Comments On the PTO’s Proposed Change in Continuation Practice

In January 2006, the PTO proposed dramatic changes to patent continuation practice that would essentially allow only one continuation, continuation-in-part, or RCE per application. [Link

It turns out that patent attorneys are steamed about this proposal.  At a recent town-hall meeting in Berkeley, the audience was reportedly “ready to throw eggs at the [PTO] speaker” who was attempting to explain why the change is necessary.

An anonymous Patently-O reader has submitted the attached paper with his thoughts on the subject. [DOWNLOAD PAPER].  This paper presents a well reasoned, diplomatic argument for why the changes to continuation practice should not be implemented. 

A number of commentators were not so diplomatic.  Mark Harrington of Harrington & Smith came right to the point:

As a patent practitioner with over 20 years of experience, I want to ask: Who was the [BEEP] that proposed this rule change? If you wanted to make patent practitioners angry, you have succeeded. If you attempt to make this proposed rule change final, we will go to Congress to have it changed.

Although comments on the rule changes are not due until early May, 2006, a number of comments have already been submitted to the PTO. 

A. Corporations

B. Law Firms

C. Individuals

5 thoughts on “Comments On the PTO’s Proposed Change in Continuation Practice

  1. The comments are all still there. It looks like they have just been rearranged so that they are listed in section “D. Individuals” under the name of the person who wrote the comment instead of under the institution’s name to which the person belongs.

    Harrington’s comment:
    link to uspto.gov

    All comments:
    link to uspto.gov

  2. Anyone know what happened to the comments? They appear to have vanished from the USPTO site.

  3. I read almost all the comments with interest. Indeed, the discussion is uncovering many practical issues and is highly informative. All said and done, in the very same world jurisdictions exist where continuation applications are not allowed. The only option available is divisional applications which is not equivalent to continuation. Though not against continuation practice, I tend to think that continuations beyond a certain (limited) number do complicate prosecution for example, where details of corresponding applications are required to be filed and failure in meeting this requirement is detrimental to the application. Many a times these details are not provided accurately. Therefore, it would be practical to limit continuations to a certain number, this would definitely save costs and help applicants to be more focused in planning patent applications.

  4. Further to comments 1/5/06 (9:17 am), and your blog on “Comments On The PTO’s Proposed Change In Continuation Practice,” please refer to my amicus brief in Diamond v. Chakabary, 477 US 303 (1980), which clarifies the problem in terms of classical First Amendment concerns, e.g., including 35 USC 101, and abriding conerns about government editing and/or supressing free speech and press, as well access to such speech and press by the public, by prior restraint, and abridging freedom to petition the government for redress of the grievance, such as unjustly favoring certain “non-RCE authors and inventors over RCE authors, and even such esoteric subjects as disturbing the rights of RCE authors and inventors to persistently continue inhabiting and copyrighting their artistic works without government editing and prohibitions, without legislative authorization, in the largest theatre of government imprimaturs belonging to inventors, and the public forum and assembly in the world represented by the PTO, either directly in printed publications, and/or now by internet. The case runs deep – all the way back to the repeal of the First Pataent Act of 1790 by the First Amendment, when the government was probhibited from choosing which inventions it thought were most “important.”

  5. As a former patent examiner and a current patent agent I have a couple of additional comments.

    For one thing the ten representative claim proposal is almost an unavoidable step that MUST be taken in order for the PTO to keep up with the ever increasing number of patent filings. The real issue on this point is dependent claims. In my experience many dependent claims, which may be important for purposes of enforcement or licensing, are not very important for purposes of patent prosecution because they cover obvious variations of the main invention. However these dependent claims are usually what eat up a lot of examination time because, even when they are obvious variations, it takes up significant time to consider each of the dependent claims under 35 USC 102 and 35 USC 103, do a search for each of these claims, and apply prior art when appropriate.
    Furthermore, presenting too many dependent claims often results in examiner’s losing focus of the main thrust of the invention.

    I would think that attorneys would prefer examiners to spend the little time they have examining on the main patentable features. Plus keep in mind that once independent claims are found to be allowable appending additional dependent claims to allowable independent claims will be permitted and this takes very little time for an examiner to consider because all that needs to be checked are 35 USC 112 considerations and formal matters which are far less time consuming than considering 102 or 103 issues.

    As for continuation practices, while I agree with the general consensus that limitation to one continuation is not ideal, I think it is important for attorneys to acknowledge that the inventors and the firms they represent can not keep the public guessing about the possible claims that may be presented several years after the invention was first filed. And yes this does make things more difficult for patent attorneys and it is difficult to predict the optimum claim construction without a crystal ball. But part of being an inventor is being able to anticipate future trends and if an inventor is not able to truly appreciate the scope of their invention so as to help their attorney formulate the claims correctly at the time of initial filing why should they benefit from hindsight knowledge of how an industry evolves?

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