Fixing continuing application practice at the USPTO.

• Author: Rizzuto, Kevin
• Position: United States' Patent and Trademark Office

INTRODUCTION I. CONTINUING PATENT APPLICATION PRACTICE A. Continuing Patent Applications B. Differing Views of Continuing Application Practice 1. Lemley and Moore's View of Continuing Application Practice a. Five Alleged Problems Caused by Continuing Applications (1) Delay and Uncertainty (2) Wearing Down the Examiner (3) Changing Claims (4) Submarine Patents (5) Evergreening b. Summary 2. Patent Practitioners' Views of Continuing Application Practice 3. The USPTO's View of Continuing Application Practice C. Summarizing Problems with Continuing Applications II. AN EMPIRICAL INVESTIGATION OF CONTINUING APPLICATIONS A. USPTO's Proposed Continuing Application Rules B. Research and Analysis of Patent Application Continuing Application Use 1. Research Techniques 2. Public PAIR Research Results a. Data Set in General b. Continuing Application Use in the Data Set c. Categorization of Data Set in View of Proposed Rules 3. Analysis of Data Set a. Desirability of Potential Applicant Responses (1) Scenario One (Two or Fewer Continuations and One or No RCE) (2) Scenario Two (More than Two Continuations and More than One RCE) i. Scenario Two in General ii. Specific Examples of Scenario Two (3) Scenario Three (Two or Fewer Continuations and More than One RCE) i. Scenario Three in General ii. Specific Examples of Scenario Three (4) Scenario Four (More Than Two Continuations and One or No RCE) i. Scenario Four in General ii. Specific Examples of Scenario Four b. Applications Correctly Targeted? c. Applications Correctly Not Targeted? III. IMPROVED CONTINUING APPLICATION RULES A. Categories of Continuing Applications to Prevent B. Improved Continuing Application Rules 1. Preventing Long-Pending Continuing Applications a. Limit Time for Filing Continuation and Divisional Applications b. Require RCEs to Further Prosecution c. Presumption of Prosecution Laches if Application Pends Too Long 2. Limiting Non-Divisional Continuation Applications CONCLUSION INTRODUCTION

Academia is wrong. Patent practitioners are wrong. The United States Patent & Trademark Office is wrong. Everyone is wrong when it comes to continuing patent application practice before the United States Patent and Trademark Office.

Leading intellectual property law professors Mark Lemley and Kimberly Moore have suggested that an ideal patent world would have very few continuing applications. (1) Patent practitioners represented by the American Intellectual Property Law Association (AIPLA), on the other hand, would prefer no limit to the number of continuing applications they may file. (2)

The position of the United States Patent & Trademark Office (USPTO) is somewhere between the two extremes. The USPTO contends continuing applications are increasing the backlog of pending applications. (3) In response, the USPTO published new rules (Proposed Rules) limiting, but not eliminating, continuing applications. (4) On the eve of the implementation of the new rules, the District Court for the Eastern District of Virginia issued a preliminary injunction preventing the USPTO from enforcing the rules. (5) The court made the injunction permanent on April 1, 2008. (6) The USPTO appealed the ruling and, in April 2009, the Federal Circuit reversed in part, vacated in part, and remanded the case back to the Eastern District of Virginia, which has not yet issued a ruling. (7)

While the ability of applicants to file unlimited continuing applications is not desirable, Lemley and Moore's suggested solutions and the USPTO's Proposed Rules are too restrictive, ignoring realities of patent prosecution. In Part I of this Comment, I will explain what a continuing application is and the differing views of continuing application practice. In Part II, I will apply the USPTO's Proposed Rules to a sample group of patent applications and analyze the effects. Finally, in Part III, I will propose a solution that balances concerns of patent applicants, the USPTO, and the general public.

1. CONTINUING PATENT APPLICATION PRACTICE

   1. Continuing Patent Applications

      A continuing patent application is a type of patent application that claims priority back to an earlier filed patent application (a "parent" application) (8) and stems from the same general invention disclosure. (9) Currently, the USPTO places no limit on the number of continuing applications timely filed by an inventor. (10) Continuing applications come in four forms: (1) a continuation application, (2) a continuation-in-part application, (3) a divisional application, and (4) a Request for Continued Examination (RCE). (11)

      Continuation applications contain different claim scope (12) than their parent applications but may claim only that which was disclosed in the parent application. (13) Continuation-in-part applications similarly refer back to the parent application but disclose additional material that does not gain the benefit of the parent's priority date. (14) An inventor may file an unlimited number of continuation and continuation-in-part applications as long as a parent application remains pending. (15) For the remainder of this Comment, however, both continuation and continuation-in-part applications will simply be referred to as continuation applications, unless specifically stated otherwise.

      Appropriate filing periods for divisional applications and RCEs are more closely tied to the USPTO's substantive examination of the parent application. Divisional applications are filed to pursue different inventions disclosed within a parent application and are the byproduct of a restriction requirement issued by an examiner. (16) After an application is filed with the USPTO, a patent examiner will determine whether the application meets the patentability requirements of 35 U.S.C. [section][section] 101, 102, 103, and 112. (17) In addition, the examiner may determine that the application has claims for more than a single invention and issue a restriction requirement. (18) After a restriction requirement, the applicant must elect one claimed invention to pursue in the application; the applicant may use divisional applications to pursue the non-elected claims, which receive the same priority filing date of the parent application. (19)

      An applicant will file an RCE with the USPTO to gain further consideration of a patent application after prosecution of the application is closed. (20) Prosecution of an application is closed after an examiner issues a final rejection, an examiner issues a notice of allowance, or the applicant files an appeal. (21) Unlike the filing of a divisional or continuation application, an RCE filing does not create a second, co-pending application.

      Closed prosecution and the appropriate time for filing an RCE can be better understood after a further explanation of patent prosecution. After the initial application filing, if any claim fails to meet a patentability requirement (for example, novelty or non-obviousness), the examiner will issue a first non-final rejection to the applicant explaining the claim's shortcomings. (22) Applicants have up to six months to respond to the non-final rejection before the application will be abandoned. (23) In a response, the applicant can argue against the rejection, make claim amendments, or give supporting evidence to demonstrate the invention's patentability. (24) Thereafter, the patent examiner will generally issue a final rejection, a notice of allowance, or a second non-final rejection, which acts essentially the same as the first non-final rejection. (25)

      A final rejection or notice of allowance will "close" prosecution. (26) A timely filed RCE, however, will re-open prosecution for applications under final rejection and under a notice of allowance. (27) Thereafter, the prosecution cycle restarts--that is, if the examiner issues another rejection, it will be a non-final rejection in most instances. (28)

      After an examiner issues a final rejection, an application is on course to become abandoned. (29) An applicant has four options for proceeding with the application: "(1) appeal to the Board of Patent Appeals and Interferences ...; (2) file a 'request for continued examination' ... of the application; (3) file a 'continuation' or 'continuation-in-part' application; or (4) file an after final 'amendment.'" (30) An RCE allows the applicant to amend claims, argue rejections, and present new evidence. (31) Thus, in theory, an applicant can extend prosecution of a single application indefinitely by continuously filing RCEs each time an examiner issues a final rejection.

      After an examiner issues a notice of allowance, the application is on course to become a granted patent upon paying the issue fee. (32) However, the applicant may desire to file an RCE to enter in newly discovered evidence that is material to patentability. (33) The examiner can then review the references to ensure a patent is not granted with invalid claims. (34)

   2. Differing Views of Continuing Application Practice

      Lemley and Moore, patent practitioners (represented by AIPLA), and the USPTO all have differing views on continuing applications. Each position will be reviewed in turn, and I will use general principles to assist in distinguishing problematic from beneficial continuing applications.

      1. Lemley and Moore's View of Continuing Application Practice

         Lemley and Moore published a seminal work about continuing applications titled, "Ending Abuse of Patent Continuations," (35) which has been widely referenced in the continuing application debate. (36) Lemley and Moore discuss continuing application practice before the USPTO, the issues continuing applications can present, and the possible solutions to the presented issues. Lemley and Moore argue that continuation applications have consequences that fall into five categories: (1) "delay and uncertainty," (2) "wearing down the examiner," (3) "changing claims," (4) "submarine patents," and (5) "evergreening." (37)

         a. Five Alleged Problems Caused by Continuing...