Two prominent law professors have called for major reforms in the practice of filing continuation patent applications. In a recent paper, Professors Mark Lemley and Kimberly Moore outlined their view that continuation applications “have led to abuse of the patent prosecution process.” According to Lemley and Moore, “they serve very little useful purpose, and what benefits they confer may be outweighed by their potential for mischief. The world would probably be a better place if continuation applications were abolished.”
Specifically, the professors propose to limit each application to only one continuation application. “Allowing even one continuation application will give the applicant five or six bites at the apple. Surely that is enough.” In addition, the professors would create “intervening rights” for competitors who begin making a patented invention prior to a broadening continuation.
Article: Ending Abuse of Patent Continuations, 84 B. U. L. Rev. 63 (2004).
IP-Updates provides more details.
Comment: Lemley and Moore are formally correct that an applicant always has an opportunity to keep an application alive by filing a continuation. However, as each day passes, the eventual resulting patent becomes less and less valuable because the patent term will be calculated from the filing date of the original parent application. At the limit, a continuation that issues 20 or more years after the original parent was filed is completely unenforceable. Thus, there is a practical 20-year limit on the filing of continuations.
Yet another academic that has plans to fix a “broken system.” The system is not broken. It works as well as it did 100 years ago. That is why the American economy has remained strong.
To me there is one and only one answer to the back-log of cases. A solution that would avoid many of the delays the applicants currently see…
HIRE MORE EXAMINERS and support staff, and quit passing out the inventor’s money to all these public contractors. They spend money like a broken sieve.
Examiners do the work. A case will sit until there is an examiner to work on it. No amount of software, rule changes or anything else will change the fact that an person must review the case. So hire more of them, that simple.
Sometimes a bigger government is better than hiring a bunch of contractors that really don’t understand the problem (similar to looking to academia for answers).
The patent office has been spending a majority of its budget on a pretty web page and software tools don’t work as well as most open source projects.
The patent office has been around since the 1700’s. Very little has changed except the ratio of examiners to applications.
Not only that… but continuation applications are one way that the Patent Office can make more in fees with little additional effort on the part of the PTO. This money can translate into more examiners, and more training for current examiners, both of which most people agree are necessary for a stronger patent system.
Also, while I think I see the point that contination practice can lead to “mischief,” I think it is a little strong to say “The world would probably be a better place if continuation applications were abolished.”
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