Thursday, November 06, 2008

Kicking the proposed rules on continuations while they are down

In Now You See Them, Now You Don't: The PTO's Rules on Claims and Continuations, Matt Browning concludes:

the Final Rules, if implemented, would almost certainly negatively affect patent prosecution practice and would ultimately reduce incentives to innovate, particularly in biotechnological and pharmaceutical fields. Moreover, the Final Rules are unlikely to significantly reduce the backlog due to the low percentage of applications affected and the unintended consequence of increased appeals and increased examination burdens. [23 Berkeley Tech. L.J. 247]

At page 273, one has:

. However, the PTO's own statistics suggest that the rules will only block a small number of applications: the Final Rules would have affected only 2.7 percent of the filings in fiscal year 2006. n199 Eliminating only 2.7 percent of filings will not greatly reduce the backlog. Many commentators believed that even the Proposed Rules, which would have allowed only one continuation application without justification and potentially cut 6.5 percent of filings, would not have helped. n200

for footnotes-->

n191. Stephen T. Schreiner & Patrick A. Doody, Patent Continuation Applications: How the PTO's Proposed New Rules Undermine an Important Part of the U.S. Patent System with Hundreds of Years of History, 88 J. Pat. & Trademark Off. Soc'y 556, 566-67 (2006) ("With the exception of the anomaly in the mid 1990's due to enactment of the 20 year patent term from date of filing, the percentage of continuations has stayed statistically the same (about 27%) since 1975.").

n198. According to the PTO, the examiner production system is outside the scope of the Final Rules. Id. at 46805, Response to Comment 243. Nevertheless, the PTO asserts that changes to examiner production goals, appraisal plans, and award systems alone will not be sufficient to address the backlog. Id. at 46818, Response to Comment 279.

n199. Id. at 46755.

n200. See, e.g., Schreiner & Doody, supra note 191, at 563 (asserting that the Proposed Rules would "barely make a dent in the purported problem").

********LBE notes he is one of the "many commentators" that Browning did not bother to cite.-->

In Comments on continuation practice proposal appearing in the Federal Register, LBE wrote

Although the USPTO talked about a hypothetical world in which there were "no
continued examination filings," the USPTO proposal is only to limit second and
subsequent continuing application filings. There are not enough second and
subsequent continuing application filings being made, which if limited in the
future, would rollback the backlog problem.

From "Edison's light bulb, and the future of stem cell research," Intellectual
Property Today (April 2006):

In the November 2005 issue of Intellectual Property Today, I presented some data
on continuing applications for FY 2004 from the PTO, and noted the USPTO is
evaluating the possibility of limiting continuations, which crystallized in the
Federal Register in January 2006 [71 Fed. Reg. 48 (Jan. 3, 2006)] Two readers
from Chicago, Kevin Noonan and Paul Reinfelds, sent along data for FY 2005,
and noted, with the small number of "second" continuing applications, that the
PTO proposal limiting continuing applications, even if effected, would not likely
solve the problem faced by the PTO.

Data for FY 2005: There were 63,000 continuing applications, which included
44,500 cons/cips and 18,500 divisionals. Of these, 11,800 were second, or
subsequent, applications. Separately, there were 52,000 RCEs, of which 10,000
were second, or subsequent. Thus, 21,800 applications of 384,228, were second
or subsequent, which is 5.7%. As for FY2004, RCEs were the single most
abundant "continuing" form, 52,000 of 384,228 [13.5%]. All "continuing" forms
combined constituted 115,000 of 384,228 [30%].

The article in the November 2005 issue of Intellectual Property Today ["You
Only Look Twice" at page 18] had noted: About 7% of applications were
"second" continuations. The article also stated: Although some of the re-work
may arise from overreaching by patent applicants, some may be caused by the
insufficiency of 19.7 hours, on average, to allow examiner and applicant to come
to a meeting of the minds on proper claim scope.

[Sadly, IPT did not publish my April 2006 article, which, however, did end up on the
internet. It was even plagiarized by someone in India.]

***Separately, footnote 10 of 88 JPTOS 743:

Thus, if fully implemented, the rule would not resolve the application backlog problem.

***Browning's footnote 196-->

Posting to Just a Patent Examiner, Hard Counts, Easy Counts, and the New Rules, (Oct. 20, 2007 17:08:00); but see Lemley & Moore, supra note 53, at 74 (arguing that continuations "wear down" examiners and cause them to grant patents because they are sick of them, but not acknowledging the extra credit examiners get to continue examination). Commentators have criticized Lemley and Moore's argument that continuations "wear down" examiners. See, e.g., Schreiner & Doody, supra note 178, at 563.


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