As all patent prosecutors know, the PTO has proposed a set of rule changes that would limit the number of continuation applications that may be filed based on a given priority document. In addition, the proposed changes would also limit the number of claims to be examined in each application.
The final version of the proposed rules are not yet public, but are being reviewed by the Whitehouse before final implementation.
Three groups have now met with the OMB and complained about the rules [LINK].
- Former PTO Director Bruce Lehman, now a lobbyist working for Akin Gump, joined forces with BIO to argue that the changes would create significant harm to small biotech companies. Materials Used: Chart Memo.
- Derek Minihane (in-house at Intermolecular) and Jeffrey Birchak (in-house at Fallbrook Tech) presented on behalf of he innovation alliance — making the argument that “the proposed rules would impose hundreds of millions of dollars of additional costs on inventors and could destroy billions of dollars in property rights and business value.” Materials Used: Memo Presentation.
- David Boundy (Cantor Fitz) and Mike Strickland (GlaxoSmithKline) also met with OMB officials to present the case against changes on behalf of a few dozen interested companies. Their documentation highlights what they see as illegal PTO actions leading-up to the new rules. [LINK]
Within the Whitehouse Office of Management and Budget (OMB), the Office of Information and Regulatory Affairs (OIRA) reviews final regulatory changes before implemented. Susan Dudley, OIRA director is expected to release a decision within three weeks.
- Stanford Professor Mark Lemley’s article regarding continuations (coauthored with Judge Moore) was used as a justification for the PTO’s rule changes. Interestingly, the objectors cite another Lemley article (coauthored with Allison, Moore, and Trunkey) for the proposition that patents based on continuations are generally more valuable. The second article, titled “Valuable Patents” makes its conclusion by combining the observation that patents based on continuations are litigated more often with the assumption that litigated patents are, on average, more valuable than those that are not litigated.
- The Lemley/Moore article is not overly concerned with the administrative trouble created by continuations. It does, however, point to four major problems created by extensive continuation practice:
First, at a minimum, continuation practice introduces substantial delay and uncertainty into the lives of a patentee’s competitors, who can never know whether a patent application is pending. Second, the structure of the PTO suggests that continuations may well succeed in “wearing down” the examiner, so that the applicant obtains a broad patent not because he deserves one but because the examiner has neither incentive nor will to hold out any longer. Third, continuation practice can be – and has been – used strategically to gain advantages over competitors by waiting to see what product the competitor will make and then drafting patent claims specifically designed to cover that product. Finally, some patentees have used continuation practice to delay the issuance of their patent precisely in order to surprise a mature industry, a process known as “submarine patenting.”
- Patently-O: https://patentlyo.com/patent/2007/04/continuation_an.html
- Third parties may submit written comments to the OMB on any rule under review. [VIA FAX at (202) 395-3047 or 202-395-5806 or (202) 395-6566].