[This is the seventh in a series of postings regarding the various proposals in the Patent Act of 2005.]

Continuation Applications

Ah, the ghost of Jerome Lemelson lives and continues to rattle his chains. (Even though his patents were adjudged invalid in Symbol Technologies Inc. et al. v. Lemelson Medical, Education & Research Foundation LP et al., No. 04-1451, 2005 WL 2173572 (Fed. Cir. Sept. 9, 2005)). Lemelson was a prolific inventor and obtained more than 500 patents in his lifetime. He is famous for the patents covering the use of bar code readers. In patent circles, however, he is even more famous for his method of submarine patenting. Lemelson kept patent applications alive in the U.S. Patent and Trademark Office for years, through a multitude of continuation applications, and then secured patent grants and attacked infringers for technology disclosed within the applications after widespread commercial use of the technologies had evolved.

Congress addressed this practice when they changed the patent term from seventeen (17) years from the date of issue to twenty (20) years from the date of filing. These changes arise from the GATT Uruguay Round implementing legislation (P.L. 103-465). The provisions relating to patent term went into effect on June 8, 1995. But in rapidly moving industries, particularly software, even twenty years has generated outcry that the monopoly granted by law is overly stifling to innovation.

So the proposed legislation allows the USPTO to issue regulations limiting continuation applications to address supposed continuing abuses. This is a dangerous idea that seems to be mainly directed at reducing workload in the patent office. (See also, the proposed Changes to Practice for the Examination of Claims in Patent Applications (DEPARTMENT OF COMMERCE Patent and Trademark Office, 37 CFR Part 1 [Docket No.: 2005P067] RIN 0651AB94) which were filed on December 30, 2005.) Intervening rights allow competitors to practice material that is claimed in a reissued or reexamined patent application.

This protects investment and limits the effect of submarine patents even within the twenty year patent term. (35 U.S.C. 252). Otherwise, inventors should be able to pursue patents on anything in an active application that meets the requirements of patentability.

Previous: Part 6. Injunctions.
Next Up: Part 8. Inter Partes Reexamination.

Today’s post comes from Guest Barista Ria Schalnat, a registered patent attorney in Frost Brown Todd’s Cincinnati office.

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