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October 27, 2007


Hal Wegner sallies forth with a missive to John Whealan, former USPTO Solictor, now on the Senate majority staff.

Twenty months ago in your role as the Solicitor for the United States Patent and Trademark Office you addressed the Bar Association of the District of Columbia; you spoke against a statutory elimination of excessive continuations applications because of an Agency "bubble" problem, while asserting that the Congress would clearly support repeal of multiple continuing applications – that your former Agency is now eliminating through rulemaking you helped craft in your former role.

Wegner aligns with AIPLA against retroactive application of continuation rules, not continuation rule changes altogether. His suggestion is a 30-month window for filing continuations.

Wegner fingers a culprit: the production credits given to examiners for continuations and RCE's, forcing them by stubborness -

One of the greatest abuses that has spawned the proliferation of continuing applications is not the fault of the applicant community but a substantial minority of examiners who have found that coerced continuing or divisional filings will boost their production figures and gain them promotions and bonuses. Furthermore, since lower and middle management performance ratings are dependent upon the gross production of examiners within their sphere or authority, there is an incentive to encourage or at least not discourage what has become a grossly abused practice within the PTO. The proof of the pudding lies in the greatly increased number of continuing application filings. An immediate reform to eliminate continuation filing credits must be implemented or all the proposed changes will be for naught.

A history lesson -

Before the 1952 Patent Act and the creation of 35 USC § 120 there was no limit to the number of continuing applications that could be filed. As explained by the late Judge Rich, “[s]ection 120 appeared in the statutes for the first time in the Patent Act of 1952. Prior to 1952, continuing application practice was a creature of patent office practice and case law, and section 120 merely codified the procedural rights of an applicant with respect to this practice. Transco Products Inc. v. Performance Contracting, Inc., 38 F.3d 551, 556-57 (Fed. Cir. 1994)(citing Racing Strollers, Inc. v. TRI Indus., Inc., 878 F.2d 1418, 1421 (Fed.Cir.1989); In re Hogan, 559 F.2d 595, 603, 194 USPQ 527, 535 (CCPA 1977); Henriksen, 399 F.2d at 258-260). Furthermore, “[b]efore section 120 was enacted, the Supreme Court noted that a continuing application and the application on which it is based are considered part of the same transaction constituting one continuous application. Transco, 38 F.3d at 556-67, citing Godfrey v. Eames, 68 U.S. (1 Wall) 317, 325-26(1864)(footnote omitted).

And an admonishment to the PTO of overstepping its authority -

It it up to Congress to make any chnage in the present statutory provision. Insofar as the Congress that enacted the 19852 Patent Act, it is utterly wrong to attribute a negative view toward continuation filings. Indeed, Congress abandoned "[t]he preliminary draft of section 120 [which] stated: 'The term of the patent granted on said later application shall not extend beyond the date of expiration of the patent if any, which may be granted on the earlier application.'" In re Bauman, 683 F.2d 405, 410 n.12 (1982)(quoting In re Henricksen, 399 F.2d 253, 257 n.10 (1968)). Thus, "[t]he deletion of this provision indicates that Congress did not intend limitations such as patent expiration date with that of the patent issued on the parent application to be imposed on the patent issuing on the continuation application." Bauman, 683 F.2d at 410 n.12. In the Hogan case, the court acknowledged policy concerns with a prolonged pendency, "but a limit upon continuing applications is a matter of policy for Congress, not for us." In re Hogan, 559 F.2d 595, 604 n.13 (1977)(citing Henriksen, 399 F.2d at 262).

Hal Wegner serves up a lot of content on patent reform worth digesting, including interesting historical and comparative analyses, in his papers here.

Posted by Patent Hawk at October 27, 2007 2:48 PM | The Patent Office


I would like to see Mr. Wegner or others address the following provision from H.R. 1908, because I believe the USPTO may place all their "marbles" on this contrived and lobbied "clarification":


(a) Regulatory Authority- Section 2(c) is amended by adding at the end the following:

`(6) The powers granted under paragraph (2) of subsection (b) include the authority to promulgate regulations to ensure the quality and timeliness of applications and their examination, including specifying circumstances under which an application for patent may claim the benefit under sections 120, 121 and 365(c) of the filing date of a prior filed application for patent.'.

(b) Clarification- The amendment made by subsection (a) clarifies the scope of power granted to the United States Patent and Trademark Office by paragraph (2) of section 2(b) of title 35, United States Code, as in effect since the enactment of Public Law 106-113.

Posted by: NIPRA anonymous at October 27, 2007 4:36 PM