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January 4, 2006
Limiting Continuations
The USPTO is aiming to cut its backlog by limiting continuations.
The patent office is burden shifting, at
the potential sacrifice of fertile inventors losing some of their patent rights.
Here's the patent office:
[Continued examination] practice allow applicants to craft their claims in light of the examiner’s evidence and arguments, which in turn may lead to well-designed claims that give the public notice of precisely what the applicant regards as his or her invention. However, each continued examination filing, whether a continuing application or request for continued examination, requires the United States Patent and Trademark Office (Office) to delay taking up a new application and thus contributes to the backlog of unexamined applications before the Office.
The revised rules would require that second or subsequent continued examination filings, whether a continuation application, a continuation-in-part application, or a request for continued examination, be supported by a showing as to why the amendment, argument, or evidence presented could not have been previously submitted.
About one in four applications filed in 2004 was a continuation.
It's quite possible to load numerous inventions into a single application. While the patent office refers to any specification as "jumbo" if over 20 pages (MPEP 608.01 ¶ 6.31), and has strict requirements for jumbos, there is no practical limitation to disclosure length.
The PTO complained that more than 40% of 2004 applications had more than 40 claims. While not specifying any limit to the number of claims, the patent office has hinted of hindering applicants from filing many claims: "When [large number of claims] must be filed, applicants should be prepared to assist the agency in ensuring these applications don't absorb a disproportionate amount of the limited time the USPTO has to review applications."
In fact, the patent office has already done a bit to limit claims, by uping its fees in recent years, greatly increasing the cost of additional independent claims. The cost of filing additional independent claims is now equivalent to filing a continuation. Since every prosecution has the foibles of the examiner to deal with, better to spread the risk with continuations.
Essentially, the patent office is shifting the burden of its backlog onto patent applicants. Looks like a pincer movement of limiting claims and continuations. The net effect is going to be further raising costs to applicants, as well as limiting patenting overall. The cost increases will likely prune the number of small inventors who may be able to chase their dreams by seeking protection for their inventions.
As to disclosing something that could be claimed and not doing so, any invention not claimed is de facto donated to the public.
Nothing from the patent office with regard to limiting divisional applications (MPEP 201.06). Supposedly an applicant would continue to be able to carve out claim areas and file divisionals without restriction, but it's more likely that the patent office simply hasn't thought that through, and will later clarify an evolved position on divisionals. Also not mentioned were reissues; again, an issue the patent office likely hasn't thought through. But divisionals and reissues don't amount to such significant numbers as continuations, and the patent office seems to be playing a numbers game.
It seems the patent office is much less worried about providing service to inventors than seeking to cover its political backside by taking measures that might appear to reduce its examination backlog.
By limiting continuations, the agency is not effectively addressing the backlog problem. Total filed applications were up 15% in 2005 from 2001, but pending applications over the same period increased 63%. This shows that pendency drastically outpaced patenting.
Posted by Patent Hawk at January 4, 2006 2:09 PM | Prosecution