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October 19, 2007

Stopping Limiting Continuations Continued

Inventor Dr. Tafas was first to the courthouse to sue Jon Dudas for the new examination limits, specifically, limiting continuations. GlaxoSmithKline followed suit. Steven J. Moore at Kelley Drye & Warren, Tafas counsel, informs that "the Glaxo case has been consolidated into the Tafas case." Tafas has filed an amended complaint. And Hal Wegner analyzes the justifications, and pitfalls, of late-stage continuation filings.

Hal Wegner reports:

One of the challenges facing Dr. Tafas is his reason that he needs relief to file unlimited continuing applications, which is rephrased [in his amended complaint] at 21, 22 (pp. 7-8), and which is discussed in the attached paper, Late Stage Continuing Filings: Dr. Tafas' Challenge, at § V, Tafas' Inventions "Stem[ ] from" a Parent Filing (pp. 12-13).

Within twenty-four hours of publication of the Continuation Rules, a disgruntled inventor challenged to the authority of the U.S. Patent and Trademark Office (PTO) in Tafas v. Dudas... Surely, the Continuation Rules can be justly criticized as the worst rulemaking in the past thirty years. Indeed, there may also be basis to challenge the Director’s authority to promulgate the current cap on continuing applications. Yet, constructively, the Continuation Rules may expose some weaknesses of continuation practice and lead to a better understanding of the proper use of the continuing application in daily practice.

This paper commences with the special problems of the biotechnology field where multiple priority filings are a fact of life, in some cases a necessity to obtain full and fair protection. Late stage continuing applications are also the reality today for biotechnology. This is particularly true where it is necessary to provide confirmation of a therapeutic indication only after testing approvals in cancer and other cutting edge, life saving areas. Provision of a distinguishing utility for purposes of an unobviousness showing has also received judicial approval.

Yet, more commonly, there are abuses of late stage continuing filings where claims keyed to new matter are presented too late, after a statutory bar event has occurred. Perhaps the most obvious pitfall for the unwary is where the patent applicant has failed to claim all the obvious variants of his basic technology in his original application. The improvements which are obvious from – or “stem from” – the basic application need to be included in the original application or in any event be part of an application filed before a statutory bar event creates a bar to patenting.

Posted by Patent Hawk at October 19, 2007 12:51 PM | Prosecution

Comments

Yeah but how could claim the obvious variants if the number of claims is limited to 5/25 ????

Posted by: anonymousAgent at October 20, 2007 10:32 AM