Continuations Rules: Not too bad?

Rumors via Hal Wegner:

The continuation rules continue to be the corridor talk of the Boston AIPLA meeting which continues through tomorrow. One respected source has stated to have received information from inside the PTO that the continuation rules package is extremely thick (undoubtedly to respond to the numerous issues raised in testimony) and that the following are essential elements of the rulemaking package:

The “2+1” Limit on Continuations/RCE’s: “2+1”: First, a patent applicant is limited to one (1) RCE and (2) continuing applications. The rules will be applied retroactively for cases that have not yet received a first action on the merits.

“3+1 Transition Rule”: For cases which do have a first action by the time of the new rules, a “bonus” continuation will be allowed, i.e., a total of one (1) RCE and three (3) continuations.

The “25/5” Claim Limits: Twenty-five (25) total claims, including up to five (5) independent claims.

78 thoughts on “Continuations Rules: Not too bad?

  1. 78

    So, if the rules are retroactively applied to applications that have not yet
    received a first action on the merits (as indicated for at least some of the rules, a la the rumors from Hal Wegner as described above), would that mean that applications
    that would not be permitted under the new rules would be denied a
    priority claim and effectively obliterated? (such as divisionals that were
    filed off of an application in which the restriction requirement was not made,
    and continuations that were filed off of an application that already had
    more than the required number of continuations plus RCEs)
    If that’s what it means, I really don’t see how they can do that
    and I can’t imagine that at least that particular aspect of the rules
    will be upheld. Which might, I think, leave us with a redacted version
    of the rules (in which they still apply to new applications filed after
    the effective date)–or would the whole group of rules stand or fall
    together??

  2. 77

    I really think the PTO ought to make the effective date 60 or even 90 or more days after the final rules are announced. We’ve been trying to parse through the rules as published in the Fed. Reg. in January 2006, which look significantly different from the update (rumors) passed along (thanks!) by Hal Wegner. Because of the retroactivity and the fluidity in the rules, it’s taking a *lot* of time to figure out all the possible consequences to each patent family, and of course these are not the final rules yet. I am not an administrative law expert, but my impression was that significant changes in the rules had to go back for notice and comment, and if they’re changing the maximum claim number and the maximum number of continuations/RCEs, isn’t that significant (even if it’s going up?)? I think it would make sense to have the rules take effect after a longer period of time to allow time for people to get their cases in better condition to minimize the effects of retroactivity and thus reduce the potential damage to patent rights which might lead to more (and more significant) challenges to the rules. But maybe it ultimately won’t matter to the final outcome; it will just expose a lot of patent attorneys and agents to possible malpractice charges for not having taken every possible measure to protect their clients’ inventions (i.e., by not filing a continuation before the rules take effect). I bet the reason there hasn’t been even more fuss about these rules is that they are so long and so complicated that few people have tried to actually sit down with a patent family (or a whole portfolio) and figure out what to do. I have, and it’s really making my head hurt. It’s also bringing home the frustration people have expressed on this and in other places about the PTO. Curses.

  3. 76

    … and, as for any supposed benefit to the backlog, these rules will have little to no effect. Instead of filing one large spec and filing five continuations for each additional invention, applicants will file six rifle-shot specs.

  4. 75

    “In any event, the proposed continuation rules don’t change a burden of proof. Rather, they prevent abuse of continuation practice.”

    If the public gets the full benefit of the patent’s disclosure, how it is “abuse” to allow the applicant get the full benefit of the 20-year term by keeping a continuation pending? Arbitrarily limiting the number of continuations may force a premature application of the disclosure-dedication rule, which benefits copyists, not innovators.

    And, by the way, it’s rare that continuations last for the entire 20-year term. At some point, business realities (e.g., the cost of filing and proseucting an additional continuation) typically end continuation practice far short of the 20-year term limit. While a few critical patents may run into four, five or more continuations, most run-of-the-mill patents may have one or two continuations, if any at all.

    Finally, proseuction laches is still available to address any serious abuse.

  5. 74

    “Under current practice, filing a continuation is a matter of right”

    That’s pushing it, I’d say. In fact, that attitude towards continuations is why the PTO is pulling the plug and its why the rules will most likely be found valid in court.

  6. 73

    Points,

    You find my arguments and citations bizarre, and I find yours the same. We’ve framed out the questions and points of view nicely; the courts will no doubt the parties make arguments along much the same lines we have, and decide the case; and then we’ll know who had the more sound view.

  7. 72

    Maybe I should have been clearer – you cited no case relevant to the dispositive issue, the definition of “substantive” applicable to agency rulemaking.

    Stevens v Tamai decided no issue of the definition/dividing line between “procedural” and “susbstantive,” and no issue of whether the agency’s interpretation was within the scope of the agency’s authority, and no issue going to allocation of burden of proof. The issue in Stevens was purely one of timing – there was complete agreement that a certified translation was required, the sole issue was *when*. The court says so plainly: “We observe that all of these rules appear to reflect a permissible exercise of the Office’s authority and also note that Tamai presents no arguments to the contrary.”

    To get high levels of deference you noted in an earlier posting, the issue has to be within the agency’s authority. The scope of that authority is the central issue in this discussion. You’ve entirely avoided grappling with that issue.

    > In any event, the proposed continuation rules don’t
    > change a burden of proof. Rather, they prevent abuse
    > of continuation practice.

    You just conceded the case. In the D.C. Circuit, when a rule “encodes the agency’s substantive value judgment,” it’s “substantive.” Other circuits apply a broader test which is even more likely to find these rules “substantive.” The cases you cite are for *court* rules under the Rules Enabling Act, a somewhat different issue than *agency* rulemaking under the Administrative Procedure Act, with a significantly different definition of “substantive” vs. “procedural.”

    > There is nothing in sec 120, or any other section,
    > of the Patent Act that expressly forbids the Office
    > from preventing abuse of continuation practice.

    You’ve got things backwards. Agencies only have the powers delegated by Congress. In some countries, agencies have all powers not taken away by the legislature. That’s not how it works here.

    > In any event, the proposed continuation rules don’t change a burden of proof.

    Under current practice, filing a continuation is a matter of right, and the PTO has the burden of proof to show that it’s an abuse. E.g., Bogese. The proposed rules create several presumptions, for example, presumptions of double patenting, presumptions that the claims in the continuation could have been presented earlier and should not be granted if there is any such possibility, etc. and it becomes the applicant’s burden to show otherwise. In what sense is this not a shift of burden of proof?

  8. 71

    Points,

    I’m not now, nor have I ever been, a patent examiner. I am a law professor. (Of course, for some who post comments here at PatentlyO, that’s the worst group of all.)

    I did provide a citation already, to Stevens v. Tamai. You will see, if you read that case, that the PTO rules the Federal Circuit approved there include things like establishing the burdens of proof in a case, along with other procedural rules.

    In any event, the proposed continuation rules don’t change a burden of proof. Rather, they prevent abuse of continuation practice. And the Greenwich Collieries case you cite strikes me as an especially weak analogy to the question here. In Greenwich Collieries, the conflict in question was between a Labor Dept. practice under the Black Lung Benefits Act and a provision in the Administrative Procedure Act that expressly dictates that “[e]xcept as otherwise provided by statute, the proponent of a rule or order has the burden of proof.” 5 U.S.C. § 556(d). There is nothing in sec 120, or any other section, of the Patent Act that expressly forbids the Office from preventing abuse of continuation practice. Indeed, In re Bogese holds just the opposite: “Like other administrative agencies, the PTO may impose reasonable deadlines and requirements on parties that appear before it. The PTO has inherent authority to govern procedure before the PTO, and that authority allows it to set reasonable deadlines and requirements for the prosecution of applications.” 303 F.3d 1362, 1368 (Fed. Cir. 2002).

    I also summarized a mainstream view of the procedure/substance distinction from the Erie doctrine. I’m happy to supplement that with some citations. Here are just a few: See Hanna v. Plumer, 380 U.S. 460, 475 (1965) (Harlan, J., concurring) (One can distinguish substantive and procedural rules “by inquiring if the choice of rule would substantially affect… primary decisions respecting human conduct.”); S.A. Healy Co. v. Milwaukee Metropolitan Sewerage District, 60 F.3d 305, 310 (7th Cir. 1995) (Posner, J.) (A state rule has a substantive goal if it is “designed to shape conduct outside the courtroom and not just improve the accuracy or lower the cost of the judicial process.”); Thomas W. Merrill, The Common Law Powers of Federal Courts, 52 U. Chi. L. Rev. 1, 46 n.200 (1985) (“Substantive rules… guide the conduct of persons outside the courtroom, before they are drawn into litigation. By negative implication, ‘procedural’ rules are those that would not affect behavior in… ‘everyday, prelitigation life.”‘).

  9. 70

    Joe Miller | May 13, 2007 at 12:42 PM writes

    > Of course, the dividing line between what’s procedural
    > and what’s substantive is fuzzy (at best).

    If you’re a lawyer or agent, then you know that when an examiner says something is “fuzzy,” it almost always means the examiner is either too lazy to do any research, or too afraid of what he/she might find. Applicable here?

    Here’s what the Supreme Court has to say about “the dividing line between what’s procedural and what’s substantive,” in a case reviewing an agency interpretation of a statute that is rather similar to those proposed here:

    “[T]he assignment of the burden of proof is a rule of substantive law.”

    Director, Office of Workers’ Compensation Programs, Dept of Labor v. Greenwich Collieries, 512 U.S. 267, 271 (1994). You’ve asserted several times that the proposed rules look procedural to you, but you’ve never come forward with any evidence, any cite to a legal source, or anything other than your gut feel, for any definition of “procedural.” (Perhaps you were trained as a patent examiner?)

    Once we’re past 10-20 messages in a thread, it doesn’t advance the conversation to rely on personal opinion. Find some evidence for an issue of fact, find a case or statute for an issue of law. Definitions of legal terms of art are just as much “law” as anything else.

    I offer a motion to adopt a local rule that provides for “No bloviation” after 20 posts on a thread.

  10. 69

    Points to Ponder,

    I don’t think I’m off base, I think I simply disagree with those who argue that the proposed continuation rules are substantive, rather than procedural. The rules don’t prevent anyone from filing a small number of continuations as a matter of right, and they don’t prevent additional continuations so long as the applicant provides a justification for having failed to present the subject matter properly earlier. This procedural framework protects the integrity of prosecution, e.g., by reducing the likelihood of lurking section 112, para. 1, problems.

    For a recent Federal Circuit case that demonstrates how deferential the court is likely to be to the PTO’s effort to rationalize prosecution procedure in this way, see Stevens v. Tamai, 366 F.3d 1325 (Fed. Cir. 2004), especially Section V.A. It’s on line free here:
    link to ll.georgetown.edu

    Of course, the dividing line between what’s procedural and what’s substantive is fuzzy (at best). Court cases and the scholarly literature on the procedure/substance distinction from the Erie doctrine can help, however. The proposed continuation rules will doubtless affect the substantive scope of the resulting patent rights. But that’s not the criterion for “substantive.” The proposed rules are framed with the primary goal of structuring the examination process to facilitate accurate and efficient patentability assessments. These rules are thus procedural, i.e., they are *not* designed to shape the primary behavior of inventors (e.g., inventors’ decisions to invent new solutions to problems or, instead, use known solutions), but rather to improve the accuracy and efficiency of inventors’ engagement with the government officials who assess their legal rights.

  11. 68

    Both D and Joe Miller are a bit off base, mixing up two different things. The PTO has *procedural* rulemaking authority, and does not have *substantive* rulemaking authorty. Merck & Co. v. Kessler, 80 F.3d 1543, 1550,38 USPQ2d 1347, 1351 (Fed. Cir. 1996) (The PTO does “NOT … have authority to issue substantive rules”, emphasis in original) That carries with it the power of interpretative procedural rulemaking, and not the power of interpetative substantive rulemaking.

    Mark Nowatarski, you’re applying the rule of judicial interpretation of a statute/rule that has not itself been amended. The rule for retroactive rulemaking by an agency by wholesale amendment is different. In 1988, Bowen v Georgetown University Hospital, 488 US 204, 208-09 (1988) set some pretty narrow parameters on when an agency could promulgate retroactive rules. The Supreme Court’s statement of the law (about which the PTO doesn’t give a rat’s ass) is as follows:

    Retroactivity is not favored in the law. Thus, congressional enactments and administrative rules will not be construed to have retroactive effect unless their language requires this result. … By the same principle, a statutory grant of legislative rulemaking authority will not, as a general matter, be understood to encompass the power to promulgate retroactive rules unless that power is conveyed by Congress in express terms. … “The power to require readjustments for the past is drastic. It … ought not to be extended so as to permit unreasonably harsh action without very plain words”. Even where some substantial justification for retroactive rulemaking is presented, courts should be reluctant to find such authority absent an express statutory grant.

    A rule that has unreasonable secondary retroactivity — for example, altering future regulation in a manner that makes worthless substantial past investment incurred in reliance upon the prior rule — may for that reason be “arbitrary” or “capricious,” see 5 U.S.C. § 706, and thus invalid.

    Bowen v Georgetown University Hospital, 488 U.S. 204, 209, 220 (1988).

    Notice that “retroactivity” is defined by reference to the actions and reliance interest of the regulated party, not the actions of the agency. If the PTO attempts to apply the rules to applications already filed, they’ll have “no substantial justification” and will end up paying attorney fees under the Equal Access to Justice Act.

  12. 66

    To Erez Gur, who reminds me of G1/06, yes it’s true that the EPO might soon become more restrictive on divisionals. The Enlarged Board of Appeal has been sitting on this egg for ages already and its continuing delay suggests there is difficulty coming to a consensus. Can’t for the life of me see why. The EPC contains a perfectly workable regime for divisionals, which the EPO finds no difficulty administering. The problem is Applicants who at all costs must “have something pending” even after the end of the 9 month post-issue opposition period. Thus, an important invention can seem to the EPO like a hydra-headed monster, that can never be finally killed off. Each time a case is refused, another divl appears. But this steady feed of Applicant money into EPO coffers is no reason to do injustice to inventors with a good invention, that simply need a dvisional to gain fair protection for it. I put my faith in Mr Messerli and his merry men, to restrain themselves from throwing the baby out with the bathwater, and leave the EPO divisional regime as it is now. This is a regime in which sensible 3-member examining divisions under the freedom of loose conceptual rules are able in their wide discretion to balance the legitimate needs of Applicant against those of the public. Not sure how that plays out against US ideas of “due process” but it does seem to work. In philosophical mood, I guess it all goes to show how futile it is, to impose one culture on another.

  13. 65

    D:

    Is this the quote?

    “Generally, a decision which changes existing law or policy is given retroactive effect unless retroactive application would cause manifest injustice.”

    NATIONAL LABOR RELATIONS BOARD, Petitioner, v. BUFCO CORP. and CORBETT ELECTRIC CO.

    899 F.2d 608,

  14. 64

    D, it simply isn’t true that “[t]he PTO can promulgate only interpretive rules.” The PTO can promulgate any procedural rule, whether or not “it merely clarifies or explains existing law or [other] regulations.” (The opposite of substantive is procedural, not interpretive.)
    For example, the PTO issues all sorts of procedural rules about the proper form of application papers and other materials submitted to the Office. These are procedural regulations, in the Code of Federal Regulations. And I don’t think these procedural regulations the Patent Act; they implement the PTO’s role.
    Alternatively, if we must think of all the PTO’s regulations about examination as clarifying or explaining the Patent Act, then the new continuation rules are proper clarifications of section 120.
    Also, CaveMan and Curious, the PTO *did* publish its research and reasoning on this regulatory power question … in the text of the announcement of the proposed continuation rules. See link to uspto.gov.
    Here’s the relevant portion from the PTO’s announcement:
    “Applicants should understand, however, that there is not an
    unfettered right to file multiple continuing applications without
    making a bona fide attempt to claim the applicant’s invention. See In
    re Bogese, 303 F.3d 1362, 64 USPQ2d 1448 (Fed. Cir. 2002) (Bogese II).
    While Bogese II was an extreme case, one of prosecution laches, it
    makes clear that applicants face a general requirement of good faith in
    prosecution and that the Director has the inherent authority, rooted in
    35 U.S.C. 2, to ensure that applicants comply with that duty. See
    Bogese II, 303 F.3d at 1368 n.5, 64 USPQ2d at 1452 n.5.
    The proposed rules are not an attempt to codify Bogese II or to
    simply combat such extreme cases of prosecutions laches. Nor do these
    rules set a per se limit on the number of continuing applications.
    Compare In re Henriksen, 399 F.2d 253, 158 USPQ 224 (CCPA 1968).
    Rather, they require that applicants who file multiple continuing
    applications from the same initial application show that the third and
    following applications in the chain are necessary to advance
    prosecution. In particular, the proposed rules require that any second
    or subsequent continuing application show to the satisfaction of the
    Director that the amendment, argument, or evidence could not have been
    submitted during the prosecution of the initial application or the
    first continuing application.
    The Office is aware of case law which suggests that the Office has
    no authority to place an absolute limit on the number of copending
    continuing applications originating from an original application. See
    In re Hogan, 559 F.2d at 603-05, 194 USPQ at 565-66; and Henriksen, 399
    F.2d at 262, 158 USPQ at 231. The Office does not attempt that here. No
    limit is placed on the number of continuing applications. Rather
    applicants are required to show that later-filed applications in a
    multiple-continuing chain are necessary to claim the invention – and do
    not contain unnecessarily delayed evidence, arguments, or amendments
    that could have been presented earlier. In addition, in those earlier
    cases the Office had not promulgated any rules, let alone given the
    public adequate notice of, or an opportunity to respond to, the ad hoc
    limits imposed. See Henriksen, at 399 F.2d at 261-62, 158 USPQ at 231
    (characterizing the action of the Office as akin to a retroactive rule
    change that had no support in the rules of practice or Manual of Patent
    Examining Procedure). Furthermore, the Court in Bogese II rejected the
    view that its previous case law (e.g., Henriksen) stood for the broad
    proposition that 35 U.S.C. 120 gave applicants carte blanche to prosecute
    continuing applications in any desired manner. See Bogese II, 303 F.3d
    at 1368 n.5, 64 USPQ2d at 1452 n.5.”

    This passage, D, also shows the reason that Bogese is highly pertinent here.

  15. 63

    Joe Miller said:

    “The PTO does not have to be interpreting a case to make a valid rule (as D would have it).”

    The above statement is true, but I certainly never said that a PTO rule must be an interpretation of a case. I said that was the stated reason in Bogese for the Federal Circuit permitting the particular PTO action at issue (final rejection for undue delay). I also stated that since the PTO could not be (and by their own admission is not) interpreting Bogese in the proposed rules, extending Bogese cannot be the reason for permitting them (as Joe Miller argued).

    The PTO can promulgate only interpretive rules. A rule is interpretive if it merely clarifies or explains existing law or regulations. The PTO action in Bogese purportedly clarified the Lemelson laches case.

    A rule is substantive (and beyond PTO rulemaking authority) if it “affects an individual’s existing rights
    and obligations” or “changes existing law or policy” (sorry, I’m not providing cites to these quotes – but would love a volunteer to do so). The proposed continuation rules are substantive.

    The PTO has not indicated any law that it is purportedly “interpreting” in promulgating the proposed continuation rules.

    What am I missing?

  16. 62

    These rules changes won’t matter to big corporations with in-house attorneys. They have the means to file as many applications as they want.

    The rule changes won’t matter for single inventors with less dramatic inventions (e.g., U.S. 7,090,268). They can live with a single narrow claim.

    The rule changes seem to damage small companies and start-ups, those who generate jobs, make real innovations, distribute wealth and challenge the big corporations.

    Small companies usually have very little money so they file a small number of applications filled with lots of disclosure. They don’t know yet which invention covered by which claim is critical. With these rules they will have to gamble early on which claim might be important and if they are mistaken they will lose everything.

    Worse, if they disclose only some of their inventions because they can’t afford more applications and aren’t allowed to cram more than one in a document, someone else might reinvent (at a later date) the same thing and patent some critical technology which will also kill the small company.

    And what happens if claim 1 is justifiably rejected, but each of dependent claims 2-10 is patentable in its own right?

    I don’t think these changes will promote very much that is useful.

    By the way Max, don’t forget that the EPO may soon be less divisional-friendly: G 1/06.

  17. 61

    LL says: “If the applicant (who probably knows what art, particularly NPL stuff, is relevant) were more involved in what is claimed and providing to the lawyer what art they know about the prior art & where their contribution to the art is, it would help in defing/presenting claims early that are focused on things that would help allowability.”

    Know your enemy and know yourself; in a hundred battles, you will never be defeated. When you are ignorant of the enemy but know yourself, your chances of winning or losing are equal. If ignorant both of your enemy and of yourself, you are sure to be defeated in every battle.

  18. 60

    CaveMan:

    I assume that the PTO has already researched the rulemaking authority issue. I wish that they would post the results of their research on the PTO website — afterall we (the taxpayers) paid for that research.

  19. 59

    Ooops, I see many great comments on lack of authority to contravene 120… Still, it seems like the scope of PTO rulemaking authority vis a vis 120 seems like a great topic for an in-depth article. And it seems like there are many who have posted above who are qualified to write it.

  20. 58

    A substantially large proportion of the public comments on the proposed rulemaking run against the proposed new rules on limiting continuations. One of the predominant themes is that PTO rules cannot take away what is given by statute under 35 USC 120. I am suprised that we have not seen a solid analysis of what appears to be a solid argument against the promulgation of these rules.

  21. 57

    Damn Milt, you freely throw around doubles, triples and quads because it is not your money being spent. My clients are poor and thrifty, and some live on assistance. They need the government to reduce the fees. Don’t give the man any bad ideas!

  22. 56

    Why not use negative incentives instead of stupid rigid rules to limit continuations and number of claims? We just learned how much the Supremes hate rigid rules, so let’s keep it flexible.

    Double the filing fee both for new apps and conts. Triple it, quadruple it, whatever it takes. Same for the cost of claims. Use the extra money to hire more examiners so each examiner can spend more time per app. Get rid of or change the count system.

    But that would be too simple.

  23. 55

    LL,

    Your latest bit makes some very good points.

    I’m not saying any examiner or most examiners are gaming the system. However,as a former examiner, and as an observer, I’ve no doubt that this does occur.

    My main point is that we are trying to get good patents out of this. The USPTO can’t be expected to endlessly respond to amendments and cover the cost. However, the system now makes the applicants pay for the further action. It is actually silly to make an arbitrary cut off and to not allow a proper vetting and consideration and to not allow the office and the practitioner to home in on the proper scope of the claim.

    Attorneys certainly make mistakes and it is certainly not my statement that this is a one-sided problem. One essential problem is the problem of wording. Claim wording is not a science and it is often not an issue of a mistake, but rather lack of foresight (lack of a crystal ball). A selection of words may be completely appropriate to highlight the invention with one set of prior art and just not work with another set of prior art. This does not mean that there could not still be in essence an important invention that can be defined. It is often nobody’s fault that it takes some time to properly determine a fair wording for claim.

    The new rules are an arbitrary limit on the ability of the parties involved to get it right.

    Best of luck to all,
    JJ

  24. 54

    JJ,
    I appreciate the points you make & can agree with a lot of it. I’ve been at the office over 20 years & the production system as well as the MPEP need extensive revisions. However, I think you missed my point. Actually, you seem to say you disagree with me but then basically present argumeents to support my position. You are right in that often neither the applicant nor the examiner know the full extent of what the prior art is or what claimed combinations will turn up (” For the arts that are very deep, even the best searchers and examiners don’t know it all. Who can predict how it will be applied? This is not a perfect world and some arts are so very deep with possibilities of all types of combinations and rejections.”)

    Maybe I was being a bit facitious in my earlier statements, but it is really irritating for lawyers to complain when art that clearly anticipates is used in a 1st action, they amend (maybe in a way that could have been anticipated, maybe not) and they get a final on new grounds. Is it really reasonable for an examiner to know how you are going to amend the claims? From your point of view, the examiner may be gaming the system. However, in these situations (which happen all too often) from the examiner point of view it is the lawyer/applicant that is gaming the system. The real position is that too often both sides are a bit to blame.

    If the applicant (who probably knows what art, particularly NPL stuff, is relevant) were more involved in what is claimed and providing to the lawyer what art they know about the prior art & where their contribution to the art is, it would help in defing/presenting claims early that are focused on things that would help allowability. Of course, this may then cause problems with duty to disclose & other issues in litigation. Again, that goes back to making changes in teh system we have now.

    For what it’s worth, I always try to get my examiners to find the best art for not only the claims but what the invention is directed towards. Even if the “best” reference isn’t used in the rejection (often, the claims are drafted so that the art closest to the disclosed invention is not the best art for what the claims say), I have them cite it so that the applicant/lawyer is aware of the art &, ideally, they will then amend the claims to avoid the applied art as well as the cited art. Unfortunately, in mony (most?) cases, the lawyer never looks at teh cited references & I use it in the final. In my opinion, this is their fault (incompetence?).

    Bottom-line, the whole process needs to be completely revamped. Production, finals, applicant prosecution, etc. in view of the new rules.

    thanks,

    LL

  25. 53

    On the PTO regulatory power question …

    D states, “the PTO has only interpretative rulemaking authority.” I don’t think this is correct. Again, under section 2, the PTO has the power to make rules governing submission and examination procedure. The PTO does not have to be interpreting a case to make a valid rule (as D would have it).

    Discussing the Henriksen and Hogan cases, Sam states, “I assume that the PTO thinks the proposed continuation rule is different than previous (improper) continuation limits in that it allows an applicant to petition for additional and unlimited continuations.” I assume the same thing, and I (for one) am persuaded that this is a proper distinction that supports the PTO’s effort to manage continuation practice in the overall context of managing the Office’s work and resources.

    The central point, I think, is that a federal court is almost certain to accept the basic premise that an agency has the power to manage its own work flow and procedures. When an agency makes management decisions on those topics, a court is likely to treat its decisions with a fairly high degree of deference. The reason Bogese is highly pertinent here is because it shows that the Federal Circuit appreciates and respects the PTO’s power to manage the Office’s work within the broad framework that the Act provides (while leaving many details to the Office’s discretion).

  26. 52

    LL,

    Many of us know of how and when compact prosecution came about. I don’t get your point on this. Many of the comments above point out that the metric used by the PTO is part of the problem. The shift to compact prosecution changed the way an examiner’s performance is considered and what an applicant could do. Obviously this new procedure will make changes regarding the examiner’s performance and an applicant’s ability to amend.

    Of course there are many degrees of variation and possibilities of scope and content of claims. I think LL’s point viz. the MPEP is a bit naïve, not a real life practical one, at least in many areas. It presumes one either knows the art or one can afford to present a combination, say ABC, D, E, … Q to define the invention prior to examination. A combination with variations of ABC, ABC” ABC”‘etc with D, E… Q could certainly require more than 20 claims to do the variation of scope thing. Is this expense justified before one sees the art and how it will be applied?

    LL presumes that scope variation can always be presented, in an initial presentation. This initial presentation concept is flawed on a practical level. In reality one must deal with variations of combinations, possibly with the best combination being raised for the first time well into the proceeding, possibly with a new good piece of art.

    If all of the good art is out initially and is known by the applicant there is the argument that there should be no need for proceedings to focus in on patentable subject matter. For the arts that are very deep, even the best searchers and examiners don’t know it all. Who can predict how it will be applied? This is not a perfect world and some arts are so very deep with possibilities of all types of combinations and rejections. LL statement may appear reasonable on its face. However, it appears to show a lack of exposure to situations and to fields of art where the MPEP variation of scope concept just doesn’t work financially and practically. I pity the fool” who thinks that they can know the future & what new reference some examiner will throw into the mix late in the game to improve the rejection.

    I think the present situation allows a proper degree of back and forth to home in on the sweet spot of the subject matter. Of course the applicant has to pay for further back and forth, through continuation/RCE and the right to amend.

    One obvious point is that the new practice would require reevaluation of some of the MPEP.

    With all due respect,

    JJ

  27. 51

    Malcolm-

    Good to see we can agree. Biotech cases require lots of enablement because we get 112 rejections on EVERY case, thus we have to put the methods of use, treatment, and the composition in the same case – thus the agressive RR practice really kills us. This argument gets MUCH worse when you add single sequence restriction practice as we often get two levels of restriction (the sequence restriction and the more general type).

  28. 50

    me

    “I certainly do not think that divisionals (from Examiner created restriction requirements) will be counted in the continuation number as the Office would likely lose that rule in court. I think it more likely divisionals will have to be filed in paralell,”

    That is my understanding of the proposed rules as well. I hope there is room for some flexibility (given the number of restriction requirements that are typical in biotech cases relating to, e.g., diagnostic markers for disease) in terms of the filing deadlines for divisionals. It would be burdensome to require applicants to file all the divisionals in paralel IF the typical pendency for such applications remains in the three year range. A requirement to file all divisionals within, say, 8-10 years of the priority date seems more reasonable.

  29. 49

    to mr t, “I pity the fool” who thinks that they can know the future & what meaningless feature some lawyer will throw in a claim to avoid a reference. Or maybe they will just throw in some negative limitation. No one knows. If you can, tell what the winning lottery #s are :)

    thanks,

    LL

  30. 48

    LL, I may not be the smartest of the group – they make me drive the van – but I can read a 50 page spec, brother. I also can understaaand and conceptualize the invention in a rather short time. I believe you and your brothers are sandbagging me!

  31. 47

    More generally – the RCE rule is absolutely terrible and will encourage bad examination. Why do this right after KSR as Examiners are going to have a field day going “OBVIOUS” and leaving it to us to prove why they are wrong – knowing there isn’t time for us to do it.

    Really bad for the patents, and bad for innovation in this country!

  32. 46

    Re JJ & Mr. T, It often is not an issue of an examiner not citing the “best” art (though that does also happen). It is often an examiner citing the best art to reject the claims filed. If you lawyers would actually FOLLOW THE GUIDELINES in teh MPEP, you wouldn’t have this problem. THe MPEP says you should claim the broadest you think you are entitled to down to teh most narrow that you will accept. If YOU did this, there wouldn’t be a problem with the examiner not citing the “best” art for your disclosure.

    How in the world do you expect an examiner to read a 50+ page spec and automatically know what you will pull from it to add to the claims? Imposible in most cases. If you disclose a system that has A-Q and only initially claim A-H, how do I know which of I-Q you are going to add to avoid the art in the 1st action? It can not be done. If you actually present claims that cover all of these things you think you are entitled to from the begining, you wouldn’t get 2nd action finals on new art. Remember, it is a 2 way street. The examiners are just playing by the rules.

    The thing that really iritates me is lawyers that claim everything is the offices & the examiners fault and that they are all perfect. There are problems on BOTH sides.

    BTW, JJ, back in teh 70’s examiners DID get a count for every action and finals only for teh same rejection as inteh 1st action. It was changed because of extended prosecutions that never ended & other problems. Remeber, those that do not learn from history are doomed to repeat it :)

    thanks,

    LL

  33. 45

    From the above, I still can’t tell what is going on with divisionals. Does anyone know for sure? I certainly do not think that divisionals (from Examiner created restriction requirements) will be counted in the continuation number as the Office would likely lose that rule in court. I think it more likely divisionals will have to be filed in paralell, but that will greatly increase pendancy in the near term and is a terrible idea anyway.

    Does anyone know what is in the final rules? Hopefully they just dropped the whole paralell filingo of divisionals…

  34. 44

    I wish they were, jj, but I don’t beleive so. The MPEP warns examiners against ‘piecemeal examination’, but IMHO it is the rule, not the exception.

    If the Examiner does save the best art until we run out of continuations, then a petition to the director is inevitable. In fact, in practical terms it’s the only circumstance that justifies a petition, given that the app will go abandonned while they consider it anyway. Then I suppose we have to petition for withdrawal of abandonment?

  35. 43

    If this version of the rules comes to pass, I can see filing an RCE the first time round followed by a couple of regular continuations in a lot of cases. How is this an improvement if I have to file a continuation when I want to file an RCE? For one thing, it will delay issuance, as the PTO takes longer to respond to a continuation than an RCE. Having to file a regular continuation just to advance prosecution is turning the clock back to the bad old days.

    How can it benefit the PTO to have to process a whole new set of application papers for no particular reason? In most of these cases there won’t even be excess claim fees, so they won’t even get more money than they would get from the RCE fee.

  36. 42

    I see quite a bit of what LL mentioned. In one art we are constantly getting new references thrown at us, often late in the game, reopening prosecution on appeal and what not.

    Doesn’t the US PTO see it as a problem that a new ground of rejection may be put forth (including one with newly cited prior art) and that rejection may be made final. With the new continuation practice rules, the applicant could be precluded from amending the claims. One could even imagine that an unscrupulous examiner could save good art for just such a situation, to end the application.

    Of course the problem would go way if no final rejection may be made based on the new ground of rejection. Do you think they are paying attention to this point?

  37. 41

    LL, you proud of that? You piti-fools. Why wasn’t the better references cited in the first action. Geezus Kriste

  38. 40

    Re: pds – May 11, 2007 at 12:18 AM responding to my earlier post.

    “Once an application is an the system, particularly with a RCE, there is no additional “incoming review” (or whatever the PTO calls it) and there is only one post-filing review/printing (assuming the application gets allowed). An application with 3 RCEs will always be more “profitable” to the PTO than an application with 0 RCEs.”

    Sorry, but I have to disagree. And remember, we are talking “profit” to the office and not the examiner. Totally different things. While there may be only one post processing (publication) when you file an RCE there is still processing by the LIE to enter any preliminary amendments, there is fee collection, there is procssing the case to give the abandonment to the examiner, there is (possible) in-process-review for new and RCE cases, just off the top of my head.

    Doing a little math & some VERY ballpark figures to show the point. If an average examiner makes $60,000/year equal about $30/hour (using 2000 hours/year). If the examiner gets about 10 hrs/count (close to average) that means 20 hours to do the case from pick-up to allow/abd. Total cost =$600.00. Already almost the cost of basic filing. If you file an RCE, you have this cost of the examiner again. Now, add in the salaries of the tech support (LIEs), pre-exam, classification of the case (a few hours for the preceding, tho at a low salary), directors & upper management, staff & support people, rent, utilities, computers, etc. (while all of these would be divided by 300,000 or so cases done/year, they do add up).
    If you include the factor of doing an RCE rather than a new case as an additional “cost” (a question for the accountants), then this further suppoerts the position of RCEs becoming a financial loser. Now, after a case is allowed, there is very little cost to the office & the maintence fees are basically profit.

    “However, as noted (probably dozens of times) before on this board, the PTO receives considerable extra fees based upon the number of claims, which can be much, much more than just the basic filing fee. The PTO, however, doesn’t pass that on to the examiner with regard to examination time. In this regard, both the examiner and the applicant are being screwed.”

    You are right, of course. However, the question being answered was is there really a burden on the examiner for extra claims. Under the system as it is now, YES there is. The production system should & needs to be changed, but that wasn’t the question.

    As to “it is extremely, extremely rare to find a case with 25+ claims where none of the claims are repeats from one another”, again it is true that many cases do have a lot of similar/duplicate claims. While this does help some in examining the case, these claims still need to reviewed on their own merits. Often there are 112, 2nd, issues in some of tehse “duplicate” claims because they were not drafted carefully. Again, they have to be read & analized, which takes time. Often time away from other, possibly more substantive, issues.

    Finally, as to “For me to file an RCE, an examiner will have to (1) find a good enough reference during the first action that will force me to amend the claims and (2) find a second good enough reference for me to amend the claims again after the action is made final. This set of circumstances just doesn’t happen that often.”, I guess that you procescute in a different part of the office than I work in. Probably the vast majority of our cases follow this process. Maybe it’s because over half of our cases are from Japanese applicants which tend to prosecute things differently than US applicants. I don’t know. But your experience is different from mine.

    thanks,

    LL

  39. 39

    Jessica’s points are too important to ignore. This whole bait-and-switch game the PTO plays is a real button for a lot of us.

    It would appear to me, based on contract principles and principles of general equity and fairness, that the PTO should be bound by whatever rules and fees are in effect at the time of filing. For instance, the maintenance fees in effect on the filing date should be fixed for the lifetime of the patent. As it is, when the the applicant files he has no idea what the total cost of his patent will be. This is outrageous.

    We should be able to file these applications assuming that the rules and fees advertised are the rules and fees that will apply. As Jessica points out, if any business tried to pull this crap, consumer’s would be outraged. So why aren’t we outraged with the PTO? Answer: We’re the attorneys. Doesn’t come out of our pocket, so who cares?

    The PTO huff and blow about being a quasi-commercial service provider serving its clients’ needs is a slimy heap of dung. Let them follow the general principles of fair play, such as those of the FTC and the commercial code.

    Whew, glad I got that one off my chest. . . Thanks, Jessica.

    BB

  40. 38

    MaxDrei said:

    isn’t one single application supposed to be for one invention only.

    Response:

    not exactly. I think you are referring to the rule that each invention may be covered by only one patent. Claiming the same invention in more than one patent is “double patenting”, which is prohibited by statute.

    The converse is not true. A single application can describe, and even claim, any number of inventions. If it claims several inventions, then the USPTO, at its discretion, may issue a restriction requirement. Sometimes it does, sometimes it doesn’t. If the USPTO does not issue a restriction, and allows a patent to issue with claims to many inventions, I do not beleive that any statute is violated.

    Put another way, the mapping between inventions and patents may be many-to-one, but not one-to-many.

  41. 37

    Jim Finder,
    Good question !!!
    I dunno !!
    Let’s ask our brand new patent-savy highly experienced
    PTO Deputy Director Margaret Peterlin – maybe she knows !!!

  42. 36

    On my desk as I write is an application that was filed with 2 independent claims and 20 total claims. The Examiner rejected the independent claims but found claims 2-7 and 9-20 patentable. After being placed in condition for allowance, the application will have 11 independent claims. Acceptable under the proposed rule?

  43. 35

    Re kerow comment and after-final/RCE practice.

    Did the objected-to claim (8) depend directly on claim 1 or was it dependent on intervening claims? This makes a big difference. If, for example, claim 8 depended on claim 7, which depended on claim 6 which depended on claim 1, just putting claim 8 directly in claim 1 would be a new combination and require further consideration. The examiner indicates that claim 1+6+7+8 is allowable, not that 1+8 is allowable. 1+8 is a broader combination and that particulr combination has not previously been considered. Also, making this change could result in 112 issues because of antecedents or even support (when the new comnbinations of claims depending on new 1+8). I am guessing that, in your case 8 did depend directly on 1, but I have often seen lawyers try to take a claim indicated as allowable and not directly depended on 1, add it to 1 without the intervening claims & argue that it should be allowed automatically and they are wrong as it does require new considerations.

    Conversely, if claim 8 had depended directly on claim 1 and the examiner indicated this as allowable and you did put all of claim 8 into claim 1, they the examiner is definiately wrong in not entering the amendment and allowingthe case. That is what I would tell the examiner if they were reporting to me.

    So, it all depends on the exact facts if the examiner was wrong or not.

    thansk,

    LL

  44. 34

    As someone else noted – it was also my understanding that “continuation” was used in the broadest sense and so included divisionals (all are 1.53(b) filings). I also think I remember that the proposal may have restricted filing strategy such that any divisionals filed would have to be done in parallel, not in series. Looks like there will be no benefit to CIP – and we should just file a new application claiming new material (a la EP)

    Any confirmation on either of the above?

  45. 33

    Joe Miller said:
    “It is but a minimal extension of Bogese to conclude, as the PTO does in the proposed rules, that an applicant should be required to show cause for the need for more continuation practice after using a small, reasonable number of continuation applications as a matter of right.”

    Joe Miller,

    Bogese does not help the PTO with these rules.

    Unfortunately (or fortunately depending on one’s point of view) this is not the place to bore the fine Patently-O readership with a detailed treatment of the many, many shortcomings of the majority’s administrative law analysis in Bogese. I’ll just say J. Dyk and Prost’s admin law intuition stands in stark contrast to the analysis in J. Newman’s insightful (and largely unaddressed) dissent. (The dissent probably stems from yet another instance where J. Newman had more thorough legal knowledge in the subject area than the parties had, but I digress)

    Bogese is a red herring because (1) the PTO has disclaimed that the continuation rules are an attempt to interpret Bogese, and (2) none of the concerns underlying the Bogese decision have any application to the proposed continuations rules since virtually all continuations will have a term ending 20 years from the priority date or sooner.

    Briefly, Congress has not granted substantive rulemaking authority to the PTO to specify equitable limitations on Section 120 rights – the PTO has only interpretative rulemaking authority.

    Because here (unlike in Bogese) there is no case law which the PTO is seeking to interpret in formulating rules to guide the application of the PTO’s “equitable discretion”, the PTO cannot possibly issue interpretive rules that define the contours of such limitations. For this reason the proposed continuation rules lack any intelligible standard (and thus when applied will incidentally run afoul of the concern in In re Henricksen of retroactively and unfairly penalizing applicants).

  46. 32

    MaxDrei | May 11, 2007 at 02:25 AM writes

    > On the one hand, isn’t one single application supposed
    > to be for one invention only.

    No, your starting assumption is wrong.

    One application should do whatever is most efficient from an overall social cost perspective. In many cases, particularly computers and pharmaceuticals, it’s most efficient to file a single application that discloses a lot of different inventions that are more efficiently disclosed together than separately, and then file voluntary divisionals to claim the separate inventions (or clusters of related inventions that are more efficiently considered together). It’s good public policy, it’s efficient for everyone concerned.

    The only reason it looks like a problem is that the PTO’s metrics measure the wrong thing – they don’t consider total throughput, instead counts of raw applications.

    John Doll admitted publicly that these rules are not directed at any externally-imposed problem – he admitted that the PTO had done NO diagnostic work. The PTO’s problem is a set of goofed up production metrics and the inefficient allocation of resources driven by those metrics.

  47. 31

    Joe Miller-

    You asked how the proposed continuation rule could exceed the PTO’s statutory rule-making authority when 35 USC 2 allows the PTO to “establish regulations, not inconsistent with law…” The argument is that 35 USC 120 states than an application “shall have the same effect” as a previously filed application if certain criteria are satisfied. The proposed continuation rule effectively amends section 120 and is thus “inconsistent with the law.”

    In re Henriksen, 399 F.2d 253, 262 (C.C.P.A. 1968) and In re Hogan, 559 F.2d 595, 603-05 (C.C.P.A. 1977) both held that the PTO has no authority to limit the number of continuation applications an applicant may file (In re Bogese doesn’t address this issue). I assume that the PTO thinks the proposed continuation rule is different than previous (improper) continuation limits in that it allows an applicant to petition for additional and unlimited continuations. I won’t go on at length here, but you can find detailed discussions of this issue in the comments to the proposed rule:

    link to uspto.gov

  48. 30

    “On the one hand, isn’t one single application supposed to be for one invention only. So, if you deliberately bundle a plurality of inventions in one app, you have only yourself to blame if you run out of chances to spin the different inventions out into separate daughter apps?”

    But it was a perfectly acceptable practice at the time the applications were filed. As pointed out before, an applicant should not be retroactively punished for engaging in a long-accepted practice.

  49. 29

    Joe Miller | May 11, 2007 at 01:04 AM writes:

    > I don’t understand the comments about the lack of
    > PTO authority to issue these regulations. The
    > Patent Act gives the agency the power to, among
    > other things, “establish regulations, not
    > inconsistent with law, which … shall govern the
    > conduct of proceedings in the Office.” 35 U.S.C.
    > sec. 2(b)(2)(A).

    Your question contains its own answer. The statute only confers the power to promulgate *procedural* rules, not *substantive.*

    The defintion of “substantive” is more than broad enough to reach these rules. For example, a shift of burden of proof is “substantive.” In most circuits, the test for “substantive” is to consider whether the effects are substantive.

    Your example case, Bogese, proves my point. In Bogese, it was the Office’s burden – which it met on the facts – to show that the applicant was playing games. The rules shift the burden of proof. Consider the example of an R&D team that comes up with many interrelated inventions. Now, you file multiple applications, perhaps on the same spec, perhaps subdivisions of one large master spec, directed to the different inventions. The rules don’t permit patenting of team inventions – all applicaitons together count toward the limit on claims that will be examined. The rules shift burden of proof to show that applicant-initiated divisionals (filed all at about the same time to prevent loss of patent term) were “necessary.”

    The rules are directed at shifting the burden of proof to the applicant. They are explicitly directed at cutting back on substantive patent rights. That’s “substantive.” That’s outside the PTO’s authority.

  50. 28

    Citing In re Bogese and stating that it is a ” minimal extension of Bogese to conclude, as the PTO does in the proposed rules, that an applicant should be required to show cause for the need for more continuation practice after using a small, reasonable number of continuation applications as a matter of right” is an extreme stretch.

    I recall when In re Bogese came out and the discussion then was basically that this opinion was simply to correct an outrageous abuse by an applicant that likely isn’t to be duplicated.

    From the case:

    ” This case has a long history. The ’290 application at issue here claims priority back to the June 14, 1978, filing date of application serial number 05/915,457 (“the ’457 application”) …. Bogese’s pattern of receiving a final rejection from the PTO, not amending his application or claims, filing a file wrapper continuation application exactly or almost exactly six months later without any amendments, and abandoning his prior application, occurred eight more times between 1989 and 1994, culminating in the filing of application serial number 08/266,804 (“the ’804 application”) on June 28, 1994.”

    This is just a small snippet of the prosecution history, which lasted from the original filing in 1978 through a decision by the Board in 2000. If someone wants to find the exact number of continuations filed, the case can be found here:

    link to ll.georgetown.edu

    Anyway, In re Bogese is not a good case for the PTO to hang its hat on.

  51. 27

    Malcolm wrote:

    The divisionals will cover essentially that stuff. Generally speaking, two or three cons per app is plenty. The main reason for filing more than that is simply to “keep it alive.” I’ll leave the main reason that clients demand that applications be “kept alive” to your imagination …

    As far as I understand it (at least according to the version of the rules that were published), divisionals will now be defined as continuing applications that claim ONLY claims that were claimed in the parent application but were restricted by the Examiner. So, if my application disclosed multiple inventions but claims only one (with the original intention of filing multiple continuations/RCEs, for example), I can no longer avail myself of divisionals. Again, in such a case, is there any reason to rush and file the continuations/CIPs now, before the rules are published/come into effect?

  52. 26

    Continuation/RCE limits are incompatible with the game-playing that goes on in the name of “after final practice.” One example: You have claims 1-10, claim 1 being the only independent claim, each of claims 2-10 depending upon claim 1. In a final Office action (possibly in a second continuation), the examiner indicates claim 8 to be allowable (all other claims rejected), but claim 8 is objected to for depending from a rejected claim. In a situation like this, have you ever had an examiner deny entry of an amendment incorporating the subject matter of allowable claim 8 into independent claim 1 for having raised “new issues” on the ground that he/she had not previously considered whether the subject matter of each of claims 2-7, 9, 10 is compatible with that of claim 1 (amended)? This kind of thing (and variations) happen too often in at least one tech center. I have one pending case like this for which I filed a petition, granted January 2006, directing the examiner to enter the amendment. The case has not yet received a new action or Notice of Allowance, despite status requests and calls to the supervisor. Paying the ransom cost of an RCE, of course, is always cheaper and more efficient than filing a Request for Consideration followed by a Petition, of course (particularly considering that the clock keeps ticking from the time of the final Office action), although in this case, a point needed to be made.

  53. 25

    Any word on divisionals? This could be the killer for biotech/pharma if the current rampant restriction practice is allowed to continue unabated. Under the proposed rules, all divisionals had to be filed during the pendency of the parent application in order to claim priority to the parent. So an applicant with 10 allegedly distinct inventions claimed in a single parent would be faced with filing 9 divisionals concurrently or lose priority. Multiply that by 10 or more for many of the cases we’ve been seeing. The way the PTO is handing out restriction requirments, this could be prohibitively expensive for most small biotechs and pharmas. I see petition of the restriction and appeal of more final rejections as a cost effective solution to maintain pendancy where in the past sequential divisionals have been strategically used. I had heard estimates of a 5-9 year appeal back log at the board projected as a result of the proposed rules. Could theoretically elect the most contentious restriction group to provoke appeal and pick off the divisionals during appeal with the same net effect as before.

  54. 24

    My comment is in reply to the comment from “Saddened…” and not to the intervening comment from Ms Stein.

  55. 23

    That last comment is interesting, for one looking in from Europe (and sometimes I think the USPTO Rule-making is being done by one casting envious eyes at EPO measures to manage backlog). On the one hand, isn’t one single application supposed to be for one invention only. So, if you deliberately bundle a plurality of inventions in one app, you have only yourself to blame if you run out of chances to spin the different inventions out into separate daughter apps? On the other hand, the USPTO search will very likely deprive your bona fide generic claim of patentability, leaving you with a plurality of islands of patentability, all of which (if fairness to the inventor means anything) you ought to be able to protect. In Europe, we would have to break the case up into divisionals, one for each island. In USA you can have lots of independent claims in the same app. If these can all be prosecuted in the same app, no sweat. You don’t need any daughter app. If you have to divide them out, then you need as many daughter apps as there are islands. BTW, EPO Rule 86(3) allows an applicant one round of amendment only. After that, you can get your second and successive rounds of amendment admitted only if the Examining Division gives its consent. That Rule does bring a certain level of concentration on making all claims allowable, especially when EPO attorneys respond to first office actions. That fosters mutual respect. Given an Applicant that makes serious efforts to meet all points in every succeeding Office Action, EPO Examining Divisions issue as many subsequent Actions as it takes to bring the original case to issue.

  56. 22

    …..Hmmm?

    Maybe the “rules” of credit card purchases should be changed too.

    Anyone who made a credit card purchase during the past 15 years, if their purchase was made on a Saturday or Tuesday, then the “correct” interest rate is thrice whatever it was, retroactively. RETROACTIVELY!!!
    That’s right, you don’t get to avoid making a Saturday or Tuesday purchase — ’cause it’s RETROACTIVE.
    Do not pass GO. Do not collect $200.

    Furthermore, you must pay up the “correct” amount withing 24 hours of the new rule going into effect or, failing that, the property purchased is to be seized and auctioned off. The proceeds of the auction will be donated to the credit card companies and to the lobbyists who worked on behalf of them.

    This is fair, too.

    At least if the patent rule change is fair, this scenario is arguably fair too.

    Let’s do it. I am a lobbyist by profession. Woo Hoo & cowabunga babeeee.

    P.S. Let’s RETROACTIVELY change degree requirements AFTER a student has graduated.

    What’s the problem? You can still get your degree. You just have to come back to old alma mater, pay 10 times the tuition you paid as a previous matriculant, and spend 1 “scholars summer” on campus. Don’t have the greenbacks? Well, oh so sorry cheryl (chump head). Who asked you to even think of getting a degree, not being Ivanka Trump or Paris Hilton or insert-name-of-offspring-of-tycoon here. Silly little waif, skool is fur the well heeled.

    :–O methinks me civil rights is being violated by the new rules

  57. 21

    I have tremendous difficulty in understanding how such rules if true would not violate the rights of patent applicants.

    I have no problem with applications filed AFTER the (rumored) rule changes.

    But for applications filed prior to the supposed new rules, if your application contains multiple claimable inventions, unless you are entitled to claim ALL of them, then it just seems as if your property has been unfairly confiscated and donated to the public domain…not even to he public domain actually, but rather to companies with the resources and wealth to benefit from them. The whole idea of Continuations is to encourage inventors to “disclose now” with the promise of being able to “protect later” – which is wholly consistent with the “promote the useful arts” concept. Not everyone can afford to pay to cover every aspect of what they put in their spec, at least not all in one sitting. And if an applicant knew these things IN ADVANCE they would undoubtedly WITHHOLD from disclosing that which they would not be able to protect.
    But now….?????

    How is this not robbing the poor (inventor) to give to the rich (corporation)?

    How on God’s earth does this “promote the useful arts”?

    Why on earth would any inventor, who disclosed what was in their spec on the good faith belief that they would ultimately be afforded potential patent protection, want to “play this game” any more, after having been robbed (in effect) with the blessing of the United States government?

    It all seems logically inconsistent to me — and un-Constitutional.

    It certainly does NOT promote the useful arts!

    This IMPEDES the useful arts and would thereby seem to be anti if not un Constitutional!

  58. 20

    I don’t understand the comments about the lack of PTO authority to issue these regulations. The Patent Act gives the agency the power to, among other things, “establish regulations, not inconsistent with law, which … shall govern the conduct of proceedings in the Office.” 35 U.S.C. sec. 2(b)(2)(A). Cases such as In re Bogese (Fed. Cir. Sept. 2002) establish that the PTO has the power to prevent an applicant from using an unjustifiably drawn-out series of continuation applications. It is but a minimal extension of Bogese to conclude, as the PTO does in the proposed rules, that an applicant should be required to show cause for the need for more continuation practice after using a small, reasonable number of continuation applications as a matter of right. In other words, my administrative law instincts tell me the proposed rules are well within the agency’s power to establish rules that promote the orderly receipt and consideration of patent applications (i.e., the conduct of proceedings in the Office).

  59. 19

    To comment on what LL wrote …

    >>

    This doesn’t make financial sense. Once an application is an the system, particularly with a RCE, there is no additional “incoming review” (or whatever the PTO calls it) and there is only one post-filing review/printing (assuming the application gets allowed). An application with 3 RCEs will always be more “profitable” to the PTO than an application with 0 RCEs.

    “The office only turns a profit on a given case when the maintence fees are paid.”
    I find this statement to be amusing only in that the USPTO always seems to be looking for ways to make it harder to have patents issued (and thus collect maintenance fees)

    “YES, dealing with more claims IS a strain on the examiner.”
    However, as noted (probably dozens of times) before on this board, the PTO receives considerable extra fees based upon the number of claims, which can be much, much more than just the basic filing fee. The PTO, however, doesn’t pass that on to the examiner with regard to examination time. In this regard, both the examiner and the applicant are being screwed.

    Moreover, in the cases I’ve seen, it is extremely, extremely rare to find a case with 25+ claims where none of the claims are repeats from one another. In many instances, where I have seen applications over 40 claims, you’ll maybe get 5-6 independent claims and each have similar dependent claims. Also, the independent claims are similarly framed except the may differ in some respect that is not particularly major. Thus, although an examiner may see 40 claims, there may only be maybe 10 “real” claims to examine and the rest are just recycled.

    In my mind, to argue that examining applications with even 40 claims is putting a severe burden on the examiner is to exaggerate the problem. Furthermore, this is a problem of the PTO’s own doing for not giving credit for examiners who examiner applications with many claims despite taking applicant’s money for doing so.

    However, in the end, I see the PTO replacing RCE $$ with $$ from Notice of Appeal and the filing of Appeal Briefs. I’ve made this point before, based upon anticipation of these rules, I rarely file RCEs anymore. In most instances, the rejections I receive (even with the addition of KSR) are so bad that filing RCEs and amendments to “advance prosecution” is a waste of time and money.

    For me to file an RCE, an examiner will have to (1) find a good enough reference during the first action that will force me to amend the claims and (2) find a second good enough reference for me to amend the claims again after the action is made final. This set of circumstances just doesn’t happen that often.

    For my practice I’m not going to worry about these rules too much because I rarely have the need to file continuations but I recognize that there circumstances that require a continuation to be filed. As mentioned earlier, I suspect that someone will take the PTO to court to fight these rules. As such, I’m not going to get too worked up over them.

  60. 18

    2 responses to preceding comments:

    1 As to RCEs & copntinuations being “cash cows for the office”, it is true that for an examiner they are what allows you to make your production. Without continuations (of all types), it would be very difficult, if not impossible, for most examiners to make their numbers, never mind getting awards. However, on the other hand, from what information I have seen & been told, these are actually a cash LOSER for the PTO. The reasons for this is that the filing fees for a given application does not pay the salaries of the examiners, LIEs, OIPE, publications and OPQA that have to process that application (never mind what salaries of directors, upper management, CIO, OPLA, etc. plus basic overhead). The office only turns a profit on a given case when the maintence fees are paid. Gut instinct may say this can not be true, but if you run some general numbers, you see that it probably is. SO that thows out the idea that for the OFFICE continuaitions are a “cash cow”. For the office, the quicekr an allowance, the better, though for an individual examiner the converse is true.

    2. Re the comments by “My application is longer than yours”, YES, dealing with more claims IS a strain on the examiner. The more claims that have to be examined the longer the case takes, & the more searching & writing needs to be done. Adding a couple of claims may not be a big deal for the lawyer or applicant but the examiner needs to xamine each of those claims just a completely as the independent claims. That means evaluating them for 112, 1st & 2nd, 101, 102, 103; maybe searching additional areas or making additional combinations of references and determinations of obviousness (whether all examiners do this in every case is not the point of discussion here; I and a lot of examiners do & I am sure that the members of the bar & lawyers taht post here would want those things done). So, YES, every additional claim examined increases the burden on the examiner and increases the chances of making mistakes.

    3. I have not seen the final submitted guidelines, but my guess is, if the limit is 25 claims, it is 25 claims to be examined (prior to finding claims allowable) rather than 25 claims that can be filed, which makes a difference in the protection the application can get. Having a limited number of claims to be examined (in my opinion) does not seem to be that much, if any, of a burden on the applicant & will help both improve quality as well as reduce the backlog. Personally, I would make the number of claims to be examined to a lot less than 25, but I wasn’t given a vote :)

    thansk,

    LL

  61. 17

    Dennis,

    I’m curious about the assessment expressed by the title of this piece. Does “not too bad” mean “just a little contrary to law and in excess of statutory authority”?

  62. 14

    “Even though we don’t know exactly what the final rules will look like, would it nevertheless not be prudent to file some continuations now if, for example, you have disclosed unclaimed subject matter in a pending application, for which you know full well that you’ll eventually have to file a continuation anyways?”

    The divisionals will cover essentially that stuff. Generally speaking, two or three cons per app is plenty. The main reason for filing more than that is simply to “keep it alive.” I’ll leave the main reason that clients demand that applications be “kept alive” to your imagination …

  63. 13

    Hey should we start donating money to the tort attorney who will sue the USPTO for exceeding the authority granted to it by Congress pursuant to 35 USC section 120. I mean after the USPTO loses that case, the next case brought is the one for all the damages caused to the thousands of USPTO filers:)

  64. 12

    em,

    I think you make a good point about the provisional applicatons, and I haven’t heard anything about limits to applications claiming the benefit of a single provisional (I don’t remember anything in the original rules about it either).

    However, my question to you is what you would do if the “kitchen sink” application has already been filed as a regular utility application, disclosing multiple inventions, only one of which has been claimed. Should you file cotinuations/CIPs now, or wait until the rules are published or does it really make no difference either way?

  65. 11

    A 25 claim ceiling seems too low. I’m OK with the 5 independent claim ceiling, but does examining a few extra dependent claims really put that much of a strain on Examiners?

  66. 10

    I haven’t heard anyone talk about whether provisional applicaitons are included here. If not, wouldn’t one approach be to file your “kitchen sink” application as a provisional, rather than a utility? That way you’d get as many utilities as you want within that first year, and each of those could have two continuations.

    So, does anyone know (or can reasonably speculate) whether the new rules will limit the number of utility apps claiming the benefit of a single provisional?

  67. 9

    jk,

    I guess it depends what you mean by “retroactive”. In other words, it could mean that the rules will apply to any pending application, such that any pending application will be entitled to limited continuations as of right (most likely) or, it could mean that if a pending application already has some continuations (more than are allowed by the new rules), those continuations will somehow no longer be entitled to the parent priority date (highly unlikely, IMHO).

    So, the benefit to filing early is that you can currently file as many continuations/CIPs as you like and still follow a chain of parents to get a much earlier filing date. The priority dates of any applications you file now are unlikely to change even if the rules are retroactive (again, in my opinion).

  68. 7

    PG and Malcolm,

    Even though we don’t know exactly what the final rules will look like, would it nevertheless not be prudent to file some continuations now if, for example, you have disclosed unclaimed subject matter in a pending application, for which you know full well that you’ll eventually have to file a continuation anyways?

    This way, you can “beat the rush”, at least partially.

  69. 6

    “I don’t know of anybody that is so sure of the final rules that they are actually filing the continuations now.”

    Same here, pg.

  70. 5

    Between the time that the final rules are published, and when they go into effect, there will be a massive spike in continuation filings.

    Everyone is getting ready for that spike now, but I don’t know of anybody that is so sure of the final rules that they are actually filing the continuations now.

  71. 4

    As a quick survey, does anybody envision a glut of filings in the next little while, before the rules are published? Presumably one could get applications on file now to try to mitigate some of the effects of these rules.

    For example, let’s say that I have an application A pending now, disclosing (but not claiming) more than one invention. If these rumors are accurate, then I’ll be entitled to two continuations once these rules take effect. However, if I file one or more continuations/CIPs now, each of those applications (as well as application A) would presumably be entitled to 2 continuations. So, would there be an incentive to file continuation applications now if you have a pending application that discloses (but doesn’t claim) multiple applications?

  72. 2

    Help me out here, aren’t RCE’s and Continuations just a cash cow for the USPTO? In most cases, the Examiner has already done the heavy lifting in searching and understands the main issues so they don’t take as much Examiner time. It seems that RCE’s and continuations should more than pay for the added resources they consume.

  73. 1

    That’s just plain goofy that you would get more continuations than RCE’s. RCEs simply cannot be accused of the evils of continuations.

    Good point Dennis on the selective disclosure of the new rules. And congrats on the new job. In some ways I envy you and in any event am glad to have a new member of the “professoriate” who actually understands some of the realities facing the patent practitioner.

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