Legal Issues

by Mike Masnick


Filed Under:
continuations, patents, rules, uspto

Companies:
glaxosmithkline



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

Subscribe: RSS

View by: Time | Thread


  1. identicon
    Thomason, 1 Nov 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.

Add Your Comment

Have a Techdirt Account? Sign in now. Want one? Register here
Get Techdirt’s Daily Email
Use markdown for basic formatting. HTML is no longer supported.
  Save me a cookie
Follow Techdirt
Techdirt Gear
Shop Now: Techdirt Logo Gear
Advertisement
Report this ad  |  Hide Techdirt ads
Essential Reading
Techdirt Deals
Report this ad  |  Hide Techdirt ads
Techdirt Insider Chat
Advertisement
Report this ad  |  Hide Techdirt ads
Recent Stories

Close

Email This

This feature is only available to registered users. Register or sign in to use it.