Court Stops Patent Office From Limiting Continuations

from the not-so-fast-there dept

The practice of filing for continuations, or modifications, on patent applications can make sense in some cases, but it's widely abused by people who file a broad, overly vague patent on a hot area, and then continually update it as they see where the market is heading. Then, by the time they finally get a patent it covers a lot of the actual innovation (usually done by others) after the patent was filed and which had little to do with the original patent. Earlier this year, the US Patent Office, recognizing this problem (years too late) decided to start limiting continuation filings and announced that the change would go into effect November 1st. Not surprisingly, supporters of stronger patent laws were aghast and filed a lawsuit to stop the changes from going into effect. A judge has now blocked the USPTO from implementing the new rules. This isn't a permanent block on the rules -- it's just an injunction while the court decides whether or not the rules make sense. Obviously, those who are fans of monopoly-based business models want to be able to continually modify patents, but the fact that it's been abused so often means that limits on such things makes a lot of sense -- so much sense it's almost surprising the Patent Office supported it. Now we'll see if they're ever allowed to actually implement those rules.


Reader Comments (rss)

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  1.  
    identicon
    Anonymous Coward, Nov 1st, 2007 @ 11:08am

    You don't know what you're talking about!

    Mike said "Then, by the time they finally get a patent it covers a lot of the actual innovation (usually done by others) after the patent was filed and which had little to do with the original patent."

    Mike, do you understand you can't just make up new claims unless your "original" spec supports that new claim? So, if support for a "new" claim is found in the original spec, how does that negate the inventor's right to a patent for that idea if there is no prior art before the date of his spec?

    Do you really believe that if an inventor describes something in his original spec, but just didn't initially apply for a claim to it, that he doesn't deserve credit for thinking of that idea first by later adding a claim to his original idea?

     

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  2.  
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    Killer_Tofu (profile), Nov 1st, 2007 @ 11:23am

    #1

    You are talking about the system is supposed to work. Not necessarily how it is working.
    Also, it is way easy to add modifications when your covered subject is super broad.
    Thats part of why are system is broken.

     

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  3.  
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    Killer_Tofu (profile), Nov 1st, 2007 @ 11:24am

    Doh

    Yah, meant *our* and not 'are'. Thought I would point it out before I give a grammar policemen an aneurysm.

     

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  4.  
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    Stuart Gray, Nov 1st, 2007 @ 12:01pm

    Of Course

    Of course its some Anonymous Coward that speaks in defense of an obviously broken system. The comment specifically pointed out that they are starting by using overly broad specs so that they can get patents on what others are doing.
    So are you a fucking idiot or an industry shill?

     

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  5.  
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    Anonymous Coward, Nov 1st, 2007 @ 12:01pm

    Re: #1

    You obviously never applied for a patent...if you did, you would know that if you tried to add a modification for something that was "broad" in the spec, the examiner will reject it unless the spec was actually detailed enough to support why the modification is warranted, and if it does, then it really was never as "broad" spec as you would like to complain about.

     

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  6.  
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    DMM, Nov 1st, 2007 @ 12:03pm

    Mike-You seem to do plenty of good research in other areas that you blog on, yet when it comes to matters relating to patent law, you have a knee-jerk reaction and suddenly forget that research is needed to see what is really going on.

    Might I suggest that you spend a little time researching the new rules the USPTO is attempting to institute and the arguments being presented by the plaintiffs who sued to stop them? For one thing, according to the USPTO's own statistics, the new rules will only eliminate about 2.7% of the applications filed in 2006. Therefore, the new rules wouldn't put much of a dent in the Examiners' backlog.

    Also, one of the big issues in the lawsuit is whether the USPTO overstepped its bounds as a regulatory agency and is grabbing more power than was originally granted by Congress. From your writings in other areas, I think you are someone who would care greatly about government trying to grow, just because it can get away with it.

    Yes, there are reforms that are desperately needed to the patent system here in the U.S., but many of those reforms need to come from Congress, or at least come out of powers granted by Congress to a regulatory body such as the USPTO.

     

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  7.  
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    Anonymous Coward, Nov 1st, 2007 @ 12:16pm

    Re: Of Course

    "The comment specifically pointed out that they are starting by using overly broad specs so that they can get patents on what others are doing."

    I guess you're the idiot if you couldn't see I was making the point that such practice (making new claims from board specs) doesn't typically happen - So, Mike is wrong to make a statement as if it "typically" happens.

    Even if a small percentage of granted patents seem to apply to this practice, it's a far reach to call the system "broken". No system will ever be 100% foolproof. A small percentage of patents will always find a way to beat the system. It's simply wrong to make major changes to the rules that will harm the majority of patents that play by the rules just because a small minority is not. The focus of reform should be to weed out these minority abusers *without* effecting the others.

     

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  8.  
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    Mike (profile), Nov 1st, 2007 @ 12:22pm

    Re:

    For one thing, according to the USPTO's own statistics, the new rules will only eliminate about 2.7% of the applications filed in 2006. Therefore, the new rules wouldn't put much of a dent in the Examiners' backlog.

    I didn't say anything about the backlog... I just said that continuation apps are widely abused. I'd say that 2.7% of the total number of apps is a HUGE number. So I stand by the statement that it's widely abused. Think of how many patent apps are being used this way.

    Also, one of the big issues in the lawsuit is whether the USPTO overstepped its bounds as a regulatory agency and is grabbing more power than was originally granted by Congress.

    Yes, that's an important point, but not nearly as interesting as the continuation issue -- which was the point I was focusing on here. I'm sorry I didn't cover the issue you wanted covered, but it wasn't as interesting to me.

     

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  9.  
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    Matthew, Nov 1st, 2007 @ 12:34pm

    Slightly confused

    the US Patent Office, recognizing this problem (years too late) decided to start limiting continuation filings ... Not surprisingly, supporters of stronger patent laws were aghast and filed a lawsuit to stop the changes from going into effect.

    If the USPTO is trying to improve the system somewhat, then why would supporters of stronger patent laws NOT be on board with that?

     

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  10.  
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    Thomason, Nov 1st, 2007 @ 12:47pm

    Hard on the individual.

    My objection to the new rules was the impact, esp. in increased legal fees, that would be visited upon small, independent or individual inventors. If the big opponents of the rules were complaining of the increased costs multiplied by the scores of applications that they have pending, then that financial increase is no easier for those with one application.
    While I find Mike's remarks, about using continuations to add innovations by others after your original filing date, to be an exaggeration, it is odd to me that years ago, patent examiners would require the applicant to cite the page and line in the original written description where it described a later-claimed invention. Now, I never see that being required. The effect of that practice being loosened is to enable applicants to claim more perhaps than they've disclosed in their original application.
    Even so, the new rules were a paperwork blizzard and bureaucratic assault, which would not serve to improve the patenting system. The moneyed clients would find ways to meet the rules, and the small inventors would find it harder to patent their inventions.

     

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  11.  
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    Anonymous Coward, Nov 1st, 2007 @ 2:05pm

    One Story = Widely?

    Hey Mike,

    Again with your exaaaaaaaaaaaaaaaaaaaaaggerations!

    Your reference link for the term "Widely Abused" points to another one of YOUR articles and it's about JUST ONE inventor %|

    How can you title something as "widely", when you only offer one example???

    I almost feel sad for you that you have to constantly twist the facts to suit your warp reality :(

     

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  12.  

    Patent Office Should Know Their Business

    Shouldn't the Patent Office itself know what and where the problems exist? Is the Director a pawn for Big Businesses or really interested in making the procedure fair for everybody? Who is the most qualified to reform the Patent Office and make the necessary changes if needed at all?

     

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  13.  
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    Willton, Nov 1st, 2007 @ 3:47pm

    Re: Patent Office Should Know Their Business

    It's not about who is most qualified, but who has the power to implement those "necessary changes." An administrative body like the PTO only has the power that Congress grants it, and if the PTO oversteps the boundaries imposed by Congress, then its conduct is an actionable abuse of power.

     

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  14.  
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    Willton, Nov 1st, 2007 @ 3:51pm

    Re: Re:

    Yes, [the power grab is] an important point, but not nearly as interesting as the continuation issue -- which was the point I was focusing on here. I'm sorry I didn't cover the issue you wanted covered, but it wasn't as interesting to me.

    Well you should mention it, as it's the reason for the injunction.

     

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  15.  
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    Lawrence D'Oliveiro, Nov 1st, 2007 @ 6:42pm

    Re:

    A classic example of this was Jerome Lemelson, the original patent troll. He had patent applications going for decades, as he filed continuation after continuation, to keep up with technological developments, exactly as Mike describes.

     

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  16.  
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    Anonymous Coward, Nov 1st, 2007 @ 10:39pm

    Re: Slightly confused

    If the USPTO is trying to improve the system somewhat, then why would supporters of stronger patent laws NOT be on board with that?
    Maybe because "improvement" and "stronger patent laws" are opposites and they know it.

     

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  17.  
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    Rick Gellert, May 9th, 2008 @ 12:23am

    Reform

    I am not sure why you are anonymous, anonymous Coward. Because I am a lifelong independent inventor, I am completely in favor of radically tightening patenting rules. We need a patent system that encourages and protects true innovation. We need a patent system that does not encourage litigation and all its abuses. It is laughable in a sad way to see enormous corporations like Microsoft using its influence to its own advantage.

    Just who is this judge that made that ruling preventing the US PTO from implementing badly needed rule changes? Which court and case number is it? I might look into it and perhaps file an Amicus Brief (legal term for friend of the court)...Anyone with an interest in the case can write the court.

     

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