Comments on: USPTO Proposes Limiting Continuations http://www.patentbaristas.com/archives/2006/01/03/uspto-proposes-limiting-continuations/?utm_source=rss&utm_medium=rss&utm_campaign=uspto-proposes-limiting-continuations Freshly Brewed Bio/Pharma Chat. Served Up Daily. Tue, 07 Feb 2012 11:57:58 +0000 hourly 1 http://wordpress.org/?v=3.3.1 By: Mark Nowotarski http://www.patentbaristas.com/archives/2006/01/03/uspto-proposes-limiting-continuations/comment-page-1/#comment-103 Mark Nowotarski Tue, 10 Jan 2006 01:45:20 +0000 http://www.patentbaristas.com/wp/?p=331#comment-103 I echo Van’s assessment. Whereas I too support the goals of reduced pendancy and earlier allowance of an applicant’s most broad claims, I fear that these proposed rule changes will have the exact opposite effect. My biggest concern is that the patent office is proposing very serious restrictions on an applicant’s right to file the RCEs and continuations that he or she feels are necessary to advance the prosecution of his or her application. The only choice applicants are going to have is to file more appeals. These are extremely costly and time consuming for both applicants and the office. I did a quick survey of recently issued patents in class 705 (i.e. computer implemented business methods, a very important area for my clients). It appears that appeals that go to the BPAI are adding about four years to the pendancy of applications in the business method area. By contrast, RCEs add only about one year. Hence overall, the proposed rule changes will significantly delay the public notice of allowed claims that the office is hoping to promote. From the standpoint of office productivity, consider the impact of what would happen if a substantial fraction of the 50,000 RCEs filed every year were filed instead as appeals. This could easily outstrip even the maximum productivity benefits the office is hoping to achieve due to the presumptive elimination of the 10,000 or so “second” RCE and continuation filings that are currently submitted per year. I think that it would be very prudent for the patent office to undertake a comprehensive feasibility study to more carefully assess the potential impact of these changes before they consider implementing them. I welcome the suggestions on how to most effectively convey this message to the office. I echo Van’s assessment. Whereas I too support the goals of reduced pendancy and earlier allowance of an applicant’s most broad claims, I fear that these proposed rule changes will have the exact opposite effect.

My biggest concern is that the patent office is proposing very serious restrictions on an applicant’s right to file the RCEs and continuations that he or she feels are necessary to advance the prosecution of his or her application. The only choice applicants are going to have is to file more appeals. These are extremely costly and time consuming for both applicants and the office.

I did a quick survey of recently issued patents in class 705 (i.e. computer implemented business methods, a very important area for my clients). It appears that appeals that go to the BPAI are adding about four years to the pendancy of applications in the business method area. By contrast, RCEs add only about one year. Hence overall, the proposed rule changes will significantly delay the public notice of allowed claims that the office is hoping to promote.

From the standpoint of office productivity, consider the impact of what would happen if a substantial fraction of the 50,000 RCEs filed every year were filed instead as appeals. This could easily outstrip even the maximum productivity benefits the office is hoping to achieve due to the presumptive elimination of the 10,000 or so “second” RCE and continuation filings that are currently submitted per year.

I think that it would be very prudent for the patent office to undertake a comprehensive feasibility study to more carefully assess the potential impact of these changes before they consider implementing them. I welcome the suggestions on how to most effectively convey this message to the office.

]]> By: Van Mahamedi http://www.patentbaristas.com/archives/2006/01/03/uspto-proposes-limiting-continuations/comment-page-1/#comment-104 Van Mahamedi Thu, 05 Jan 2006 10:58:35 +0000 http://www.patentbaristas.com/wp/?p=331#comment-104 The new proposals are surprising in their shortsightedness. The USPTO wishes to reduce continuation filings by having Applicant make a showing as to why new claims were not submitted in an initial filing, for the stated reason that this would reduce continuations and help backlog. They ignore the result if the rule is passed-new applications would have numerous more claims, even with extra fees, making examination of each case longer. The Average Office Action response will look like an appeal brief, and Applicant will need to escalate rather than take the RCE and negotiate with the Examiner. Applicant will be encouraged to split his specification to discuss describe embodiments separately (resulting in more filings). Result are easy to see. More new applications and/or more claims in individual applications, Office Actions that look like novels...This is the formation of new backlogs, not relief of existing backlog. The quality of patents will go down if new rules are passed, unless Applicant wants to push through with narrow claims. The only Applicant I see who can benefit are the largest corporate filers who supply patents to prospective "Licensees" not so much on merit, but on relevance. The smaller Applicant, who needs the quality patent, will have less to use when he seeks enforcement. I hope this proposal goes by way of the $10K continuation application of 2002-2003. The new proposals are surprising in their shortsightedness. The USPTO wishes to reduce continuation filings by having Applicant make a showing as to why new claims were not submitted in an initial filing, for the stated reason that this would reduce continuations and help backlog. They ignore the result if the rule is passed-new applications would have numerous more claims, even with extra fees, making examination of each case longer. The Average Office Action response will look like an appeal brief, and Applicant will need to escalate rather than take the RCE and negotiate with the Examiner. Applicant will be encouraged to split his specification to discuss describe embodiments separately (resulting in more filings). Result are easy to see. More new applications and/or more claims in individual applications, Office Actions that look like novels…This is the formation of new backlogs, not relief of existing backlog.

The quality of patents will go down if new rules are passed, unless Applicant wants to push through with narrow claims. The only Applicant I see who can benefit are the largest corporate filers who supply patents to prospective “Licensees” not so much on merit, but on relevance. The smaller Applicant, who needs the quality patent, will have less to use when he seeks enforcement.

I hope this proposal goes by way of the $10K continuation application of 2002-2003.

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