On August 21, 2007, the USPTO published its final rules limiting continuation practice (72 Federal Register 161 at 46716, “Rules and Regulations Changes To Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent applications; Final Rule”).

Constraints on the USPTO’s ability to limit continuations

In both the proposed rules and the final rulemaking, the USPTO acknowledges the right to continuations under 35 U.S.C. § 120, but counters that “[n]othing in 35 U.S.C. 120 or its legislative history suggests that the Office must or even should permit an applicant to file an unlimited number of continuing applications without any justification.” The USPTO noted that the changes in the final rules do not set a per se limit on the number of continuing applications, nor are the changes intended to address extreme cases such as Lemelson or Bogese (discussed below).Whether or not one believes that USPTO is constrained by the plain language of 35 U.S.C. § 120 or its legislative history, these are not the only factors to consider. As argued below, the new rules appear to run counter to other factors, including the judicial constructions of 35 U.S.C. § 120.

Attempted Statutory Limitations have not been enacted, or been rejected, by Congress, indicating Congressional intent to preserve current Continuation practice.

35 U.S.C. § 120 provides that “[a]n application for patent for an invention . . . in an application previously filed . . . shall have the same effect, as to such invention, as though filed on the date of the prior application.

Prior to the enactment of 35 U.S.C. § 120, Continuations were not limited. (See In re Henriksen, 399 F.2d 253 (CCPA 1968); Transco Prods, Inc. v Performance Contracting, Inc., 38 F.3d 551 (Fed. Cir. 1994) According to the Court of Customs and Patent Appeals (CCPA), the legislative history of 35 U.S.C. § 120 indicated that Congress sought to codify this prior practice. (Henriksen 399 F.2d at 256-258.) Congress has not sought to limit continuations despite other amendments to 35 U.S.C. § 120 (Amended Nov. 14, 1975, Public Law 94-131, § 9, 89 Stat. 691; Nov. 8, 1984, Public Law 98-622, § 104(b), 98 Stat. 3385; Nov. 29, 1999, Public Law 106-113, § 1000(a)(9), 113 Stat. 1501A-563 (S. 1948 § 4503(b)(1))) and other major reforms. (See, e.g., 1994 GATT Uruguay Round implementing legislation, Pub. L. No. 103-465; Pub. L. No. 106-113 (1999); Pub. L. No. 108-453 (2004); codified as various sections of 35 U.S.C.). For example, the “Patent Reform Act of 2005” (H.R. 2795, 109th Congress (June 8, 2005)) proposed addition of a new section, 35 U.S.C. § 123, which would have provided specific statutory authority for the new continuation rules. This provision was removed from the most recent versions, suggesting that Congress did not support such a limitation. (H.R. 2795, 109th Congress (September 1, 2005)). Thus, while the legislative history of 35 U.S.C. § 120 per se may not constrain the powers of the USPTO, there is a record showing that Congress chose not to grant to the USPTO the power to limit continuation practice.

This conclusion is supported by comparing the language of 35 U.S.C. § 120 with others in Title 35. There are many statutes that expressly grant extensive discretion to the director (e.g. 35 U.S.C. §§ 135, 303). By comparison, 35 U.S.C.§ 120 notably fails to provide the Director the discretion sought here, suggesting that Congress did not intend to provide such discretion.

Prior USPTO attempts to limit Continuation have been rejected by the courts for exceeding statutory authority

The USPTO has repeatedly tried to limit Continuations, but, with the exception of two recent cases which can be distinguished on their facts, these attempts have been rejected by the courts.

The case of In re Henriksen (399 F.2d 253) is relevant to the current Rules. The Patent Office Board of Appeals had upheld an Examiner’s rejection of Henriksen’s Continuation application, ruling that 35 U.S.C. § 120 limited Applicants to three Continuations. The CCPA rebuffed this attempt, stating:

We hold here that under [35 U.S.C. § 120], in view of its long-standing interpretation by the Patent Office and the patent bar, there is no statutory basis for fixing an arbitrary limit to the number of prior applications through which a chain of copendency may be traced to obtain the benefit of the filing date of the earliest of a chain of copending applications, provided Applicant meets all the other conditions of the statute.

In reaching its holding, the Court analyzed the language of the statute and the legislative history and found no explicit support for limiting the number of Continuations. Indeed, operating in the previous laws in which term was calculated as 17-year from issuance, it found that the legislature had considered but rejected attempts to even limit the term of the Continuation, and that Congress intended 35 U.S.C. § 120 only to codify prior practice.

In reviewing such prior practice, the CCPA found that the Board of Patent Appeals had previously rejected limitations on Continuation practice, (Id. at 259, citing Ex parte Harris, 55 USPQ 329 (Pat. Off. Bd. App. 1942)) that early patent treatises had recognized unlimited Continuation practice, (Id. at 260) and that Supreme Court case law recognized at least the right of Continuations and did not indicate any limitations. (Id. at 260, citing Godfrey v. Eames, 68 U.S. 317 (1863), Crown Cork & Seal Co. v. Gutmann Co., 304 U.S. 159 (1938), and General Talking Pictures Corp. v. Western Electric Co., 304 U.S. 175 (1938)). Finally, the Court noted that any such imitations on Continuations could deny Applicants substantive rights and that such changes should be decided by the Congress, not the Patent Office: (Id. at 262.)

The action of the board is akin to a retroactive rule change which may have the effect of divesting Applicants of valuable rights to which, but for the change in Patent Office position brought about by the board’s decision, they were entitled. Nothing appears in the Patent Office Rules of Practice or the Manual of Patent Examining Procedure which sanctions such a result.

Finally, we would express the postscript to this opinion, as did the dissenting opinion of the board, that it is unfortunate that a patent should be granted on an application depending upon another application filed over 20 years ago. However, as the opinion of the board dissenters states, 154 USPQ at 61:

* * * but the cure for this deplorable state of affairs rests with Congress, not with us. If a restriction is to be imposed, it must be based upon law, legislatively or judicially expressed.

It is our view, as the judiciary, that it is for the Congress to decide, with the usual opportunity for public hearing and debate, whether such a restriction as sought by the board is to be imposed.

Subsequent attempts by the USPTO to limit other substantial rights that flow to a Continuing application have also been rejected. In In re Hogan (559 F.2d 595 (CCPA 1977)) the CCPA affirmed the right of an Applicant to rely on the enablement of a prior-filed application, stating that the Board had, in making its rejection, “[disregarded]entirely the statutory right of appellants under 35 U.S.C. § 120,” (Id. at 603.) and noted that the very substantive statutory rights had been upheld in prior cases. (Id. at 603-604.). In In re Bauman (683 F.2d 405 (CCPA 1982).) the CCPA affirmed the right of an Applicant to rely on the filing date of an abandoned prior application, and that “[a]cceptance of the PTO’s position [that the Applicant was not entitled to the right] would require recognition of a nonstatutory exception to the clear language of section 120.” (Id. at 407.)

Next, in Transco, the Federal Circuit overturned a district court finding that a patent was invalid for failing to update the best mode in a Continuation application. (Transco, 38 F.3d 551.) In doing so, the court expounded upon the statutory and common law support for Continuation practice and its long recognition by the courts. The court further stated that Continuations were often forced upon Applicants for the administrative convenience of the USPTO and that limitations on Continuations would be an unfair burden on Applicants. (Id. at 557-558.)

Accordingly, the Federal Circuit and its predecessor court have long interpreted 35 U.S.C. § 120 as granting broad rights to file Continuations. Two more recent decisions have modified this view, but only have been applied in extreme situations.

In Symbol Technologies (277 F.2d 1361 (2002)) the Federal Circuit found that the dormant doctrine of prosecution laches was available to Symbol Technologies in its defense against an infringement suit brought by assignees of the famous submarine patentee, Jerome Lemmelson, who were seeking to enforce recently issued patents that had claimed priority to applications filed in 1954 and 1956. In doing so, the court was careful to note that the laches doctrine was supported by prior Supreme Court precedent and had not been invalidated by the enactment of 35 U.S.C. § 120. Even so, Judge Newman dissented, arguing that any limitations on Continuation practice should be decided by Congress and not the courts.

In In re Bogese (303 F.3d 1362 (Fed Cir 2002) the Federal Circuit applied the doctrine of prosecution history laches to bar the right to file a Continuation. In that case, the Applicant had filed an application in June 14, 1978, and had continuously filed File Wrapper Continuations (A total of eleven file wrapper Continuations were filed in eight years) rather that narrow his claims, despite two appeals to the Board and two to the Federal Circuit. At the final round of prosecution, the Examiner had warned the Applicant that failure to narrow the claims or otherwise advance prosecution would result in rejection of the application. The next Continuation was rejected accordingly. The Federal Circuit found that this action was not an abuse of discretion under the Administrative Procedures Act, 5 U.S.C. § 706. (Bogese 303 F.3d at 1366-1370.) In construing the prior law, the two judge majority court carefully distinguished Henriksen, noting in a footnote:

In this case the PTO did not adopt a mechanical rule based on a misconstruction of the statutory requirements. Nowhere does Henriksen suggest or imply that the PTO must allow dilatory tactics in the prosecution of applications or that the PTO lacks inherent power to prohibit unreasonable delay in prosecution. (Id. at 1368.)

While these recent cases suggest that some limitations may be placed on Continuations, both Symbol and Bogese involved extreme cases that clearly rose to the level of abuse. The Federal Circuit and it predecessor court have long recognized the statutory right of Applicants to Continuations, have rejected any attempts to limit those rights, have determined that such rights are necessary to avoid unfairness upon the Applicant, and have stated that any change must be sought through the legislature. On balance, therefore, the case law suggests that Continuation limitations are the extremely rare exception, to be decided on a case-by-case basis. That the courts have limited Continuations only in rare cases shows that present laws are sufficient to curb abuse of the system.

See Part 1 here.

See Part 3 here.

Today’s post comes from Guest Barista Simon Elliott, a patent agent at Foley & Lardner’s Washington D.C office, with a Ph.D. in Microbiology from the University of Western Australia and a J.D. from Georgetown University. His California Bar application is pending. Simon Elliott can be contacted directly at sjelliott@foley.com.

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  1. I thought Simon was an attorney.

  2. Is there another limit to the PTO’s ability to limit continuations (or at least to limit RCEs, which are also severely restricted in the new rules) in 35 USC 132(a)? (“Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined. No amendment shall introduce new matter into the disclosure of the invention.”)

  3. Jonnie: I have a JD, but am waiting for my bar results. The head barista is updating my attribution.

  4. […] See Part 2 here. […]