Court Tells USPTO It Can't Limit Continuation Patents

from the so-much-for-that-plan dept

Back in November, a court blocked the Patent Office from phasing in new rules that would limit continuations on patents. The practice, which has been widely abused by some patent holders to expand the scope of an existing patent to cover newer technologies, has been a problem for quite some time. So, in an effort to shore things up, the USPTO decided on its own to limit how many continuations a patent holder could file on a single patent. The block in November was temporary, while the court reviewed the overall question of whether these new limits were legal — and now the decision has been released saying that the USPTO has no right to make such changes. The decision actually does make sense. While excessive continuations can be a serious problem, the USPTO shouldn’t be allowed to run off and make its own rules. The blanket limitation on continuations was (yet again) an attempt to deal with a symptom rather than take on the root causes of problems in the patent system. So, while it may have helped in the short term, it wouldn’t have done much overall, and it’s better not to have the USPTO randomly making up its own rules.

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Comments on “Court Tells USPTO It Can't Limit Continuation Patents”

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MLS (profile) says:

Re: Bad news for AIPLA

The AIPLA is not against patent reform, per se. Neither is the ABA, the LES, and the myriad other professional organizations that deal with patent law matters. What they are against are patent reforms that do nothing to address real, versus imagined, problems, as well as reflect an unbalanced and partisan change to law that is not applied in an even handed manner to all concerned. What is on the table before Congress right now is nothing more than a few proposals pertaining almost exclusively to litigation and benefit mostly the interests of large corporations. The legislation does nothing of any significance to address what is/should be patentable, the standards to apply in determining patentability, etc.

Anonymous Coward says:

Mike is clueless again about patent issues...

“…widely abused by some patent holders to expand the scope of an existing patent to cover newer technologies”.

Mike, if you knew anything about patents, you would know that a claim is only as good as the support for it in the patent spec (text description of the patent). You can only “expand” a claim if the *originally-filed* spec specifically supported that expanded claim. The patent office specifically prevents you from claiming something that you didn’t *originally* describe when you filed the patent.

For example, if a patent was filed in 2000 that describes 4 things, but the inventor only claimed three of them (due to money issues, or that he thought the fourth thing wasn’t as revolutionary as the rest). But, it turns out that the fourth thing turned out to be a success – why can’t the inventor later add a claim for that four thing if he was truly the first to invent and fully described it in his *original* patent, even though he didn’t claim it originally?

So, how is it considered “abuse” if someone truly did think of an idea first and documented it, but just didn’t make a formal claim to it initially?

DanC says:

Re: Mike is clueless again about patent issues...

So, how is it considered “abuse” if someone truly did think of an idea first and documented it, but just didn’t make a formal claim to it initially?

First, nobody said continuations are always abusive. The problem is that some patents are written in excessively broad terms so that continuations can be filed later in an attempt to cover popular technologies.

For instance, the infamous “JPEG” patent is a continuation patent, where the USPTO rejected all the original 16 claims of the patent. However, the patent holder then added 92 additional claims in the hopes of covering something it could sue over. In this case, the continuation process was turned into a “throw it against the wall and see what sticks” method of patent abuse.

Anonymous Coward says:

“nobody said continuations are always abusive”

I never claimed that they were – but Mike loves to exaggerate things in his favor by finding any small/single example that supports his view, and then use it to support his claims of “widely” or “common” or “mostly” or “typically” or “often” (…you get the idea).

DanC says:

Re: Re:

then use it to support his claims of “widely” or “common” or “mostly” or “typically” or “often” (…you get the idea).

I get what you’re saying, yes, but I don’t think it really applies in this case. The USPTO attempted to change the rules for two reasons: First, to reduce the amount of backlogged work, and second, to increase the quality of patents. It recognized that allowing an unlimited number of continuations can often lead to a decrease in patent quality. And continuation abuse is hardly a small time problem.

Take, for instance, R.J. Riley’s favorite inventor, Jerome Lemelson. Lemelson is famous for the proliferation of what have become known as ‘submarine’ patents. He filed for a patent related to barcode scanning in 1956, which was then issued in 1963. He then proceeded to file additional claims from 1972 to 1993, with the USPTO issuing a patent on each continuance.

By then, obviously, barcode scanning was well established, and Lemelson proceeded to sue just about everyone, despite the fact that the original patent had since expired. By continually filing continuations, Lemelson was able to successfully game the patent system off a single patent over the course of 30+ years.

MLS (profile) says:

Re: Re: Re:

One of the points consistently raised by most of those opposed to the proposed rules was that they would do virtually nothing to address the backlog of pending applications. In fact, to some degree the backlog was increased as some practitioners filed new continuations in anticipation of the rules being enacted.

As for submarine patents, it was due in part to some of the excesses associated with continuation practice that the term of a patent was changed from the date of issue to the date of filing. Can submarines still surface? Yes, but the ability to rely on the original priority date is significantly restricted. Moreover, there is always the possiblility that an application long under order of secrecy can enter into the light of day.

Robert Syputa (user link) says:

Re: Re: Re:patent continuance

The ‘problem’ shouldn’t be handled in a piece meal fashion imo: to begin with, the PTO needs more and sustained funding and hiring of more examiners. Then some suggested reforms in facilities including larger search databases for academic and other research should be undertaken.

Then the process needs to be opened up for peer review. And recently clarified rulings such as on obviousness and combination of prior art should be taken into account to rigorously screen patents.
In other words, steps should be taken to reform the process so that the ‘bar is raised’ for granting patents to begin with.

But along with that, inventors should be given high degrees of freedom in submitting continuances.

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