Thursday, July 31, 2008

PubPat still getting it wrong in its Tafas brief

Further to the IPBiz post PubPat, Consumer WatchDog get it wrong in Tafas brief, one commenter pointed to the illogic manifested in the Ravicher quotations of Lemley/Moore's "Ending Abuse":

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.

For those who might not remember, Lemley and Moore argued a completely counterintuitive, and counter to fact, position in "Ending Abuse." As pointed out in LBE's comments to the USPTO on 30 April 2006:

Although there is an implication that continuing applications are fungible with
new applications, this is not the case.

From the just-n-examiner blog: Examiners have always told me they like
continuations (or RCEs) because they receive the same amount of counts as a
"new" application but without the requirements of conducting a search from
scratch or learning new technology. I would think limiting continuations would
hurt examiner productivity, as applicants will be unlikely to ever cancel claims to
expedite issuance, thereby further increasing the number of appeals (which seems
to be the intent of the USPTO lately).

From the POPA newsletter of March 2006: [Restriction of] second, and
subsequent, continuation applications, which examiners usually process more
quickly, would increase the number of tough cases per docket and decrease
examiners' action counts. Would disproportionately affect senior and primary
examiners. Junior examiners don't get cons till after about 18 months.

At footnote 40 of 84 B.U.L. Rev. 63, Lemley and Moore somewhat address the
issue of cons being easier: Some commentators have suggested to us that
examiners might actually prefer continuation applications, since they have already
learned the technology and can get disposal credits without having to do as much
work. The long delay associated with continuation applications belies that claim;
it scarcely seems credible that an examiner will remember enough about a case
nearly two years after she last dealt with it to result in a significant time savings.

Even in the time before RCEs, examiners typically had no trouble remembering
issues in a continuation case, because a continuation, filed to keep a case going,
focussed the issues. With RCEs, the "remember enough" argument seems silly at
best. If the examiners say second and subsequent continuing applications can be
processed more quickly, why look to indirect inferences of law professors?

Lemley and Moore's "inferences" are those of people unfamiliar with custom and practice
at the USPTO. Ravicher repeats these as if they were true.

One poster on Patently-O was even harsher:

Lawrence Ebert in IP Today wrote what we all know: that in the post-publication era continuations and RCE's are not a burden on the office and simply are not the source of perceived problems with the office. The statistics of pending applications compiled by Lemley and Moore in support of the proposition that continuations burden the office are simply wrong and fail to take into account how easy it is for an examiner to examine continuations and RCEs.

Absolute hogwash!

See also

Consumer Groups File CAFC Amicus Brief in Support of USPTO Rule Changes

PubPat, Consumer WatchDog get it wrong in Tafas brief


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