Senator Schumer:

With respect to the rule on continuing applications, under the current rules, there is effectively no limit on the number of continuation applications - or requests for continuation applications - that a prospective patent holder could file. The pending rule change would limit the number of continuations and requests for continued examination without a showing by the petitioner. Concerns have been raised as to the impact this proposed rule will have on certain types of inventions. In addition, there are questions as to whether the PTO has the necessary authority to limit the number of continuation applications. More time would allow all interested parties to analyze these questions further.

The proposed rule regarding examination of claims raises additional concerns. It would require the filing of an extensive examination support document whenever an applicant needs to file more than ten representative claims to accurately describe its invention. Examination support documents can be very costly, thereby requiring an inventor to choose between significant costs and additional claims in the patent (which may be appropriate to accurately define and describe an invention). The proposed rule may thus serve to undermine core principles of patenting process, full candor and disclosure to the PTO and the public.

Schumer noted the GSK/Tafas lawsuit, suggesting "a delay would allow the courts to assess the merits of the pending suit."

Hat tip of thanks to Gene Quinn of PLI for breaking the news.