administrative perspective. :-)

And, as IPBiz noted elsewhere, Mark Lemley received financial support from Cisco (and others) for a recent
law review article. Can we say "conflict of interest"?


Blogger dcpatentassociate said...

Maybe its true that bad claims are allowed after multiple continuations, but does any patent examiner or patent prosecutor really think "wearing down" examiners really occurs? The count system encourages the opposite behavior. The hardest part of being an examiner is starting a new application. Continuations and RCEs are the easy counts.

Instead, bad allowance may occur after an RCE because an examiner can get two counts for the allowance. Or, bad allowances may occur when an examiner retires and a new one takes over. Or, bad allowance may occur just prior to the end of the fiscal year, or when the PTO institutes a period of no quality review.

3:29 PM  

Post a Comment

<< Home