The United States blog

Still clinging to first-to-invent

1. David J. French 09.03.06 / 2pm

   David French writes:

   I have not participated significantly in this “great debate” over continuation practice. But I am concerned, having recently filed two RCE’s in respect of a very important invention. Now I note that the Patent Office has finally seized upon a spin that will clearly serve to support their initiatives: “continuation abuse.”

   In Canada, and in other jurisdictions, an applicant is entitled to have several prosecution exchanges with an examiner. However, in the United States, around 1968 I believe, applicants were restricted to a single response were they could make amendments as of right. Thereafter, if they wanted to make further amendments, they had to refile their applications as continuations. This involved the penalty of going to the rear of the examination line. But it did not extinguish the applicant’s right to have multiple exchanges with the examiner.

   “Continuation abuse” might be found in this procedure in cases where an applicant repeated the cycle in order to extend the patent term. However, after 1994, when the 20 year patent term dating from Grant was implemented, this extension abuse ceased to exist.

   So where is the abuse today?

   Use of the phrase “continuation abuse” greatly serves the patent officeas interests as it implies that there are dangerous animals in the forest that have to be dealt with, sort of like the “War on Terrorism”. In the name of these threats, the office can go forward with vigorous initiatives, some of which may appear in a clearer light to be extraordinary.

   But will these initiatives simply achieve what is necessary to deal with abuses? Or will they go beyond that limit and, conveniently, achieve other objectives that the patent office is likely pursuing e.g. a statistical lower count of the number of applications that are pending for examination?

   Great expression: “Continuation abuse”! Whoever thought of it should get an inventor’s award.
2. J. Matthew Buchanan 09.05.06 / 11am

   David –
   Thanks for the great comment. You’ve nailed a big issue on the head, I think.
   The software (slash computer slash high-technology manufacturing) industry has done a wonderful lobbying job on the patent reform battlefield. At this stage in the game, I think it’s safe to say that pharma, biotech and other ’status quo’ minded groups have been taken by surprise and are probably guilty of underestimating the other side.
   This year, the software industry adopted the ‘patent troll’ concept and ran with it….a strategy that has paid off in droves for them. Now comes ‘continuation abuse.’ I’m betting that this term is the new ‘patent troll’ for the foreseeable future.
   I think a quick anecdote underscores my point (and yours). At the ABA’s IP section meeting in Boston this summer, David Westergard, who was recently appointed to the Patent Public Advisory Committee, spoke as a proponent of the proposed rule that would limit RCE and continuation practice. He offered ‘continuation abuse’ as a justification. After Mr. Westergard spoke, John Whelan, Solicitor and USPTO General Counsel for Intellectual Property, spoke…again as a proponent for the proposed rule. Mr. Whealan indicated that the proposed rule had nothing to do with addressing the application backlog and everything to do with addressing the evils of ‘continuation abuse.’
   I was in the audience at that meeting and remember leaving the room thinking about how savvy software has been with their agenda. The Westergard/Whealan remarks, I think, were a concerted effort to begin ‘educating’ patent stakeholders on the existence and evils of ‘continuation abuse’. Sadly, no one has really mounted a challenge to the purported problem.
   Thanks again for the great comment.

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