Bill Heinze over at I/P Updates noted an article in Managing Intellectual Property on October 18, 2005, where USPTO Commissioner Jon Dudas is quoted as calling on companies and patent prosecutors to help the Office improve the timeliness and quality of patent examinations by calling for “a reduction in the number of continuations, fewer claims for each application and a limit to the number of supporting references.”

Limiting the number of references? Huh? And then be disbarred for failure of duty to disclose? As Bill notes:

Perhaps we could just start with eliminating restriction, election, and final action practices at the USPTO, before we dismantle the duty of disclosure. While the patent bar can no doubt do more to make claims easier to read, much less examine, I’m not sure that practitioners have that much control over the volume of continuing applications and supporting references.

Regarding continuations, Dudas said that applicants need to help by reducing examiners’ workloads:

As an example, Dudas cited the number of continuations – applications amended after an initial rejection – which the Office handled. “Out of 375,000 applications we received last year, 100,000 were [continuations]. When one-quarter of our work is rework, we look at that,” said Dudas, adding that “examiners are concerned about the quality of applications coming through the door”.

The fact that between 20,000 and 30,000 applications every year are second continuations makes the problem worse, said Dudas. As a result, he said, the Office is looking at whether there should be a limit to continuations.

It would be a financial disaster for applicants if continuations were limited. With restriction practice running out of control, especially in the biotech and pharmaceutical arts, how would companies know what to file in a single application? You would have to file numerous “original” applications for each invention.

I recently had an application that had a straight-forward set of claims with a composition and method of using the composition. The Examiner returned a two-way restriction: one for the composition, one for the method. I traversed arguing that the method is just used with the composition and requesting withdrawal of the restriction.

I got back a response from the Examiner stating that “Yes, I was right and the restriction was being withdrawn.” Then in the next paragraph I got “Oh, and by the way, I’m issuing a new restriction for these TWENTY-EIGHT inventions I think are included in the claims.”(!)

The one startling fact in the article was that USPTO figures show that 23% of all claims come from just 7% of applications. I guess someone is paying some hefty claim fees.

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