Sunday, October 18, 2009

Examining the examiners of patent examination

Peter Zura at the 271Blog has kept us up to date on articles by Mark Lemley. In a recent post, Zura notes the article Examining Patent Examination and highlights the conclusion:

The evidence illuminates the patent prosecution process as a continuing negotiation between examiner and applicant. That negotiation does not end with an initial or even a final rejection. Interviews and amendments after final play an extremely significant role in generating patents, and in limiting the scope of those claims as well. Nor is that the end of the process. Continuation applications are flourishing. They have broken into two roughly equal groups, with different uses. Many applicants are using RCEs to keep fighting for claims that the examiner wasn’t willing to give them. The second group is filing continuation applications rather than RCEs. They have opted for a slower process, either because they want delay so that they can modify their application to track developments in the marketplace or because they want multiple patents to build an effective fence around a single invention.

What Zura does not note is that in a previous article ("Ending Abuse..."), Lemley did not note the distinct in objectives between continuation applications and RCEs, in an effort to demonize continuation applications. See for example
The dominance of RCE's and the Lemley/Moore conjecture
and "On the proposal to restrict continuing applications," 88 JPTOS 743 (2006).

**See also

Of Sampat and Lemley,
Gold-plating patents: been there, proposed that...

Tim Wu's --Weapons of Business Destruction-- dull stupidity?

**Separately, Feminist law profs posted:

The National Law Journal reported yesterday that a U.S. District Court is allowing Anthony Ciolli, former Chief Education Director for AutoAdmit, to move ahead with his lawsuit against Stanford Law Professor Mark Lemley and others for wrongful initiation of civil proceedings, abuse of process, libel, and a host of other claims.


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