Continuation Rules to Issue August 21

After some persistence, the PTO revealed the substance of the new continuation rules to Dow Jones reporter Stuart Weinberg:

Applicants will have the right to file two so-called continuations and one request for continued examination. Applicants seeking additional continuations will need to explain why the request is necessary. Current practice allows applicants to file an unlimited number of continuations. . . . [The PTO also] plans to limit the number of claims an applicant may include in an initial application to 25. Applicants that include more than 25 claims will be required to include a prior-art search, a detailed report that explains how their invention differs from what’s already in the public domain. The new rules, which will be published on the PTO’s Web site Tuesday [August 21], are scheduled to go into effect Nov. 1.

…The number of continuation requests has been rising in recent years. In 2006, almost 30% of applications were devoted to continuation requests, up from 27% in 2005 and 25% in 2004, Peterlin said. . . . Peterlin alluded to misuse of continuations when discussing the pending rule changes. “What we have found is, sometimes, people engage in a little
post-filing research,” she said, adding that, while this may make good business sense, it doesn’t make for an effective patent system.

Although we have not seen the final rules, it appears that applicants will not be losing rights at the time the final rules are published. Rather, the new rules will become effective on November 1, 2007. Do expect the rules to be retroactive in that they will apply to pending applications.

Pre-view of rules via Venable Law Firm

 U.S. Patent Office To Unveil New Continuation Rules Monday
 
   By Stuart Weinberg
   Of DOW JONES NEWSWIRES
 
 
  TORONTO (Dow Jones)–The U.S. Patent and Trademark Office will unveil Monday
long-awaited, and controversial, rules that limit the number of times patent
applicants can seek reexamination of patent claims.
 
  Applicants will have the right to file two so-called continuations and one
request for continued examination. Applicants seeking additional continuations
will need to explain why the request is necessary. Current practice allows
applicants to file an unlimited number of continuations.
 
  The change is part of a broader initiative to make the patent-application
process more efficient and reduce the PTO’s application backlog, which stands at
about 750,000, according to the PTO. For instance, the PTO will also say Monday
that it plans to limit the number of claims an applicant may include in an
initial application to 25. Applicants that include more than 25 claims will be
required to include a prior-art search, a detailed report that explains how
their invention differs from what’s already in the public domain. The new rules,
which will be published on the PTO’s Web site Tuesday, are scheduled to go into
effect Nov. 1.
 
  “We have an obligation to make sure the system is efficient from start to
finish,” Margaret Peterlin, Deputy Under Secretary of Commerce for Intellectual
Property, told Dow Jones.
 
  Continuations are typically filed by patent applicants when an examiner
rejects some or all of the claims in an application. For instance, if an
application has 20 claims and an examiner approves the first 10 claims, but
rejects the second 10, the applicant can file a continuation arguing the
validity of the rejected claims. A request for continuing examination allows
applicants to reopen an examination after a final rejection has been issued.
 
  In addition to allowing applicants to state their case, continuations allow
applicants to retain their original application date. In other words, if an
applicant submits a patent application in January 2007 and subsequently files
several continuations that take years to process, the ensuing patent – assuming
one is granted – takes the January 2007 filing date. This is important because
it allows the invention to predate other inventions that may have been created
in the interim.
 
  The number of continuation requests has been rising in recent years. In 2006,
almost 30% of applications were devoted to continuation requests, up from 27% in
2005 and 25% in 2004, Peterlin said.
 
   Original Proposal Generated Strong Reaction
 
 
  The proposal to limit continuations was first issued in December 2005. The
original proposal gave applicants the right to file only one continuation, no
matter what form the continuation took. It generated strong reaction, both
positive and negative, from various industries that rely on the patent system.
 
  The “PTO’s proposed rule changes will adversely impact innovation, especially
in the biotechnology sector by inhibiting the ability of innovators to obtain
adequate coverage on their inventions and to attract financing for products that
often take a relatively long time to reach the market place,” the Biotechnology
Industry Organization, which represents more than 1,100 U.S. biotech companies,
wrote in a May 2, 2006 letter to the PTO.
 
  The Business Software Alliance, whose members include Microsoft Corp. (MSFT),
International Business Machines Corp. (IBM) and Apple Inc. (AAPL), supported the
changes. “As frequently noted by legal scholars there is no other mechanism in
the U.S. legal system that provides endless bites at the apple,” the BSO wrote
in a May 3, 2006 letter to the PTO. “The terrible truth is that the current
system provides no finality to the review process, encourages unlimited chains
of applications and anticompetitive market place abuses.”
 
  The letter doesn’t delve into specifics, but several patent-law experts told
Dow Jones that companies sometimes use the benefit of hindsight afforded by
repeated continuation filings to extend the scope of their inventions to cover
competing products.
 
  Peterlin alluded to misuse of continations when discussing the pending rule
changes. “What we have found is, sometimes, people engage in a little
post-filing research,” she said, adding that, while this may make good business
sense, it doesn’t make for an effective patent system.
 
  Critics of the original proposal expressed concern that the limits on
continuations and claim filings would stifle innovation, as inventors would be
forced to narrow the number and scope of their patent claims and have just one
chance at a continuation. The changes could also make it more costly for small
inventors and start-ups to submit applications, particularly if an in-depth
prior-art search is necessary, critics said. It remains to be seen whether the
right to file a second continuation will mollify their concerns.
 
  Critics also said the new rules don’t offer clear guidelines as to what
justifies a legitimate request for additional continuations. Furthermore, they
question whether the proposed changes will reduce the PTO’s backlog or simply
lead applicants to seek other means of prosecuting their patents. For instance,
the number of appeals to the PTO’s Board of Patent Appeals and Interferences is
sure to rise, critics said.
 
  Some critics also argued the PTO doesn’t have the right to change the law,
claiming this right resides with U.S. Congress. Peterlin poured cold water on
this argument, saying the PTO consulted with members of Congress and with the
Office of Management and Budget before proposing the changes. “It’s not as if
the PTO would just rush out with something that we weren’t allowed to,” she
said. “That being said, do I expect people to challenge us? Absolutely.”
   Company Web Site: http://www.uspto.gov
 
   -Stuart Weinberg, Dow Jones Newswires; 416-306-2026;
   stuart.weinberg@dowjones.com
 
 
  (END) Dow Jones Newswires
 
  08-20-07 0857ET
 
  Copyright (c) 2007 Dow Jones & Company, Inc.

 ========

PRESS RELEASE
Contact:
Brigid Quinn or Jennifer Rankin Byrne
(571) 272-8400 or
brigid.quinn@uspto.gov or
Jennifer.Rankin_Byrne@uspto.gov

August 20, 2007
#07-33

USPTO to Publish Measures to Improve Patent Quality
Claims and Continuations Rules will improve effectiveness and efficiency of patent examination

The Department of Commerce’s United States Patent and Trademark Office (USPTO) will publish tomorrow in the Federal Register new rules that will allow the agency to continue to make the patent examination process more effective and efficient by encouraging applicants to use greater precision in describing the scope of their inventions. The new rules will be effective on November 1, 2007.

“Patent quality is the shared responsibility of applicants and the USPTO,” noted Jon Dudas, Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office. “Higher quality applications result in a more effective examination. These rules better focus examination and will bring closure to the examination process more quickly, while ensuring quality and maintaining the right balance between flexibility for applicants and the rights of the public. The U.S. patent system plays a tremendous role in motivating innovation, and these changes to examining patent applications will help ensure that America remains on the leading edge in the knowledge driven global economy.”

The new rules have been modified, relative to the rules that were originally proposed early last year, in response to the extensive comments the USPTO received from the public. Under the new rules, applicants may file two new continuing applications and one request for continued examination as a matter of right. Also, under the new rules, each application may contain up to 25 claims, with no more than five of them independent claims, without any additional effort on the part of the applicant. Beyond these thresholds, however, the new rules require applicants to show why an additional continuation is necessary or to provide supplementary information relevant to the claimed invention to present additional claims.

Placing conditional boundaries on a previously unbounded process provides for more certainty and clarity in the patent process. The result is that application quality will be improved and piecemeal or protracted examination will be avoided, enhancing the quality and timeliness of both the examination process and issued patents.

The new rules are available today to anyone who visits the Federal Register office and will be available tomorrow, August 21, 2007, no later than noon, on the USPTO Web site — www.USPTO.gov . In the coming weeks, the USPTO will be conducting outreach on these new rules to better inform external stakeholders of their content and to answer questions. A webinar on the new rules is scheduled for Thursday, August 23, 2007. For more information on this webinar and other upcoming information sessions, go to www.USPTO.gov

74 thoughts on “Continuation Rules to Issue August 21

  1. “Sorry if I misrepresented the intent of your argument.”

    Apology accepted.

    As for the rest of your comment, I have no idea what you’re driving at. I do recommend that you revisit Liebel-Flarsheim and more recent CAFC cases citing Liebel-Flarsheim if you still want to believe that continuations are useful for claiming “important” stuff that somehow escaped the inventor’s attention but didn’t escape the attention of the inventor’s competitors.

  2. Malcolm, how does this:

    “Malcolm was saying that an inventor is not entitled to claim broader than the invention which he understands at the time of filing”

    not jive with this:

    “If you “don’t understand” the “full breadth of the invention” when you file, you aren’t entitled to claims encompassing the part you “didn’t understand”.” ?

    Sorry if I misrepresented the intent of your argument. The ending, as you have correctly pointed out, is the same regardless:

    “No, and the under the present rules he is “entitled” to pursue such a claim and correct his error.”

    P.S. mis·ap·pre·hend Pronunciation [mis-ap-ri-hend]
    –verb (used with object)
    to misunderstand.
    [Origin: 1645–55; mis]

  3. “In practice, industry can adopt a non-claimed feature of a patent (the importance of which was misaprehended either by the inventor or the attorney).”

    Misapprehended? Is that a legal term? Keep on kicking up the dust, my friend.

    “Malcolm was saying that an inventor is not entitled to claim broader than the invention which he understands at the time of filing”

    Maybe you need to read Liebel-Flarsheim again. For many years now a wave has been building to wash away the crap patents issued by USPTO. I prefer riding this wave and trying to understanding its properties. Standing in front of this wave and preaching about how “bad” it is seems foolhardy at this late date.

  4. EP: Continuations allow applicants to seek claims that address competitors’ weak, but Rule-11-clearing noninfringement contentions. It’s much more efficient to get new, clearly supported claims for a few thousand dollars than to litigate at a cost of hundreds of thousands (if not millions) of dollars.

  5. EP,

    I usually don’t need multiple continuations, but I have needed multiple RCEs because of bad examination. Now i will have to file a continuation if the Examiner finally produces good art in the second office action after my first RCE and I want to amend the claims in response. And believe me, it has not been until my 4th or 5th action that I have received decent art sometimes.

  6. “I realize that all the rule changes are necessarily bad.”

    Oh, gosh, a freudian slip? I actually meant to say the opposite: I do realize that not all the rule changes are necessarily bad. Apologies.

  7. EP, there are other provisions in the rule changes (besides the limitation of continuations) that will likely stifle both the patent process and industrial innovation. I personally haven’t yet been able to fully (or even partially) digest the new rule 1.78, though I suspect its complexity is meant to send a signal to the world.

    I realize that all the rule changes are necessarily bad. But by the same token, there has been no showing that they are good (permit me to forego the proper legal language here) either.

  8. Can someone explain to me why continuations are so important and why everyone is getting so upset?

    I’ve just been trying to think of reasons why you might need to file continuations.

    1. One example might be a situation where you have limited the claims to a particular embodiment to achieve grant for the client, but still want to pursue the broader embodiment because you still feel it may be patentable.

    However, I would be worried if you had several continuations filed out of the original application for this reason.

    In other situations, you don’t need a continuation. E.g.:

    2-3. The two situations mentioned in my post above. Particularly in 2. where the embodiment is not mentioned in the description since this is invention after the filing date.

    4. When the claims lack unity, you can file a divisional directed towards the non-unified invention.

    Bear in mind, that I’m just interested to know what other reasons there might be for a continuation. I just can’t think of many. Perhaps, its because I’m being trained in a system that doesn’t have them.

  9. real, twenty and four are withdrawn and non-elected? So I guess they were restricted at some point and can be filed in divisionals. To avoid statutory DP, you would have to amend the generic in some different way in each divisional.

    Yes, this is funny in some respects. It reminds me of an old George Carlin album I had as a kid where alter boys were trying to stump the father about rules and regulations of the Catholic church.

  10. “So I guess my question is, why does the continuation ruling affect the invenotr’s ability to claim the invention as indicated by “realanonymous” post above?”

    The hypothetical wasn’t directed to the new rules, but to Malcolm’s mischaracterization of the legal concept of “possession” (which he is still saying is the same as “conception”… of course you need to conceive something to possess it, but the two principles are very different from a legal perspective… and possession is unfortunately not as well understood as conception). Malcolm was saying that an inventor is not entitled to claim broader than the invention which he understands at the time of filing, but then admitted that he can claim AB2C to correct a mistaken understanding.

    “Why do you need a continuation for this action? Why can’t you file an amendment?(this is a question from a non-US remember)”

    This gets in to Ms. Peterlin’s original comment (well assuming I understood her corporate speak… I like to now think stepback was right!) In practice, industry can adopt a non-claimed feature of a patent (the importance of which was misaprehended either by the inventor or the attorney). When further searching is done (either searching of subsequently published applications or market research), it is discovered that this non-claimed feature was in fact important.

    If the importance of the non-claimed feature is discovered after prosecution is closed in original application (often after one patent has issued but a continuation has been filed), or if it is presented as a claim and the examiner says it raises a new issue, you cannot file it as an amendment, then a continuation is proper.

  11. Tokkyo Office – too funny!!

    Let me further join in on the question posing/posting: You’re restricted (e.g. after filing an SRR) to an embodiment with 1 generic claim and 19 dependent claims. The generic claim is allowed. Twenty withdrawn claims to four other commercially viable, non-elected embodiments also depend from the generic claim? What do you do? How do you protect the other commercially viable embodiments understanding that the generic claim may be later found to be invalid?

  12. In the example above, where the inventor has invented AB12C345, there are two possible scenarios when you find out during prosecution that the novelty of the invention lies in B2:

    1. B2 is described in the application

    You limit the claims to B2 using basis in the description. This on the presumption that the inventor has come to the attorney and has stated the above embodiments, and the attorney has done his job correctly and has described all the embodiments that the inventor has listed.

    Why do you need a continuation for this action? Why can’t you file an amendment?(this is a question from a non-US remember)

    2. B2 is not specifically in the description

    In my opinion, you should NOT be able to claim B2. The invention has happened 6 years after filing – unless it is the fault of the attorney that B2 is not in the specification. You should be tied to what you have filed, otherwise you could always say “when I said x, what I actually meant was y”.

    Instead, if there is novelty and inventiveness in B2, you should file a new application directed to B2. On the other hand if it is obvious, then there is no invention in the first place.

    xxxxxxxxxxx

    So I guess my question is, why does the continuation ruling affect the invenotr’s ability to claim the invention as indicated by “realanonymous” post above?

  13. To Left Coast, regarding your reissue scenario: Yes. Because your reissue application contains more then 25 claims, then once November 1 arrives you would be required to either a) cancel enough claims to get the reissue application below the “25/5″ threshold, or b) submit an ESD (which stands for, if memory serves correctly, “Estoppel Suicide Device”).

  14. So is there any benefit to filing a continuation application before November 1 as opposed to after November 1?

    I can’t think of a benefit off-hand – I’m still reeling from reading these rules. I do think there is a benefit in getting any RCE’s filed before Nov. 1 if you have already filed one or more already. If you wait until after Nov. 1, even if the 3 month deadline to reply to a final action is post Nov. 1, you will obviously be too late.

    I do have a question about the 5/25 claim rule: I received a restriction requirement last week in a case with about 30 claims, more than 5 ind. claims. If I elect one invention, after canceling 6 claims, I will be down to 25 claims and less than 5 ind. claims. I have until next month to file this election, but if I file it tomorrow, and the Examiner issues an office action in mid October, haven’t I received a first action on the merits prior to Nov. 1, and thus avoid the applicability of this rule – that is, I could have the non-elected claims rejoined, if applicable, after Nov. 1 without having to file an Examination Support Document. It seems that the receipt of a first office action prior to Nov. 1 allows the application to avoid the rule altogether. You might ask why even amend the elected claims down to 25, since it is prior to Nov. 1, but my reading of the FAQ section regarding the rules is that the Examiner would then send me a notice to file an ESR, although it seems the ESR would only be applicable (and perhaps the notice would say this) in the event I don’t receive a substantive OA on the merits prior to Nov. 1. It is very confusing.

  15. Let me join in on the question posing/posting: your patent issued a year ago with 50 claims. You just discovered a new prior art reference which if you file a reissue would require that you amend some of the claims. Must you cancel 25 claims in your reissue application?

  16. So is there any benefit to filing a continuation application before November 1 as opposed to after November 1? Thank you

  17. Question for you patent rule mavens — you file an application with one independent claim and 24 dependent claims, each depending directly from the one independent claim. In the first OA the independent claim is rejected and all 24 of the dependent claims are allowed. Can you rewrite all 24 of the dependent claims in independent format, which would give you more than five independent claims?

  18. What is not addressed in the new rules (although I’m afraid I know the answer already) is what effect a later filed design application, claiming the benefit of a parent utility application, will have on the number of future continuations one can file based on the parent utility application. I have some pending utility applications (parent cases, filed several months to 2 years ago, no substantive action issued yet). I later filed some design applications, and claimed the benefit under Sec. 120 of the relevant utlity application. Some of the design applications have issued into patents or have issue fees due in a week or two. I know I have “one more continuation” to file for each of the parent utility applications, but only one, and not 2? And can I still file an RCE after Nov. 1, 2007 (I think I can, provided no RCE’s were ever filed). I would like to think I can still file 2 utility continuation applications + an RCE in the parent utility cases.

  19. “To those who are serious about patent law, I find it is much better to check who has posted a reply first and skip anything written by “Malcolm Mooney.”

    LOL. Yes, I’m so unserious. If you don’t read my comment, however, you will miss learning that your knowledge of the case law re antication is several years out of date.

    You wrote that “the law clearly states than a prior art publication must be enabling to be anticipatory.” But the law also clearly states that “The standard for what constitutes proper enablement of a prior art reference for purposes of anticipation under section 102, however, differs from the enablement standard under section 112.” See Rasmussen v. SmithKline Beecham.

    As a serious person, I’m sure you’ll also recall that in Rasmussen, the Federal Circuit found an earlier published application enabling for anticipation purposes in spite of the fact that, as of the publication date, there was no reasonable scientific basis for a person of ordinary skill to conclude that the anticipating method claimed and described in the publication would be effective.

    You’re welcome.

  20. “If biotech companies are not able to obtain patent protection for their new therapeutics”

    These rules do not prevent biotech companies from filing an application describing their “new therapeutic”.

    Can anyone name a patent on a “new therapeutic” that would not **ever** have issued **but for** the applicants right to file 3 continuations?

    Seriously. All the rules do is prevent a particular kind of strategic game from being played.

    Now another strategic game will be played. It probably won’t seem as fun and free-wheeling as the old one but the argument that people are going to die of untreatable diseases because of these changes is specious.

    The prizes will go to the biotech companies who figure out how to find and patent “new therapeutics” with less money.

    Is that a bad thing? Maybe, if you’re a fat overpaid CEO.

  21. To those who are serious about patent law, I find it is much better to check who has posted a reply first and skip anything written by “Malcolm Mooney.” Perhaps if all of us refuse to respond to his “postings,” it will help keep these boards more serious.

    Regarding the new rules, if they are allowed to stand, the impact upon the life sciences/biotech companies will be much more severe than upon the Business Software Alliance. To be up front, I am a patent attorney working in house for a biotech company. Also, I apologize in advance for the lengthly post.

    Consider two facts. First, the average time from initial discovery until FDA approval of a new drug is a little over 14 years. Second, the cost to the industry, including failed drug candidates, is $1.5 Billion for every new drug approved by the FDA. Additionally, the FDA is approving fewer new drugs and requiring more studies, so both of those numbers will only go up. The vast majority of the time and cost in a new drug reaching the market is in getting FDA approval.

    The only way the biotech industry survives is from obtaining patents that effectively cover the few drugs which actually make it through the FDA process. Historically, the biotech industry as a whole has NOT made a net profit, the money has been reinvested in research.

    A personal example. First, a company invents a new method of treating cancer. In the application, variants of a known protein are disclosed with some initial in vitro data. For simplicity, say the protein is 100 amino acids long, and the novel variants that seem to work best have mutations at amino acid positions 70 and 80. It turns out that when in vivo studies are completed a year later, the important positions are 80 and 85. Finally, after another 6 years, the first human data is available, and positions 80 and 86 work the best, but it is a different variant at position 80 than what looked best after the first in vivo data. All of the positions are disclosed in the initial filing as possible variants, but there was no data to support positions 80 and 86 as working best in humans, since it takes 7 years or more to reach phase 1 studies and resources are limited.

    IF the company can file a new patent application when it discovers that positions 80 and 86 work the best in humans, the new continuations rules would not be as big of a problem. However, the patent office will use the initial disclosure as 102 art against the later discovery, but not allow the initial disclosure to be enabling under 112 for claiming positions 80 and 86.

    Just last month, I was sitting in an Examiner’s office, trying to discuss a rejection of an application as being anticipated under 102. The prior art reference disclosed a protein, and then went through every position in the protein and listed every possible amino acid substitution at that position, and stated that multiple substitutions are possible. (For those of you rusty on your biochemistry, there are 20 naturally occurring amino acids. For a protein of 100 amino acids long, the theoretical number of variants is (20^100)-1, or 1.27 x 10^130. The number of atoms in the world is estimated to be 10^50, so it is physically impossible to individually describe or make all possible variants of a protein of 100 amino acids.) I asked the Examiner, “Could I claim what I am trying to claim now from the disclosure of the prior art reference?” The Examiner’s supervisor said, “No, it would not be enabled under 112 from that reference. However, we feel that we can reject a claim under 102 even if we would not allow the claim under 112 from the disclosure.” While the law clearly states than a prior art publication must be enabling to be anticipatory, in practice the patent Examiners ignore this pesky requirement.

    Thus, the answer that we are currently using is to file the applications as soon as we can, then file continuations-in-part when we get new data. The term of the patent expires 20 years after filing, so we are losing several years to the term of the patents with the new data. The exchange is our own patent applications are not used against us to anticipate our clinical candidate, and yet those same applications are not viewed as enabling claims to cover the clinical candidate. (The KSR case will make it even more difficult to get patents, but I will not digress.)

    So here is a question for people in the electrical arts – do you want new medicines 15 years from now? If biotech companies are not able to obtain patent protection for their new therapeutics, no one is going to invest hundreds of millions to a billion plus dollars to obtain FDA approval so a generic company an use all that data to sell a generic version at a much reduced price. If we are limited not only by the 20 years from filing (and that 14+ years to FDA approval is only getting longer), but we are also limited by the number of continuations, it will be extremely difficult to obtain effect patent protection for new therapeutics. The likely result is investments into biotech startup companies will continue to decrease further, and a future generation of therapeutics will either not exist or be delayed even more.

    These continuation rules are not helping promote the progress of the useful arts in the area of life science.

  22. KCB and JM, I’m skimming the rules now and l can’t believe what I am reading. This is outrageous and like listening to a broken record. Does anyone else feel duped by an initial ploy of proposing rules for the designation of “representative claims” followed by unpublished actual rules that limit actual claim numbers in the absence of a “support document”. That gives them the ability to state (repeatedly) that that rule has not been adopted!

    The courts on the one hand force us to write claims that cover every possible infringer that we can’t know about for another fifteen years. We try to responsibly represent clients by writing claims of varying scope and attack the invention from various directions. Then we try to limit the damage by arguing only what we have to argue to get the claims allowed and prevent estoppel. But now we have to restrict the number of claims or fill the file wrapper with characterizations of references, admissions that claims are not patentably distinct, present all arguments and evidence you can dig up early (since you may not be able to present it later) and other nonsense that will be used against us when we wind up in court.

    To all, please, if you are the the attorney that will be filing suit against the Commissioner to try to overturn these rules, keep us posted as best you can. And may the PTO management move on to private practice where they have to abide by the rules they are creating. Sigh – unfortunately, that is not to be since they will all pass on to their second career as high paid lobbyists!

  23. “you’ll have to enlighten me on how “conception” relates to meeting the minimum filing requirements under § 112″

    Can you enable an invention you haven’t legally conceived? Can you describe an invention you haven’t legally conceived?

    I don’t think so. Conception is the fixed and permanent idea of what the invention is. Filing a couple encyclopedias, a textbook, and a few hot research papers with the hope that “my invention is in there somewhere and I’ll know what it is after we figure out what’s old and what’s new” isn’t inventing.

    It’s a scam.

  24. The liars at the patent office lied on July 10 that the amended new rules would be effective only after “at least 60 days”. But the new continuation rules start their devastating effect on patent portfolios as of the publication date, August 21. Way to go, Bush cronies!

  25. Bated breath and pds observed that you have to file as soon as you understand the invention well enough to comply with § 112 (and to state a utility under § 101, which generally falls out for free once you’ve met § 112 “how to use”).

    Malcolm says “If you ‘don’t understand’ the ‘full breadth of the invention’ when you file, you aren’t entitled to claims encompassing the part you ‘didn’t understand.’ Refresh yourself on the concept of ‘conception.’ Patents should not be granted on research plans.”

    Malcolm, please do refresh me. I understand how “conception” relates to resolution of conflicting priority claims § 102(g), but you’ll have to enlighten me on how “conception” relates to meeting the minimum filing requirements under § 112/§ 101 or filing dates. Are you playing mix-and-match with the law?

    In context, pds isn’t discussing “not understanding” anything relevant to § 112/§ 101. He’s more directed to things like the relationship to the prior art, and which compound will eventually be safe and effective human in vivo. There’s no requirement for understanding those to get a filing date.

    Is it fair, Malcolm, to ask you to either correct me if I’m wrong, or keep your red herrings to yourself?

  26. I think there are lots of parties ready to challenge these rules under many legal theories. The USPTO tried limiting continuations before in 1968 (see in re Henriksen), wherein the court held that the USPTO had no authority to do so. In fact, see MPEP 201.11, which states, “There is no limit to the number of prior applications through which a chain of copendency may be traced to obtain the benefit of the filing date of the earliest of a chain of prior copending applications. See In re Henriksen, 158 USPQ 224; 853 O.G. 17 (CCPA 1968).”

    I suggest everyone continue to file continuations and claim priority to prior applications even though you may not be entitled to it under the new rules. If the rules are overturned, then everything would be as it should be.

  27. I have read a portion of these rules and the Constitutional infirmities trascend patent law. The concept of have a final disposition without being able to respond to the rejection is totalitarian. I believe Mr. Dudas needs to be called in court on this. Please tell me there is an attorney somewhere in DC that can bring the day of reckoning to this and the other executive agencies. We should not allow our public servants to behave in this fashion towards the government (we the people).

  28. “I don’t know, it just seems strange somehow that something could be an invention if you don’t appreciate what it is you’ve stumbled across.”

    The applicant certainly does know what invention he has made (e.g. AB12C345). The only thing he hasn’t appreciated is the (legal) significance of certain elements/limitations. That is very different from conception or reduction to practice.

  29. In response to comment 249 – PTO claims it could legally require ALL applicants to perform their own preexamination search. Any bets as to when that rule change comes down the pike? (assuming it does not end up in the final patent reform bill)

  30. real anonymous,

    Maybe I’m getting things confused with conception of an invention where conception is the point where the there is a contemporaneous recognition and appreciation of the invention. I don’t know, it just seems strange somehow that something could be an invention if you don’t appreciate what it is you’ve stumbled across. Course, now that I think about it, I suppose many great inventions started out as accidents.

    Personally, I like the continuation rule since it’ll probably get applicant to submit more focused specs rather than the “everything but the kitchen sink” ones that sometimes get filed. Not too sure I like the RCE rule though.

  31. Malcolm, I’m with you. But the proximate cause of that problem is that many examiners don’t seem to realize that 1) there is a description requirement in 35 USC 112 which is meant to ensure “possession” of the invention as a whole, and 2) the scope of the allowed claim must be commensurate with the written description.

    If you think that patent attorneys (hired by applicants) should work both sides of the legal balance to arrive at what is in the best interest of the government, the public, and the applicant, then I believe you don’t understand the adversarial process on which the entire U.S. legal system is based. And if that is your view, then how is that any different from a registration system, and what could possibly be the role of the USPTO in such a patent process?

  32. “What the inventor thought was new when he filed the application might turn out to be old”

    Or non-functional and worthless unless you add “B”. And there it is! On page 78, Table 22, column 38, I list 18 species, one of which is “B”! I’m not sure why I didn’t emphasize “B” in the first place, but there it is in black and white. Now, give me my patent so I can sue MegaCorp, Inc, get my money, and move to a bigger garage.

    /inventor off

  33. “Correct me if I’m wrong, but isn’t the inventor required to recognize that he has something that is novel for there to be an invention? How can the inventor later rightfully claim priority to the original filing date if the inventor doesn’t recognize that B2 is novel until years after the original filing date?”

    Are you thinking of a particular rule or statute that expresses or might imply such a requirement?

    The inventor knows (believes) he has in invention when he sets about to file the application, but he cannot know the full breadth of the features that may distinguish his invention over the prior art until he is made aware of the prior art, and this often happens after the application is filed (e.g. with the first Office action). What the inventor thought was new when he filed the application might turn out to be old, and what he assumed to be old may be novel. It is the rare case when the inventor knows before filing the exact full breadth of what is patentable.

  34. “Many times, an applicant thinks the point of novelty in his ABC invention (which has a preferred embodiment AB12C345, the numbers being alternative species) invention lies in C3, C4, and C5, and so he claims that full breadth (ABC3, ABC4, ABC5), only to later realize that B2 was novel also. Are you saying he shouldn’t be entitled to later claim AB2C in a continuation? Granted, that is not a preferable approach, and there are legal pitfalls in not making your broad claim at the beginning.”

    Correct me if I’m wrong, but isn’t the inventor required to recognize that he has something that is novel for there to be an invention? How can the inventor later rightfully claim priority to the original filing date if the inventor doesn’t recognize that B2 is novel until years after the original filing date?

  35. “any attorney who “file(s) a high proportion of applications with *ridiculously* broad claims, *nebulous* and *unclear* detailed description, and *other problems*” should be disbarred.”

    Should be, could be, won’t be. The standard of practice is low in this field, lower even than state court litigation and we know what kind of cases get filed there.

    Maybe the new rules will weed out the trend-chasing trolls and their attorneys but I doubt it.

  36. “LOL! Big words from the big talker!”

    Ever hear of the reflection theory? Let’s count posts.

    “Come down from your throne and take a look at the independent claims recited in published applications.”

    Malcolm, I’m not on a throne, but I am an attorney. I look at the independent claims in *patents* all the time and agree with you that many of them are ridiculously broad. But that isn’t (necessarily) because an attorney has committed malpractice or something else worthy of disbarment. It is, however, *necessarily* because the examiner has not properly assessed the art, and herein lies the problem. If you blame attorney malpractice for broad patent claims, you are putting the cart before the horse (which the USPTO loves to do) because, under current law and rule, there is no requirement for applicant’s representative to make an assessment of prior art of which he is not aware! (And yes, attorneys do make mistakes too.)

    Perhaps you will agree that to the extent that the USPTO is or becomes incapable of searching, that responsibility will need to be repositioned in the future, either to the applicants or to outside searching firms. But Congress, not USPTO management, will need to make that change.

    Sorry, I won’t apologize for what I believe: any attorney who “file(s) a high proportion of applications with *ridiculously* broad claims, *nebulous* and *unclear* detailed description, and *other problems*” should be disbarred. The state bars realize that a “clean house” is important to the practice of law. (And note that Anon-a-Dude seemed to be blaming others for wreaking havoc before getting his own house in order. But, as I said, I figured he wasn’t an attorney, and more figured he was in USPTO management. Et tu?)

  37. “Many times, an applicant thinks the point of novelty in his ABC invention (which has a preferred embodiment AB12C345, the numbers being alternative species) invention lies in C3, C4, and C5, and so he claims that full breadth (ABC3, ABC4, ABC5), only to later realize that B2 was novel also. Are you saying he shouldn’t be entitled to later claim AB2C in a continuation?”

    No, and the under the present rules he is “entitled” to pursue such a claim and correct his error.

  38. “f you are an attorney and you do that, you should be disbarred.”

    LOL! Big words from the big talker! Come down from your throne and take a look at the independent claims recited in published applications. Then do the right thing and apologize.

  39. Bated Breath:

    “I want to see the whole interview in context, but taken alone, … current PTO management is *absolutely clueless* about the most basic principles of how the patent system works.”

    Or should we say, Hi Greg?

    Anyway, Ms. Peterlin is demonstrating total competence.

    The “people” she is speaking about are called “examiners”. They “sometimes” do a little post filing research. It is that activity which must be quashed.

    You need to learn how to read ambiguous corporate speak.
    Please resume breathing.
    We need irreverent muckrakers such as yourself. :-)

    As John From Cincinnati would say, Tomorrow is another day. The 1’s and 0’s will be big.

  40. “We as a community can’t continue to file a high proportion of applications with ridiculously broad claims, nebulous and unclear detailed description,and other problems, and think that the PTO and the public are going to let it continue.”

    Troll. If you are an attorney and you do that, you should be disbarred. I am not in your “we” community if you to that, and neither are most of the people who post on this blog. And neither are most patent attorneys for that matter. Go back under the bridge. (My guess is though you’re not an attorney.)

  41. Folks, gotta say that after a year of reviewing the work of many patent attorneys, and after many years of reading patents (in the software arts), there’s probably worse to come. We as a community can’t continue to file a high proportion of applications with ridiculously broad claims, nebulous and unclear detailed description,and other problems, and think that the PTO and the public are going to let it continue.

    The new rules really won’t improve quality, but they do show that the more broke the system is perceived to be, the crazier the “fixes” will get.

    What can the patent bar do? Is there a problem with attorneys failing to advise clients when an app should not be filed? Is there a problem with too many attorneys/agents practicing in art areas that they have no expertise in? Are there solutions to these problems? If the patent bar doesn’t rediscover it’s role as a steward of the patent system, then the patent system will continue to suffer.

  42. I find it interesting that the Business Software Alliance is concerned about there being no “finality” to the patent system. (“The terrible truth is that the current
    system provides no finality to the review process, encourages unlimited chains
    of applications and anticompetitive market place abuses.”) Good that the PTO has fixed that with these new rules (unfortunately at the expense of the applicant). Now contrast that with the patent reform proposals in Congress that looks to open the door wider with post issuance opposition that, if enacted, may eliminate the possibility of any “finality”. I guess the BSA will be opposing that legislation to assure they get finality.

    Of course, part of all this is in the name of “harmony” with other patent laws – how about serious consideration of deferred examination then. Works in the rest of the world. I expect that could eliminate a large chunk of the backlog, and do so more effectively than any of the measures proposed to date. Don’t like the idea? Then file your request for examination along with your application, but let those who wish to defer exam do so and free up an examiner or two in the process.

    And, of course, none of this will have significant effect on the small entities!!! Check out the calculation of this effect in the proposal for appeals rules. (Did someone cut math class?) Fact is, large numbers of small entities can’t afford to go to appeal to start with, much less do so under the new proposals.

    Anyone got a hotdog cart for sale – time to find a new profession, but in the meantime my rates are going up!

  43. “If you “don’t understand” the “full breadth of the invention” when you file, you aren’t entitled to claims encompassing the part you “didn’t understand”.”

    Many times, an applicant thinks the point of novelty in his ABC invention (which has a preferred embodiment AB12C345, the numbers being alternative species) invention lies in C3, C4, and C5, and so he claims that full breadth (ABC3, ABC4, ABC5), only to later realize that B2 was novel also. Are you saying he shouldn’t be entitled to later claim AB2C in a continuation? Granted, that is not a preferable approach, and there are legal pitfalls in not making your broad claim at the beginning.

    That, I think, is what pds was referring to by “full breadth”, not possession of invention.

  44. “As such, to ensure that one gets a good filing date, you literally have to file the application as soon as you can satisfy the enablement requirements of 112. However, as Bated breath accurately noted, in many instances there is still considerable work to be done to understand the full breadth of the invention and/or how best to practice the invention.”

    If you “don’t understand” the “full breadth of the invention” when you file, you aren’t entitled to claims encompassing the part you “didn’t understand”. Refresh yourself on the concept of “conception.” Patents should not be granted on research plans.

    That’s the law and has been for some time. I’m not sure why anyone should be surprised and dismayed that the law is being enforced. As happy as some of us were when it wasn’t (“Hello, client? We actually got your incredibly broad claims allowed!!!”) it’s been clear for years that The Party is Ending.

  45. SF, thank you. I think I now understand what you have been trying to say.

    Once, I asked an examiner (who had returned to the office after a brief time of private practice as an attorney) how he liked his job. He said it was great – it was 40 hours a week, no attorney-type stress, etc. Then, he added with a smile, “Plus, here I have my own little fiefdom, and whatever I say goes!”

    Hehh. Perhaps the more numerous appeals will make it harder for a few examiners to keep such feudal lord mentalities.

  46. “SF, how is forcing more appeals a ‘benefit’?”

    Actually, I didn’t say more appeals was a benefit. I said examiner accountability is a benefit.

    In the past, examiners knew that applicants were unlikely to appeal. And they knew they could count on the RCE-Continuation gravy train to bail them out for poor quality office actions.

    The new rules will initially increase the number of appeals. After this initial increase of appeals (a detriment), examiners will realize that writing a bogus office action is a waste of time. After seeing such office actions repeatedly overturned, they’ll be more likely to issue better office actions in the first place, thus leading to fewer appeals and more efficient prosecution (a benefit). Of course, this benefit doesn’t outweigh the significant problems that the rules would create.

  47. SF, how is forcing more appeals a “benefit”? Are we (as a society) getting more “review” and error checking? Are you saying it is a benefit in that sense of a “second pair of eyes”? I see the theory of such a point, but no examiner or practitioner (let alone client) I know would agree with the theory. And from a systematic viewpoint, do you think that the BPAI is the correct normal level for handling examination errors/disputes? Managerially, wouldn’t that be very inefficient, and wouldn’t it fail to address the true problem?

  48. Here’s how ya do it. You copy the model of the big corp. You file multiple LLCs in Nevada . . . I think it’s $75/LLC. Then you assign each patent application to a different LLC. Have the LLCs cooperate with each other. Then you state that the cases can’t be joined, because they are part of a joint research effort and fall under the rubric of the CREATE act. No problem and it costs only $225.00 extra.

  49. real anonymous wrote, “I’m sorry, did you mean to say “greater backlog at the BPAI” and “longer pendency” and “higher legal costs”?”

    No. I was commenting on one of the few benefits of the proposed rules, not the vast number of problems that the rules will create.

  50. “The new rules are available today to anyone who visits the Federal Register office and will be available tomorrow, August 21, 2007, no later than noon, on the USPTO Web site — http://www.USPTO.gov.”

    Any chance of anyone scanning in the hard copy available today for us impatient people?

  51. Well, I’ve got to hand it to them. They did an equally fine job fkg up the PTO as they did in Iraq. Way to go brothers!

  52. “SF: But didn’t they say they would force joining of related applications?”

    No. The USPTO said the default was that applications filed on the same day are related, but applicants could rebut this presumption. If applicants simply do what they’ve always done (file the same specification with different sets of claims in each application), the USPTO will easily join the applications.

    However, applicants will adapt. Applicants will simply file smaller applications for patentability distinct inventions. These applications will have different drawings and different specifications — giving the USPTO no grounds to join the applications and giving the applicants a relatively easy path to show that the applications should not be joined.

  53. Oh what fun a forced joining will be.

    Although I should wait to see the actual rules, what characteristics would determine a joining and who would make that determination?

    Imagine this scenario: File 2-3 applications with related basic material but directed to different problems and claims on different features, the PTO sez “they are close enough to be joined,” and so get joined, the Examiner then issues a 2-3 way restriction requirement. If you do not get any $ credit for the applications, you can wind up paying multiple times to file the same application…

  54. “… these rules will also lead to greater examiner accountability”

    I’m sorry, did you mean to say “greater backlog at the BPAI” and “longer pendency” and “higher legal costs”? Yes, I agree. Also, expect new rules in the near future to increase the number of hoops you need to jump through to get an appeal… to control the backlog at the board.

  55. Where does it say this is not retroactive? I see this: “Do expect the rules to be retroactive in that they will apply to pending applications.”

  56. Does anyone know what happens if I already have an application that is a CIP of a number of applications? Or if I have an application that have a number of CIPs? Does this mean I can no longer file an RCE or continuation at this point?

  57. … these rules will also lead to greater examiner accountability because applicants will be forced to appeal more often. No longer will the applicants be able to throw the examiners easy RCE-Continuation counts to avoid making the examiner mad.

    Basically, the USPTO is going to make the applicants ensure quality examination is taking place, which probably isn’t a bad thing, but will likely lead to some serious violations of the never-make-the-examiner-mad rule.

  58. Weren’t the proposed rules just in reference to forcing applicants to choose 10 representative claims? How did we get from selecting representative claims to a final rule limiting the total number of claims in general??

  59. The rules aren’t going to reduce the USPTO’s overall workload because applicants will start filing smaller, more focused applications to cover the same number of inventions. However, the USPTO management will be able to demand more production from examiners because there will be fewer claims and smaller applications.

    In essence, this is all about making each application require a uniform, lower amount of work and forcing examiners to hop off of the RCE-Continuation gravy trains and start performing real work.

    Of course, taking away these gravy trains will lead to even less retention — thus decreasing the ability of the USPTO to examine cases efficiently and thus *increasing* backlog.

  60. “I can understand (although I may not agree with) arguments against continuations, but arguments against RCEs? What are they?”

    It has to do with the USPTO art units not being able to move “new cases.” Basically the problem (as seen by management, at least) is that in some art units well over 50% of the applications being picked up by examiners for first actions are continuations (and mostly RCEs). So I’m told that if RCEs aren’t limited, many art units won’t be able to get through there backlogs.

    It is the man-made mess at the USPTO is the actual driving force for many of these changes being proposed. But the changes will *not* address the underlying problem(s) that has/have caused the mess in the first place. To the contrary, the changes are conveniently designed to permit the perpetuation of those underlying problem(s).

  61. I note that the rules aren’t retroactive. He he he. When you put the purse at risk politicians scurry like no one’s business. Now remember. Once a law (regulation) is determined to be unconstitutional one may sue for money damages based upon acts taken pursuant to the unconstitution law (regulation). It’s the beauty of court decisions being retroactive.

  62. Once again, I am less concerned with the limits on continuations (as long as this rule does not applied to divisionals filed after a restriction) as I am with the limits on RCEs. If the Examiner introduces new art and issues a final after I have already filed one RCE and I amend the claims in response to the Final, it appears I am screwed if the Examiner does not desire to enter it. In which case, I now have to file a continuation.

    I can understand (although I may not agree with) arguments against continuations, but arguments against RCEs? What are they?

  63. No sht sherlock Peterlin. Of course applicants will file more continuations/RCE’s when the PTO refuses to properly examine and not allow applications. Your damn allowance rate is the lowest in history. You people make me sick!

  64. What we have found is, sometimes, people engage in a little
    post-filing research,” [Peterlin] said, adding that, while this may make good business sense, it doesn’t make for an effective patent system.”

    Oh I get it, once you file your patent you are suppose to quit working on the product and perfecting the same until the government decides to grant a patent. Meanwhile, once published at 18 months the competitors are allowed to copy your invention do a little pre-filing research and file on the improvement. Are these people f*&king crazy. This has to be taken out of context please tell me so. Otherwise I have to throw my chips in the Ahronian. Not only is the woman not qulified, she is an absolute catastrophe waiting to happen, if not happening already.
    There you have it – the expert has spoken.

  65. Thank you Ms. Peterlin. I am doing my best getting straight. I respect your experience and wisdom in this field, and see the error of my ways! Praise the Lord! I believe rule breakers are evildoers and should be forced to spend four years in Iraq. (A little over a year to go people).

  66. Bated breath … nice points.

    Anybody ever try to get a 1.131 declaration through these days? Although one should conceivably be able to swear behind 1 year from the filing date (assuming you’ve met the diligence requirements). However, as I have seen it applied, unless you can literally account for every day (well … maybe not that bad, but close), then the declaration will be rejected.

    As such, to ensure that one gets a good filing date, you literally have to file the application as soon as you can satisfy the enablement requirements of 112. However, as Bated breath accurately noted, in many instances there is still considerable work to be done to understand the full breadth of the invention and/or how best to practice the invention.

    The real question that needs to be answered is exactly what type of standard will the PTO employ in granting/denying requests for additional continuations/RCEs. If it is a liberal standard, then RCE/continuation practice will continue as it has before except that practitioners will now be required to submit some declaration having boilerplate language with slight modifications (I doubt it will be liberal because that would not produce the PTO’s desire effect of reducing applications). However, if the standard is strict, then I can foresee there are going to be fights that will lead either to the BPAI (is it appealable?) and/or to the Federal Circuit.

    Another unanswered question is what will happen to those applications directed to similar subject matter? Is the PTO going to require these applications be joined?

    Well …. it looks like we may get some more answers tomorrow. These new rules should make for an interesting read.

  67. “…, while this may make good business sense, it doesn’t make for an effective patent system.”

    What is the purpose of the patent system if not to assist/serve business and our democratic capitalism? The USPTO seems to think we serve them buy providing applications for them to process. (My sympathy goes out to many of the examiners stuck in the middle of this crap!)

  68. “These rules … will bring closure to the examination process more quickly[.]”

    … thus allowing big business to freely copy several new and nonobvious inventions that were disclosed, but were not claimed — which is the natural result of limiting continuation practice and essentially forcing applicants to submit 25 or fewer claims.

    Apparently, this administration has abandoned the rationale that free market forces (e.g., costs of prosecution vs. benefit of claim scope) is the best way to regulate business (e.g., the decision when to stop filing continuing applications).

  69. I want to see the whole interview in context, but taken alone, this statement strongly suggests that current PTO management is *absolutely clueless* about the most basic principles of how the patent system works.

    § 102 requires filing at the earliest possible moment that the technology is understood sufficiently to satisfy § 112 ¶ 1. There’s lots of other research that has to be done before a patent is ready to issue – prior art, commercial value, etc. etc. The statute sets no deadline for that research, and the entire procedure has been set up to permit that research to be done later, as it becomes relevant.

    This kind of understanding of basic tradeoffs in the patent system is what Congress hoped to ensure when it required that the Director and Deputy Director have “professional background and experience in patent or trademark law.” I trust that when the entire interview and the full text of the rules become available we’ll all see that my initial concerns were wrong, that Ms. Peterlin has the background and experience to efficiently preserve all the counterbalances in the patent system, and we will all praise her sound judgment.

  70. “”What we have found is, sometimes, people engage in a little
    post-filing research,” [Peterlin] said, adding that, while this may make good business sense, it doesn’t make for an effective patent system.”

    There you have it – the expert has spoken.

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