Rumors Continuations & Claims

Rumors: A usually reliable (but anonymous) source recently spoke to one of his reliable sources who is close to several high-level PTO officials.  According to the chain of gossip, implementation of the much-discussed continuation and claim restrictions (in modified form) is now “highly likely.”  Apparently, the exact rules are to-be kept under lock-and-key until published this summer. Once published, there will be no opportunity to get continuations-in under the old rules. I have been assured by the PTO that that there will be at least 30-60 days advance notice to the public.

This new rumor flies in the face of another rumor that comes through Hal Wegner. According to Professor Wegner: “A highly reliable source has just reported that Under Secretary Jon W. Dudas during a Silicon Valley swing this past week has assured industry leaders that the continuation rules are – in the words of one observer – “dead as a doornail”.” It appears now that the more likely rumor is “alive and well.”

I guess we’ll just wait and see. . .

46 thoughts on “Rumors Continuations & Claims

  1. 46

    I’m not an expert, but there seems to be a lot of hostility and/or indifference from the PTO management toward not only applicants but also examiners. While this is hard to understand, it does seem clear that there is potential for inventors/ patent practitioners and examiners to develop a better plan for solving the current problems than the PTO management has been putting forward. For example, I would think that a lot of patent practitioners would be in favor of examiners having more hours to examine an application if extra time was necessary. It would be really great to see AIPLA or the ABA get together with examiners (maybe POPA?) and lobby Congress to get some sensible reforms going, or at least get some oversight over the PTO management’s more hostile policies as has already been suggested here. I think there would be no better way to get attention from the public and/or Congress than such an alliance.

  2. 45

    Yes, examiners get a count for an RCE. RCEs are actually much better (from exmr’s point of view) than CONs. With an RCE, you get one count when the RCE is filed (essentially the applicant is abandoning the first round of prosecution and going for a second), plus get another count for writing the first action after the RCE. In addition, the examiner is more likely to be familiar with the subject matter than with a CON, since the RCE was probably filed < 6 months after mailing the final rej., whereas with a CON it could be years between the first round of prsecution and the second. Does that make sense?

  3. 44

    Does anyone know if an RCE generates counts like a continuation? I generally file RCEs rather than continuations because the application doesn’t go back to the bottom of the in-box. But I would imagine that examiners would not like RCEs if they don’t get counts for them like they do with continuations.

  4. 43

    Joe P. Examiner wrote:
    “It may take a pendency crisis to force real change”

    May take a pendency crisis ???

    it’s already a huge huge crisis, at least in high-tech area…

    I filed mine in early 2002, it finally issued in late 2006.
    Took 4(!) years to get the first office action out of PTO (partial allowance)
    Application was reassigned to 3 different examiners, according to PAIR.
    Then came an interview with the patent examiner:
    you know… a guy with a Ph.D. and his patent attorney on one side of the table, and a poor under-educated examiner on the other side… Almost a comic event…

    PTO should hire more seasoned people with Ph.D. degrees and real industry experience and pay them accordingly.

  5. 42

    I don’t blame anyone for wanting to leave. The hacks in management there have created, and perpetuate an unprofessional environment.

    Congress should set up an independent investigative body to look into the whole management at PTO. There is an obvious problem with morale and accountability that is greatly effecting the health of the patent system. This so-called management group have been given significant increases in fundings over the last few years with no improvements in the results. Instead, what we have seen are gimmicks to make it appear as if they are accomplishing something. The most prominent example being the decrease of “allowance error rate” — it is one big sham that is based on the subjective decision of a pto-DEPENDENT group. We can only guess what else lurks behind the morass if we were to dig deeper.

    Our field does not incite the public as much as the likes of Walter Reed. We could only do as much as we can on this site. Thank to Dennis for providing as much transparency as possible to this closed organization known as the PTO.

  6. 41

    Joe, I did not plan to leave, but at one point I had to decide whether I wanted to become an SPE or did nothing else but examine. Becoming an SPE was not very desirable to me. Instead, I tried to contribute by thinking of ways to make examination more efficient, but every suggestion was routinely ignored by the SPEs.

    One time, I had a director interested in a pilot to study a way of making sure applications were automatically docketed to the examiners with the most expertise. Unfortunately, I needed SPE support to carry it out. Nothing happened with that one. By the way, I did this on my own time.

    Also, I got tired of sitting through PAP reviews listening to my SPE spout off about how I should learn to cut corners as a primary and produce over 130% (all the while I was over 110%). Seems that he never had any problem doing it. Ha ha.

    I don’t blame anyone for wanting to leave. The hacks in management there have created, and perpetuate an unprofessional environment.

  7. 40

    Joe P., what we need is more time per application so the production requirement doesn’t beat us down and force us to leave.

  8. 39

    Joe P. Examiner is right. The USPTO should pay the examiners more. It should also create satellite offices where the cost of living isn’t through the roof. The USPTO could charge applicants signficantly more for continuations, which could cover the increased pay and have an added benefit of deterring knee-jerk continuation filing for less important inventions.

  9. 38

    Nothing is really going to change until everybody, inside the office and out, stops viewing patent examining as a stepping-stone job. None of the people retiring from the office, save a dear handful, after 30 or 35 years of service works in examination; they all work in administration or management, etc. Gene Mancene was here for over 50 years, but spent most of that time as a SPE. People work in the corps a few years and then become SPE, SPRE, or QAS, or they go to become an agent or attorney somewhere. Many of the probationaries just use the PTO as a waypoint to graduate or law school. I’ve been here almost two years and couldn’t imagine doing this job more than ten years with production the way it is. Given the fact that production hasn’t changed since 1976, but the complexity, number of claims, and amount prior art have dramatically increased, I don’t believe anybody who started today could do production for 30 years. Even if the error rate on allowances is just a few percent, it is just a matter of time before the law of averages catches up with you. Patent examiners should be paid more and treated more professioally. Maybe more experience and education should be required instead of coming straight out of college. It may take a pendency crisis to force real change.

  10. 35

    “An Examiner’s” post about ratings brings back a stream of memories. While I managed to stay at the top rating in the majority of my time examining at the PTO, my practices evolved greatly.

    At first, production instilled the fear of God. Much advice received from experienced examiners was along the lines of cultivating FWC’s, RCE’s, divisionals, and continuations. This was viewed as a necessary evil for survival. I bought into this approach wholeheartedly. Actually, I had little choice because most supervisors would not permit allowances by newbies unless a record had developed including “a sufficient amount” of prosecution and amendments.

    During the middle of my PTO career, I became very good at finding ways to force the applicants to file continuing type applications. I developed a hardened attitude. I thought I was some kind of “expert” in my art. Also, I regularly read the MPEP and caselaw related to what I was doing at the time. I decided to make examining my lifetime occupation.

    At one point, I planned a trip for examiners to several businesses. At one destination, we met with the entire in-house counsel of a large corporation. We also met with some small time inventors in their shops. This trip planted seeds of change that radically affected how I approached my job. Around the same time, a fellow examiner had sought out help from a longtime primary examiner in my group. This older examiner’s initial response was, “how can we allow this application?” This was a radical notion to me.

    While going through the process of becoming a primary examiner, I developed a simple approach to every application before me. I viewed the first action as the most important act that would dictate course of the remaining prosecution. A great majority of my time allotted per BD was spent searching for the art most relevant *to the invention.* Sure, claims as filed were very broad, but when a prosecutor saw the art I presented, the claims were most often amended accordingly. There was never a need to search again except for art that published since my first search. This worked well for everyone involved. I continued examining this way until I left the PTO, but not without someone challenging me from time-to-time. I had no fear of these challenges. Each time I confronted the accusers, and they would melt away.

    The point of all this is that the PTO management does not appreciate any philosophy of providing assistance to the applicant, which works to reduce unnecessary continuations and result in the most efficient disposal of applications. If the PTO would embrace and promote professionalism, the position of examiner would receive more respect, and more would decide to continue examining as a career. (The above comment about “Office Space II” is so true.) It would reduce unnecessary continuations of all kinds and provide an atmosphere of greater efficiency.

    I know I am going to pay in purgatory for my early practices, but I believe I have since paid penance for many of my past sins.

  11. 34

    And for the record, the rating system goes:

    Fully Successful

    So that is a pretty big fall.

  12. 33

    > For most examiners, who have more than about 5 hours of other time, the flat goal will reduce their production and reduce their income.

    For a good number, it will get them fired. If you crank though the numbers, an examiner’s rating can fall from Commendable to Unacceptable by performing EXACTLY THE SAME but under Flat Goal instead of the current system.

  13. 32

    What you must understand is that the best manner in which to spur innovation is by collaboration. The threat of the springing interest in the patent ensures that a party who has interest in variations of the invention disclosed, but not claimed, will work with the entity who has ownership rights in the claimed subject matter. Other they face the threat of litigation. In this fashion, Article I, section 8, clause 8 is satisfied. The entity that brings new and useful arts to the public is rewarded. Any system to facilitate copyists is fallacious. Remember it is ideas for which the patent is the reward NOT THE MANUFACTURE OF PRODUCTS. If one wishes to copy the claimed idea one may license or wait until the term of the patent expires and there are no pending continuations.
    What we have to understand here is that Albert Einstein would be considered a troll in today’s environment were he to patent his ideas and seek compensation from an entity who infringed his patent. It appears that the only way for these commercial interests to consider Albert Einstein an angel is for him to charitably give away his ideas. Alternatively, Albert Einstein would be an Angel if he allowed his ideas to be stolen by commercial interests. The term copyist is far far too euphemistic for me. Let’s call it what it is.
    Now let’s look at the system. It appears to me that the commercial interests complain about too many bright engineering students not engaging in the traditional role of servitude. That is they start their own companies instead of being hired based upon the disclosed premise that they will exchange their time for a paycheck. Traditionally, the servile engineer is offered employment at a major commercial interest and is faced with the bait-and-switch . . . “oh yeah, before we can pay you all your IP has to be assigned to the company.” Out of the blue, never discussed during the interview . . . and, by the way, never bargained for during employment discussions. Suddenly, having turned down all other employment opportunities the servile engineer is forced, under duress, to sign the document and sacrifice a very important right that was never negotiated and, quite honestly, in some instances was fooled into signing. What is the reply from the company . . . oh its industry standard.
    What I am waiting for is the employee who has the foresight to assign all his IP rights to a family trust, BEFORE, interviewing for jobs. In this fashion he assigns to the company all the IP rights he has NOTHING. Then the family trust comes and negotiates for payment to the student for the IP rights.
    In ending, it is quite apparent that the commercial interests are trying to return to a time that will never again exist. They want handshake agreements between their brethren for cross-licensing of intellectual property. All the time the employees of the commercial interests move from company-to-company never owning the thoughts in their minds until they retire. Then it is too late.
    I submit that this practice must run afoul of at least the anti-trust laws and more likely the 13th Amendment-the only Amendment that regulates strictly private action. For the time I mentioned when the servile engineers moved from company-to-company where their IP rights (the rights in the ideas in their minds) were transferred from one company to another, like a typewriter or some other chattel, is nothing more than intellectual slavery. I could have sworn we saw our way against this type of culture in a quaint Pennsylvania hamlet on July 2, 3 and 4, 1863 called Gettysburg (a government of the people; by the people, FOR the people). We MUST end intellectual slavery . . . not advance it. I submit these proposed rules do nothing more than advance intellectual slavery.

  14. 30


    I was not contending that specifications provide a complete public notice like claims. I was pointing out that this is a decision of burden allocation, and the current system lessens the burdens on inventors. Zeke’s solution was to put the entire burden on the inventors.

    In the end there under the current system there is risk for the potential infringers, but that is something we manage all the time. The publication process has vastly minimized some of the risk as one can easily determine whether there are pending applications, and can even follow pending prosecution.

  15. 29

    EPA – what strikes me about the “sweeping changes” the USPTO wants to implement is that, for the most part, only USPTO management seems to like them. Patent attorneys don’t like them. Patent applicants don’t like them. Patent examiners don’t like them. Yet, USPTO management does not seem to care (or want to listen). I have a great idea for new movie: “Office Space II – PTO Commissioner Lumbergh”

  16. 28

    I’ve said it before and I’ll say it again:

    The public benefits fully from the entire disclosure. Therefore, the applicant should have the ability to leverage the entire disclosure for the entire statutory term of 20 years. The best way to do that is to allow continuations for the entire statutory term.

    Of course, copyists would love to leverage the disclosure-dedication rule so that they can use disclosed, but not claimed subject matter. And it’s much easier for copyists to design around claims than a specification because the relatively liberal written description requirement here in the United States makes it difficult to predict the precise bounds of what someone might claim.

    This difficulty in predicting the precise bounds of potential claims may unfairly benefit the applicant. In particular, some competitors may not pursue products because they are very similar to the disclosure and, while they believe the applicant has not enabled or described claims that could read on the products, they aren’t sure that the USPTO will have the same view.

    But, if I have to choose between an applicant that actually invented something and a copyist that is slightly disadvantaged, I’ll choose the applicant.

  17. 27

    I was referring primarily to the numbers recently published by the PTO for “allowance rates.” Things are definitely much tougher in the software/business method areas. I know of one case in which PAIR has indicated it as being “Allowed — Notice of Allowance Not Yet Mailed” for nearly one year. The Examiner has provided little insight into what is going on – the Examiner has allowed it but that allowance is being “reviewed”, “verified”, etc.

  18. 26


    That sounds like a far more well-reasoned explanation than my “well it isn’t fair” 🙂 Thanks for helping me to understand the rationale behind my burgeoning opinions on this subject.

    As I think you are also pointing out, little changes could make an big improvement in patent quality. These sweeping changes that seem to be the focus the current USPTO drive to improve quality seem destined to either fail or bring with them a raft of new problems.

  19. 25

    David Metzger:

    Is it your contention that the specification has a public notice function comparable to that of the claims? To analogize, does the specification, though not a “fee simple” like the claims, confer a “springing interest” in subject matter held by the public, but transferable to the patentee on the patentee’s own determination that he would like to own a new product on the market that he did not previously claim?

    Well, that is a tendentious way to put it. I agree, in general, that continuation practice has served the aims of the patent system well, and provides a valuable tool for inventors to reap the benefits of what they have invented. But, I do worry that as currently constituted, it forces the public to divine a hypothetical ownership interest from the specification, which specification was never designed to provide such public notice of what is novel or nonobvious in the invention. Perhaps more stringent policing of 112 on continuations would prevent overreaching.

  20. 24

    Re: the sudden drop in allowances. In what technology areas have you all seen a sudden drop? Just curious because in my area (biotech) not much has changed. There have been no edicts from on high to reduce allowance rate, and I don’t think my own allowance rate has changed much. Granted it was low to begin with.

  21. 22

    Zeke, in addition to the comments of others above, I would add that most DIV’s are the result of current arbitrary PTO restriction practices. The PTO has framed these restrictions in such a way as to make almost any argument an admission that the inventions characterized by an examiner are not distinct (and therefore obvious over one another). In almost all cases, it is best to avoid this pitfall and file one or more divisionals.

    Many of these problems arise out of the desire of examiners to maximize the amount of counts out of a single application. A new way of measuring production is surly needed.

  22. 20

    I would love to hear more from examiners. For example, are there any examiners out there willing to comment as to why the sudden drop in allowances?

  23. 18

    Zeke says “Do it once and do it right.”

    That sounds good, but it applies equally to the PTO.

    In my experience, DIVs and CONTs are filed in response to baseless rejections where the examiner is not willing to consider any reasons for patentability. I’ve even had one examiner tell me in an interview that there was nothing I could do that would convince him any claim was allowable. (We finally did get a patent.)

  24. 17


    What one invents is captured in the disclosure. If a claim can be written that is supported by that disclosure, and is not otherwise shown to be anticipated or obvious, then indeed the inventor invented it, by definition. That one does not fully appreciate the full scope of one’s invention, or cannot appreciate all of the ways to articulate it through the claims (e.g., realizing that some limitation is not really needed or can be better worded) should not be a basis (and is fully recognized by our case law as not a basis) for denying the inventor the ability to fully later claim the invention.

    The flipside to your point is that the infringer has the complete ability to analyze a disclosure and determine what the inventor might be able to claim. It turns out that all you are arguing is an allocation of burdens, and thus far, in the US we lessen the burden on inventors. This policy has served us well in encouraging innovation and rewarding inventors.

  25. 16

    To Alan McDonald

    Let me give you an example of where I see the continuation practice being abused which wouldn’t be covered by your example of drafting claims to every feature.

    Sony got sued a while back because of their PS2 DualShock controllers. Can’t remember the name of the patent holder offhand, but I researched the case at the time. On filing (or at least, judging from the PCT publication) the application was all about vibrating devices that were attached to a body part, and the claims all included that requirements. PS2 controllers are not “attached to a body” part and therefore would not have fallen within the scope of any of the claims.

    At some point, a continuation was filed and the final granted patent mysteriously omitted the “attached to a body part” feature. Suddenly, the DualShock controllers are infringing articles!

    Such an amendment, either during prosecution or on filing a divisional, would never get through Europe and, in fact, they haven’t even tried yet – I’ve been following the case in the EP to see where it goes.

    So, my concern is not just adding in new features, but that continuations are used to broaden the scope of protection beyond anything that was described in the original application.

  26. 15

    Divisionals and continuations are more often than not a result of failing to fully think through the scope of the invention or failing to properly research the prior art.

    If the claims you get don’t cover a product that a competitor brings to market 5 years after you get your patent, guess what? You didn’t invent it.

    Do it once and do it right.

  27. 14

    I say we should step up the pressure on the PTO and call in the Marines. I mean, we invaded Iraq, so why not an out of control government agency on our own soil?

  28. 13

    it seems disturbing that on the one hand we are faced with fixing the overused, improperly used and subjective “second pair of eyes” proceedure which has resulted in the plummeting allowance rate and on the other hand now the seemingly non-statutory restriction of continuations — the inventor who has a really novel idea gets locked in the middle with only a hugely expensive appeal process left as a resort — and as much fun as an appeal is to the cafc (or dc dist ct) is seems wasteful to force all inventors down this path — is the only answer vastly limited claims? (this is an honest question)–

  29. 12

    With respect to David Boundy’s remarks above.
    OK, with #2 you are right on.

    However, with respect to #1, the current system actually works pretty well. Yes, it is non-ideal and it is subject to ‘gaming’ (for lack of a better term) by exmrs. It’s basically the worst system, except for all the other possibilities. There are adjustments that could be made which would both help exmrs and the quality of examination:
    1. Give more time per case. The hours/count have not been adjusted since 1970s. However there is a lot more prior art to go through than there was 30 years ago. For example, biotechnology basically didn’t exist, and there were essentially no computer sequence databases. Now sequence search results easily take an hour or more to review, much less to write up.
    2. Adjust the amount of time per case on a technology-specific basis. Maybe give more hours to examiners in particularly complex technolgies with lots of enablement issues. 80% of my cases have scope of enablement issues. I have heard that in other technologies (mechanical, for instance) 112/1st par. rejections almost never happen.

    However, with each of those would (could?) come an increase in pendency. The job of being an examiner is a difficult one. We are under pressure to do a lot of work at very high quality. If there is going to be an increase in quality (which i hope people will not object to; and I mean quality broadly defined, i.e. an improper rejection should not be made) it will come at the expense of speed and pendency. Is that a tradeoff the Bar is willing to make? Inventors?

    FYI there is frequently pressure from Congress to decrease pendency, which could explain some of the proposed rule changes.

  30. 11

    There’s are two simple cures for much of what ails the PTO –

    (a) Calibrate the “counts per application” to the amount of work. This is easy to do – in 2003, the PTO told us that the new filing fee schedule was calibrated to costs. Thus, an application with a $2000 filing fee should generate twice as many counts as an application with a $1000 filing fee. This would cut down all the games examiners play with restrictions and slip-shod examination of claims, and would cure time imbalances that are the underlying cause of the problems to which the three rule packages are direted. The “flat count” system is the root of the problem – the rule packages are a flawed attempt to address third-order effects, and thus doomed to failure.

    (b) Follow the law, all of the law (including the procedural law), only the law (if it isn’t in a published document, it isn’t the law – it’s unconstitutional for federal agencies to make up new rules on the fly), all the time (no excuses – if the excuse doesn’t exist in a published document, it doesn’t exist, and you have to follow the law).

    Those two simple steps would make most of the PTO’s problems go away in under a year. And the second one would be – gosh – following the law – and thus is absolutely anathema to current PTO management.

  31. 10

    Since Alan raised the production system question, the issue with flat goal is a change to the current system.

    The current system gives two counts. One count is earned when the first substantive action is taken on an application (ie, first action on the merits or allowance). The second count is earned when the case is completed (ie allowance, abandonment or appeal to the BPAI). As you can see, a first action allowance is therefore worth two counts. A final rejection, on the other hand, is worth zero counts.

    Each examiner has a particular expectancy, based upon the art they examine and their GS level. The expectancy for an examiner might be 22.4 hours/2 counts as a GS-12. A GS-9 would then get 28 hours. When they get to GS-13, that will be cranked up about 15%, another 10% when they get partial signatory authority, and another 10% when they get full signatory authority. So the primary examiner in the same art would only get about 16.4 hours/2 counts.

    Examiners start with 80 hours in a biweek. If they have interviews, train junior examiners, work on special projects for the agency, receive training, take sick or annual leave, etc., the number of hours spent in those alternate tasks is called “other time” and is currently deducted from their total time. Any overtime is added to the total. So the primary examiner in the art discussed above, might have 16 hours of other time, based upon one mandatory training class hour, an art unit meeting for an hour, 2 interviews that lasted on hour each, 2 hours spent classifying cases, seven hours spent training a junior examiner and 3 hours for a special project. That examiner would then have 66 hours. The expected number of counts to get 100% production would be 66 hours/8.2 hours per count or about 8 counts.

    The flat goal program changes this plan to give a fixed amount of annual leave that can be used, and a set amount of othertime. For some examiners with little other time, the flat goal will increase the amount of money they can earn. For most examiners, who have more than about 5 hours of other time, the flat goal will reduce their production and reduce their income.

  32. 9

    To European Patent Attorney,

    Whenever I draft PCTs that may be filed in Europe, I draft claims for every single feature – whether or not the given feature seems meaningful. In national phase, I simply cancel almost all claims and leave a small number of claims.
    This way I know that the European examiner will not consider the different features ‘new matter’ – they have already been claimed.
    According to this ‘game’ sometimes I end up with many claims that seem meaningless- but I have the ‘ammunition’ I need to exclude prior art during prosecution.

    Of course, I usually provide this service only for my ‘well-heeled’ client – smaller clients can’t afford the hours.
    Also, I rarely do this for ‘software patents.’

    ANOTHER ISSUE – in Europe, they do not have continuations but they do not bring in final rejections so quickly.

  33. 8

    I’m guessing that if any of the three big rule sets, continuations, representative claims, or IDS, get implemented that the PTO officials are going to get hauled before the House Intellectual Property subcommittee.

    It’s been a long time since I was an examiner, but here’s what I remember about the count system.

    1. Your hours per balanced disposal are only measured against hours worked. So if you take sick leave or vacation you are not expected to have counts for those hours.

    2. There are ways to even reduce the hours below those worked, called “other time”. For example, you are not charged against your production for hours spent in a reclassification project or “on detail” to the Board of Appeals or other part of the PTO. Also, you can write off hours spent transferring an application improperly assigned to your art to the proper art area (this happens mostly after an election in a restriction requirement).

    3. Now, take all your hours work, subtract the “other time” and you have net hours. Divide the total counts (first actions on the merits + abandonments + allowances + cases sent to the Board of Appeals) into the net hours, divide that number by 2 and you have your hours per balanced disposal. If that number is at or below the “goal” for your level and art difficulty, you’re safe. Awards are made for being 20% or more better than the goal.

    Another way not to be “safe” is to not move the oldest case on your docket during the two week pay period, especially if it’s the oldest case in your technology center.

    Please remember, this was the system in 1974-5, there may have been revisions to the mechanism over time, but the basic idea of “hours per balanced disposal” as the examiner’s goal has not.

  34. 7

    The arrogance of USPTO management is staggering. They implement rule changes which deny the coverage which an invention merits and they will be sued, and not just one suit, but many.

    I submit that it is not the patent system which is broken, but rather USPTO management. We need a regime change at the USPTO to get it back on track.

    The problem is that we have bureaucrats with tunnel vision, they only look at what will make their bureaucratic lives easier, and not what their mission is.

    One more point. A new think tank is starting up in a few weeks headed by Pat Choate and Irving Kayton to in part address USPTO issues like this one. Those who are interested in participating in studies related to patent policy should contact Kenneth Brown Special Projects, Patent Policy Forum kbrown at

    Ronald J. Riley,
    President – – RJR at
    Executive Director – – RJR at
    Washington, DC
    Direct (202) 318-1595 – 9 am to 9 pm EST.

  35. 6

    From where I sit, over the pond, the problem is not in the ability to file continuations, but in the ability to substantially modify the claimed invention in the patent application years after it was originally filed.

    This, to me, is somewhat unfair play since it means that a patent app can be filed, the applicant can wait years to see how the market develops and then re-file their application directing it to the current market and attack their competitors directly. Added to the possiblity of triple damages (not available in Europe, by the way) this makes patents a potent weapon.

    I don’t think it should not be possible to use patents as weapons in this way. What is needed is tighter regulation about the subject matter than can be claimed in a continuation, not limits on the number of continuations you can file

  36. 5

    What about the count system? The flat goal? That doesn’t exactly pertain to the rule package, but it has its own problems, namely, that production isn’t sufficiently adjusted for accumulated annual or sick leave.

  37. 4

    Just a voice from the inside: the proposed rules limiting CONs, DIVs, and RCEs are very unpopular with examiners as well, particularly the more senior examiners who have higher production requirements and also have more CON/DIV/RCE-heavy dockets.

    I can get into the nitty-gritty of the details of the PTO count system if people are interested, but suffice it to say that mgmt. is hearing nasty things about the proposed rule changes from examiners as well as attys.

  38. 3

    And there is every likelihood that someone or group will go into the District Court in DC asking for the rules to be stayed, because they go beyond the PTO mandate of promulgating rules “not contrary to statute.”

  39. 2

    “Once published, there will be no opportunity to get continuations-in under the old rules.”

    The APA requires a rule to be published in the Federal Register at least 30 days before it is enacted. So, we’ll have at least 30 very busy days to file continuations. This basic factual error makes me think that your source doesn’t know what he or she is talking about.

    If the rules change “quite a bit” from the earlier notice as suggested by the previous comment, the USPTO must provide another notice and comment period.

  40. 1

    John Love spoke two weeks ago at the Utah IP Summit and said the new rules were in the home stretch. He implied the rules were changed (and still changing) quite a bit from the earlier notice, but he still expected that patent attorneys as a whole would be very unhappy.

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