Fixing Continuing Application Practice at the USPTO

Article excerpt

INTRODUCTION

I. CONTINUING PATENT APPLICATION PRACTICE
   A. Continuing Patent Applications
   B. Differing Views of Continuing Application Practice
      1. Lemley and Moore's View of Continuing Application Practice
        a. Five Alleged Problems Caused by Continuing Applications
          (1) Delay and Uncertainty
          (2) Wearing Down the Examiner
          (3) Changing Claims
          (4) Submarine Patents
          (5) Evergreening
        b. Summary
      2. Patent Practitioners' Views of Continuing Application Practice
      3. The USPTO's View of Continuing Application Practice
   C. Summarizing Problems with Continuing Applications
II. AN EMPIRICAL INVESTIGATION OF CONTINUING APPLICATIONS
   A. USPTO's Proposed Continuing Application Rules
   B. Research and Analysis of Patent Application Continuing
      Application Use
      1. Research Techniques
      2. Public PAIR Research Results
        a. Data Set in General
        b. Continuing Application Use in the Data Set
        c. Categorization of Data Set in View of Proposed Rules
      3. Analysis of Data Set
        a. Desirability of Potential Applicant Responses
          (1) Scenario One (Two or Fewer Continuations
              and One or No RCE)
          (2) Scenario Two (More than Two Continuations
              and More than One RCE)
              i. Scenario Two in General
              ii. Specific Examples of Scenario Two
          (3) Scenario Three (Two or Fewer Continuations
              and More than One RCE)
              i. Scenario Three in General
              ii. Specific Examples of Scenario Three
          (4) Scenario Four (More Than Two Continuations
              and One or No RCE)
              i. Scenario Four in General
              ii. Specific Examples of Scenario Four
      b. Applications Correctly Targeted?
      c. Applications Correctly Not Targeted?
III. IMPROVED CONTINUING APPLICATION RULES
   A. Categories of Continuing Applications to Prevent
   B. Improved Continuing Application Rules
      1. Preventing Long-Pending Continuing Applications
        a. Limit Time for Filing Continuation and Divisional
           Applications
        b. Require RCEs to Further Prosecution
        c. Presumption of Prosecution Laches if Application
           Pends Too Long
      2. Limiting Non-Divisional Continuation Applications
CONCLUSION

INTRODUCTION

Academia is wrong. Patent practitioners are wrong. The United States Patent & Trademark Office is wrong. Everyone is wrong when it comes to continuing patent application practice before the United States Patent and Trademark Office.

Leading intellectual property law professors Mark Lemley and Kimberly Moore have suggested that an ideal patent world would have very few continuing applications. (1) Patent practitioners represented by the American Intellectual Property Law Association (AIPLA), on the other hand, would prefer no limit to the number of continuing applications they may file. (2)

The position of the United States Patent & Trademark Office (USPTO) is somewhere between the two extremes. The USPTO contends continuing applications are increasing the backlog of pending applications. (3) In response, the USPTO published new rules (Proposed Rules) limiting, but not eliminating, continuing applications. (4) On the eve of the implementation of the new rules, the District Court for the Eastern District of Virginia issued a preliminary injunction preventing the USPTO from enforcing the rules. (5) The court made the injunction permanent on April 1, 2008. (6) The USPTO appealed the ruling and, in April 2009, the Federal Circuit reversed in part, vacated in part, and remanded the case back to the Eastern District of Virginia, which has not yet issued a ruling. (7)

While the ability of applicants to file unlimited continuing applications is not desirable, Lemley and Moore's suggested solutions and the USPTO's Proposed Rules are too restrictive, ignoring realities of patent prosecution. …