In January 2006, the PTO proposed dramatic changes to patent continuation practice that would essentially allow only one continuation (or CIP or RCE) per application. [Link].
Although the PTO has justified these changes based on a need to reduce examiner workload, the real controversy with extended continuations is what I call “late claiming.”
There are many different ways to “claim” an invention in a patent application. Often, an applicant may pursue one aspect of the invention in the original application, and then file continuations to obtain coverage for other aspects. That practice is fine and legal, but can create business problems when the applicant waits until learning of a competitor product before adding claims that cover that new product.
Late claiming occurs when the applicant adds new claims to cover what has arisen in the marketplace since filing the original patent application.
According to the law, those new claims are generally legitimate so long as they are enabled by the original written description. However, the possibility of late claiming creates another potential down-the-road liability for product developers.
Is late claiming a problem?
Will the PTO rule change reduce late claiming?
