Continuation Change Timeline / Upcoming Conference

DSC002151The gossip tree says that the PTO received over 500 comments to its proposed changes to continuation practice.  Most of these comments are publicly available here.  The now independently confirmed rumor is that the final rules will be modified and published in late November or early December of this year with an implementation date of January 2007.  It is likely that a number of risk-averse companies will be filing continuations like-mad this fall on the recommendation of their CYA attorneys.

As many of you know, the proposed rules include controversial restrictions on continuation practice that would allow only one continuation or RCE as a right.  Other second or subsequent continuations could be filed with a showing of cause. Read more about the proposed continuation changes here.

Cecil Quillen, who first addressed this issue back in 2001, provided his interesting comments to the proposal:

Rather than attempting to limit the number of continuing application filings by creating an additional procedure. . . the PTO should instead seek legislation abolishing all forms of continuing applications (continuations, CIPs, RCEs, etc.), except for divisional applications filed pursuant to a Section 121 Requirement for Restriction.

For those of you in Chicago, John Doll (the Commissioner of Patents), Douglas Lichtman (UChicago), and others will be discussing this issue as well as other Internet related issues at an upcoming seminar titled “IP Law and the Internet” at Northwestern Law School on July 27, 2006. Link. Contact Evan Brown or Kevin Thompson for more information on the conference.

9 thoughts on “Continuation Change Timeline / Upcoming Conference

  1. Most office actions fail to meet the strict requirements set by the patent office. Most practitioners over look the beause they want to move the prosecution along. By restricting the number of continuations, I anticipate filing (i) more appeals, (ii) more petitions to withdraw the finality of the office action and (iii) petitions to withdraw the initiality (?) of the office action (I made this last one up, but it’s still a legitimate thing to petition). To protect my client’s interest, I’ll respond to the office action and file petitions to have their initialitity/finality withdrawn. Don’t mess with me, baby, cause I’m PO’ed!

  2. If Cecil Quillen ever prosecuted patent applications (and I guess he must have at some time, given his former job), he must have done so long before the PTO instituted second action final practice the way it exists now (which the inimitable Mr. Wegner once referred to as “compact persecution”).
    If the PTO stopped regarding applicants as the problem instead of as the basis for their existence, maybe we would have rational policies – but I’m not counting on it.
    Sit back and wait for the litigation when someone is denied a second continuation (or maybe a pre-emptive strike when the rules are enacted).

  3. The generous continuations practice is one thing that sets the US patent system apart and above those of the rest of the world. The ability to file continuations provides a great deal of equity in that one can accept allowed claims and secure some protection while pursuing alternate or broader coverage that might be warranted, but harder to prove. Additionally, it is yet another tool to deal with the inherent ambiguities in the system arising from the English language, claim interpretation generally, and simply understanding technological acheivements in context. I am not sure what the best analogy is, but this is like throwing out the baby with the bath water and will be a significant blow to the US patent system and its ability to support innovation.

    If we are to so severely curtail continuations, RCEs, etc., we ought to bring back or legistlate no-fault reissue practice.

  4. Cecil Quillen’s suggestion of “abolishing all forms of continuing applications (continuations, CIPs, RCEs, etc.), except for divisional applications,” presupposes that examiners are gods and patent lawyers are idiots.

    When an examiner issues a final rejection based on a misunderstanding of the claims or prior art, Qullen’s view that one ought not be able to file an RCE or continuation implies that the final rejection is infallible and that the client should go away, hat-in-hand, unable to patent her invention. Qullen’s solution? Patent lawyers should “‘get their act together’ and complete prosecution of their applications in the initial filing.” (See Quillen’s comment.)


  5. Thank you for validating my point, Alvin.

    This new, “applicant’s amendment/argument necessitated the new rejection” every-second-action-final is frustrating as hell. And it happens after RCE, too.

    There must be some kind of hellacious political pressure on some numbnuts at the PTO, because almost every one of those public comments was resoundingly negative.

    I saw Hal Wegner is a Deputy Commissioner in charge of this kind of thing. He should know better than this.

  6. As a former Primary patent examiner, I looked forward to receiving continuation applications for several reasons: 1) I was already familiar with the invention and the prior art; 2) I was already familiar with the issues; and 3) Only minimal work was required to issue a new office action.

    I wouldn’t mind the elimination of continuation applications (with the exception of divisionals & CIP’s) if the USPTO would discontinue their final office action practice.

  7. This is an absolute abomination. As posted earlier, the PTO is doing everything in its power to reduce the workload at the PTO without actually improving the examining corps. It’s a tacit admission that the corps can’t do their jobs.

    This is also the result of the natteriong of the nabobs of know-nothingness. While Professors Moore and Lemley may be excellent at patent policy on a macro scale, neither one of them is registered to practice (although Moore possesses the qualifications and Lemley does not).

    Lawrence Ebert in IP Today wrote what we all know: that in the post-publication era continuations and RCE’s are not a burden on the office and simply are not the source of perceived problems with the office. The statistics of pending applications compiled by Lemley and Moore in support of the proposition that continuations burden the office are simply wrong and fail to take into account how easy it is for an examiner to examine continuations and RCEs.

    Absolute hogwash!

  8. 1) It is EXCEPTIONALLY obnoxious of the USPTO to publicize the specifics of this rule less than 2 months before its implementation. I have a feeling that politics is involved (i.e. less time for people to scream). We also do not know if this rule will be retroactive. If this rule is NOT retroactive, expect MANY filings before January 1, 2007. I live overseas, and am not Christian, but it seems that many patent practitioners can FORGET about spending the holidays with their families. My advice is to go celebrate “Christmas in July.”

    2) Due to the uncertainty, if I can, I am filing many “full applications” (i.e. applications which I draft formally and completely at this time, rather than as a provisional) as US-Provisionals rather than as US non-provisionals, in case over the next year (or whatever period of time allowed to me by the oldest provisional), the inventor comes up with improvements – I wouldn’t want to “waste” a continuation application on a CIP. I will file these improvements as provisionals as they come along, and “unify” into a single US Non-Provisional (or PCT) at the end of the 12 month Paris convention time-period. If there are no improvements, I will simply re-file as a provisional. I am doing this even for applications where the chance of new matter over the next year is relatively small (but non-zero).
    The new rules will force many people to file provisionals that they would not have filed otherwise – it will be interesting to see what they do for PCTs – is a national phase filing of a PCT considered a continuation or not ? For cases where the applicant wants a delayed examination of the applicaiton (as is allowed in many jurisdictions, and actually, a much better solution to the so-called crisis at the USPTO than depriving applicants of property without legislation), filing a provisional + PCT will become a must. You will start to see business method PCTs – today, many applicants would not bother filing a PCT, and would only file in the US.

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