38 thoughts on “Data on Terminal Disclaimers Across Art Units

  1. 11

    Yay Group 1600! Represent!

  2. 10

    During times of the greatest advancement in all the various arts, Continuation apps have been accpeted as the norm, and everybody was happy since the 1952 act about the topic of Continuations. I lunched at a CLE 25 yrs ago with a laywer from the IP department at Texas Instruments, who stated that they did not even themselves within the company understand just what exactly the invention was, until the ninth year after the very first application in that big family of con’s was filed.

    It’s clear that continuation practice is essential to justify motivation to make advancements in the arts. TI would not have been able to become an anchor to the industry without con practice. The fact that people are even talking about changing the practice, reveals that they are dangerous, enemies of innovation and everything American, and think only of themselves without regard for the effects of their actions on others. Reckless bsterds

  3. 8

    I think the percentages contradict the urban legend that software patents are obsolete after a few years. If that were actually the case, one would not be inclined to file continuations/TD’s.

    1. 8.1

      There is no question that 99% of VALID software patents are indeed obsolete after a few years. Most of the rest are ineligible.

      1. 8.1.1

        Translation:

        Wah

        That is all.

  4. 7

    Apologies if this question is addressed elsewhere here, but does the data reflect when the USPTO reinterpreted the MPEP to require TDs to be filed, even in the case of the rejection being provisional?

  5. 6

    These TD rules feel eerily similar to the now-infamous “Final Rule 78” that the PTO attempted to promulgate almost 18 years ago, which would have allowed an applicant to file only two continuations unless the proposed amendment could not have been submitted during prosecution of the prior-filed application. The PTO ultimately rescinded that rule, but not before the USPTO in Tafas v. Doll, 559 F.3d 1345 (Fed. Cir. 2009), found it in conflict with the plain language of 35 U.S.C. 120. One could argue that these new TD rules are an attempted do-over of Final Rule 78, this time under the umbrella of terminal disclaimer procedure. Putting aside the USPTO’s policy rationale for these proposed TD rules, it isn’t clear why they rules would fare any differently than Final Rule 78 under the reasoning of Tafas.

    1. 6.1

      One could argue…

      Been there. Done that.

      Thanks for the confirmation.

    2. 6.2

      By the by, Tafas is still binding law on the USPTO (as the AIA did not touch the matter).

      1. 6.2.1

        > By the by, Tafas is still binding law on the USPTO (as the AIA
        > did not touch the matter).

        I am not sure this is right. A few months after the Federal Circuit panel decision in Tafas was decided, it agreed to rehear Tafas en banc and thus vacated the published panel decision. See Tafas v. Doll, 328 Fed. Appx. 658 (Fed. Cir. Jul. 6, 2009). Several months after that, while the en banc rehearing was pending, the PTO unilaterally rescinded the proposed rules which led to the dismissal of the appeal. The effect of a vacatur is that the published panel decision is not binding authority, it’s essentially a nullity from a legal standpoint, but it could obviously be persuasive authority in a later challenge.

        1. 6.2.1.1

          Vacatur was denied.

          1. 6.2.1.1.1

            What are you talking about? I assume you’re referring to the Federal Circuit’s later decision to deny a request by the PTO to vacate the underlying district court judgment, which enjoined the PTO from implementing the controversial continuation rules. See Tafas v. Kappos, 586 F.3d 1369 (Fed. Cir. 2009). That denial was only about vacatur of the district court judgment, not the published Federal Circuit panel decision in Tafas v. Doll, 559 F.3d 1345 (Fed. Cir. 2009), which was vacated when the court agreed to hear the case en banc.

            The end result is that the district court judgment was not vacated and was allowed to stand, but it’s just a district court judgment so it does not provide legally binding precedent. The panel decision in Tafas v. Doll, 559 F.3d 1345 (Fed. Cir. 2009), on the other hand, stands vacated to this day, but noted, could provide persuasive authority in future cases.

            1. 6.2.1.1.1.1

              It isnbinding on the parties involved.

              Yes, that does mean that the USPTO is still bound by the decision.

              1. 6.2.1.1.1.1.1

                I don’t know why you keep fighting on this.

                (1) The Federal Circuit panel decision in Tafas was vacated so it is not binding — on anyone. It may be persuasive in a future challenge to the TD rules, but it does not provide binding Federal Circuit precedent.

                (2) The district court judgment in Tafas was not vacated so it is still technically binding on the PTO, but so what? That judgment only addressed the continuation rules at issue in that case, so it is only binding on the USPTO to the extent the PTO ever tried to revive the old continuation rules that were struck down. District court decisions do not make or change the law, and any future challenge to the TD rules will present different legal issues. It wouldn’t surprise me if the briefs challenging the new TD rules don’t even bother to cite the district court decision.

                And FWIW, the reason Tafas opposed vacatur of the district court judgment wasn’t because he wanted it to serve as a binding decision in some hypothetical future case. The true reason was because Tafas was seeking about $900K in attorneys’ fees from having won at at the district court level, so it was helpful to his argument that the district court judgment not be vacated.

                1. You are simply wrong and the plain fact that the Office asked for – and was denied – vacatur is dispositive.

      2. 6.2.2

        I thought Tafas was vacated?

        1. 6.2.2.1

          The Office requested such – the Court denied them.

    3. 6.3

      One has to ask why the Director is trying to implement these rules. We need a director that is working for Google or working to increase their bonus when they go work for Google.

      1. 6.3.1

        “One has to ask why the Director is trying to implement these rules.”

        $$$. Lots and lots of $$$.

        1. 6.3.1.1

          It seems far more plausible this comes from the White House and is related to drug pricing (as inept as this would be to address that)

          1. 6.3.1.1.1

            Brother Anon – that’s merely the “cover story” for the simple minded (read that as the Virtue Signal).

          2. 6.3.1.1.2

            It eliminates a patent thicket with one fell swoop of the axe. Group 1600 loves TDs.

  6. 5

    I just don’t think people realize who are outside of the patent world how much continuation practice has mitigated the madness of Alice, 112, the d*ath squads, and all the other attacks on the patent systems funded by the likes of Google with people like Lemley as the spear tip and being paid handsomely for it.

    Rather than legislate what they have done is attack the patent system in everyway imaginable. Continuations have allowed the applicant to adjust their claims to try and salvage some value out of their inventions.

    Now, we have an attack on continuations by the Director (who we all know will get a big payoff from Google when she leaves her “government” position) and backed by garbage academic papers from the ever-vile Lemley.

    1. 5.1

      Consider too a patent with a claim “a processor” and a continuation with “at least one processor.” According to the CAFC’s latest bizarre holding, the first one has a far different scope than the second one. So, are they obvious variants of one another given the CAFC’s holding?

  7. 4

    This is an interesting data set. Ignoring the absolute numbers and just focusing on the percentages, it looks like TDs are most common in chem/bio arts and (weirdly enough) certain data processing arts (but not others?). I’m looking at this roughly, glancing through the top half of the chart and then at the bottom half of the chart.

    As patent families age, the number of TDs would be expected to rise and for sure the practice of filing lots of divs and cons (and TDs) is standard in the chem/bio fields and has been for a long time. Is that we’re seeing here? Another instance where practices in the newbie abstract arts are “catching up” to those in the grown-up arts and the PTO is realizing it needs to get a handle on things?

    Put another way, if the same data was collected ten years ago, what would this chart look like?

    1. 4.1

      Grown-up arts….

      Gaslight some more there Malcolm.

  8. 3

    Dennis, per your request I’ve got three deluxe huts reserved for the annual Castro Birthday Celebration next month. Your huts are closer to the beach and not too far from the mess tent. I think George is in the same quadrant but Melinda and the Obamas are in the quadrant across the river. See you there! I still laugh whenever I think about the fun times at the sourdough bread baking workshop.

  9. 2

    I would have guessed semiconductors would have been higher. Structure + method of making it are the standard two claims and automatic splits. No?

    1. 2.1

      OldCurmudgeon, it’s actually not surprising that pharma (group 1610) would have the largest number of TDs as a percentage, and I’m somewhat surprised the percentage wasn’t higher.

      For a pharma company, having a single patent covering some inventive compound or drug presents a single point of failure; if that patent gets knocked out at the PTAB or in district court, game over. The best course of action for a company in this situation is to turn what would ordinarily have been one patent into five, or ten, or more, each patent introducing slight variations in claim language, and filing TDs to overcome double-patenting rejections. As a result, even if the claims are very similar, having a large portfolio of largely duplicative patents makes it much more difficult (and much more expensive) for a would-be competitor to mount a successful invalidity challenge and enter the market.

      1. 2.1.1

        Here’s some more mundane reasons why TDs are numerous in chemical arts.

        File your 20 claims to the compound. Maximize that claims set. Claims get a notice of allowance. File a CON to the method of treating a disease (all supported in the spec) using the allowable compound claims. Get an OTDB rejection, file TD.

        File your claim set with a large genus of compounds (all supported an enabled). Product is now in clinical development. So file a CON to the a smaller genius encompassing the species of compound that is being studied. File CON2 to just the compound. Multiple layers of patents to protect against any enablement or breadth challenges by a generic.

        I could give you more examples in Biotech.

        One consequence of the TD push is that practitioners now are considering how to file everything in an omnibus patent application, then draft a gigantic (100+) claim set to provoke multiple restriction requirements. Restrictions = No TD’s.

    2. 2.2

      I believe the semiconductor group restricts when they have a single application with a device claim and method of making claim

  10. 1

    This is so Left totalitarian. Now we are looking at the rates and acting as if TDs are some blight on society. I wonder how big of a bonus Lemley will get from Google for his attack on TDs.

    1. 1.1

      Night – A couple of folks asked for the data on this and so I’m providing it. Is there a different way to present this that isn’t politicized?

      1. 1.1.1

        Dennis, it is the context of this blog not reporting on the many benefits of TDs. In fact, all I’ve seen is negative blog posts regarding TDs.

        1. 1.1.1.1

          > the many benefits of TDs

          Not trying to be snarky here, but what exactly are they? (And the real question isn’t the benefits of TDs, but more broadly, what are the benefits of double-patenting.)

          1. 1.1.1.1.1

            The larger question is the benefits of continuations. The TDs make it convenient for both the Office and the applicant to file continuations (which may be claimed to be obvious but often are not).

            So, the TDs have the utility of not having to fight obvious type double patenting rejections.

            Continuations have probably saved the patent system from the draconian decisions of the IPR boards, the CAFC and the Scotus (and the inconsistency of those decisions). A continuation enables an applicant claim the invention around whatever the latest attempt is by the courts to remove their patent rights. Such things as holding that “a processor” doesn’t include two processors performing the method. And a hundred other decisions.

            There are many more. But it is not hyperbole to say that continuations probably account for about half the value of patents right now. Take them away and the patents will become almost worthless. Lemley knows that (and ultimately Google who probably directed Lemley to make this attack.)

            Anyone who practices in this area where patents are licensed and enforced knows this.

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