USPTO Continuation Rule Changes

7 thoughts on “USPTO Continuation Rule Changes

  1. 7

    Steve Guttman,

    I have no idea what “major software company” you happen to represent. But there’s one major software company that absolutely would like to see patents go away, whatever it may assert: Microsoft.

    Microsoft is really a case study in what happens in an industry in which there is no effective patent protection; one might say that a corporation like Microsoft is simply the inevitable outcome. Software for many years went largely unprotected by software patents — early on, because people seemed to believe they couldn’t get them, and later on because they believed they wouldn’t be effective or desirable (Netscape, foolishly, believed it could maintain its lead over MS in virtue of its head start. That really worked.)

    Microsoft has made its stupendous fortune simply by becoming the highest company in the food chain of copying in the software industry. Anyone who has followed the industry understands that it has NEVER contributed a basic innovation to that industry; at most, it adds a few tweaks to pre-existing ideas. Yet, in the area of personal computer software, it is estimated to be pocketing a good 80-90% of all profits.

    Why on earth would MS wish to put any obstacle in the way of its copying of other people’s ideas?

    The remarkable fact about MS is, while it has taken in tens upon tens of billions of dollars of pure profit from its fundamentally derivative software, and it complains bitterly about having to settle patent suits, in fact it has had to put up only the smallest proportion of its revenues toward other people’s patents. I’d be astonished if the figure were more than a percent or two.

    And its worse: MS has always been able to shakedown small companies with the threat that they had better settle for a pittance, or Microsoft will simply copy its ideas.

    How, I ask, could such a situation POSSIBLY be good for innovation? How can parking the vast majority of the profits in an industry in the bank account of the most derivative player possibly encourage the greatest innovation? Indeed, how is it even good for the culture of MS itself for such laziness in ingenuity to be tolerated, if not encouraged?

    While MS, again, wails mightily with its well orchestrated PR and lobbying machine against the depredations of patents, those patents have never been anything more than a minor nuisance to it, while the ideas it has appropriated from others have grounded its fortune.

    If one were truly interested in innovation, one could take the enormous profits MS has earned with the ideas of others, and drop chute it at random across Silicon Valley and Route 128, and get huge multiples of innovation back, compared to the paltry showings of MS itself.

    If the effect of strong patents in software is simply to redistribute money around in the software industry, so that others can do the innovation MS does not, how can that possibly be bad for innovation?

  2. 6

    As a representative of a major software company–I strongly disagree with the assertion that we want (or benefit from) a weak patent system. Nothing could be further from the truth. We are hurt when patents that should never have been granted are asserted against us. Anything that increases the quality of patents issued is going to be a benefit.

  3. 5

    Blaise –
    I wish to provide responses to 2 of your comments.
    COMMENT #1 —
    “the real reason some attorneys oppose the 10 designated claim rule is that often they are unclear where the point of novelty of the invention they are prosecuting lies.”
    I disagree. Creative patent practitioners often find multiple ways of claiming “around” prior art (by closely studying the invention and the prior art). I just drafted an application last month where there was very close prior art – this closest prior art “SPLIT” a single independent method claim into 5 independent method claims, each claim reciting a different aspect for how the present invention differs from the prior art.
    I see no reason why my client should not be entitled to claims reciting every point of novelty relative to the prior art – that’s the whole point of the patent system.
    After claiming the method, we wrote similar claims for the apparatus, the “means for” claim (so we can get those equivalents), and the Beauregard claim.
    In many cases, there is more than one “close” prior art – it’s crowded out there. This can increase the number of claims.
    Due to the UNPREDICTABALE nature of patent litigation, prosecutors must obtain protection from EVERY ANGLE – anything less, in my opinion, is harming clients that we are enjoined to serve.
    You never know when a judge will decide that the infringer infringes the method claim but not the device claim, the device claim but not the method claim, etc etc etc.
    You never know when a judge will hold a claim indefinite for one reason or another – many times the judicial standards change in time, and patents are litigated “retroactively.”
    If you claim every point of novelty, the chance of one of your claims surviving increases.
    COMMENT #2 —
    “I would keep in mind that it is in the self-interest of lawyers in general to maintain legal systems”
    The big technology companies (Intel, M$, AOL, Oracle, etc etc – all the guys generously funding the BSA) have a MAJOR self-interest in a weak patent system. With a weak patent system, small start ups without the same advertising budgets and without the same access to marketing channels are at a MAJOR disadvantage when marketing THEIR OWN novel technology. The common VC question of any software entrepreneur raising money is “how do I know that after you innovation catches on that Microsoft won’t swoop in and eat your lunch?” This is one reason why VCs are insisting on filed patent applications before funding a venture. We all know that the proposed rules are the fruits of lobbying efforts by would-be infringers to “clip the wings” of those seeking patent protection.

    I note that small businesses and venture-funded start ups are a MAJOR growth engine of the American economy, even if individual start ups do not have the same lobbying budget as the BSA.

  4. 4

    Based on comments from the recent townhall meeting in Washington D.C. the argument made by some attorneys is that the initial examination of only 10 representative claims will necessitate additional searching and work by Examiners in subsequent Office Actions responding to the incorporation of limitations from the previously non-designated dependent claims. However this is a faulty argument because even when Examiners examine all the claims on a 1st Office Action the attorneys amend the claims and the Examiner has to do additional searching anyway.

    In my opinion (and based on 5 years experience as a US Patent Examiner) the real reason some attorneys oppose the 10 designated claim rule is that often they are unclear where the point of novelty of the invention they are prosecuting lies. Therefore they want to provide very broad independent claims and many variations of the broad claims in the form of numerous dependent claims. They then leave it to the Examiner to determine the point of novelty by indicating which of the numerous dependent claim would be allowable if rewritten in independent form.

    During the D.C. Town Hall it was kind of interesting to note that the supporters of the rule changes were all non-attorneys. I would keep in mind that it is in the self-interest of lawyers in general to maintain legal systems (regardless of the type) as complex as possible so as to justify their existance and this may not be to the benefit of the public.

  5. 3

    I’m not sure I see what the big deal about the 10 claim proposal is. Obviously, no one is going to prepare the exam search document because of its possible use in future litigation. So, the strategy is–don’t designate any claims for exam, and the PTO will automatically examine your independent claims. Once those make it through examination, the dependent claims only have to be examined for 112 issues (101, 102 & 103 should be OK because they are narrower than broader claims which have been judged unique, non-obv).

    Compared to the continuation proposal, this seems to me to obviously shorten examination time with relatively minor downsides. Am I missing something here?

  6. 2


    I am a member of a group of patent attorneys practising in Southeastern PA who have been developing a response to file with the PTO with respect to the proposed new rule changes. I would like to bring our letters to your attention. How do I forward them to you?


    Larry Weinberger

  7. 1

    FYI, The comments recently entered are by the Small Business Administration — the government entity.

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