Placing limits on continuation practice - does the Patent Act of 2005 imply a current absence of authority?

The Patent and Trademark Office’s proposed rule that would place limits on RCE and continuation practice has certainly sent shockwaves throughout the patent community.  As we await the Office’s response to the comments on the proposed rule, a serious question about the authority to implement such a rule remains.

…does the addition of specific authority to limit continuation applications in the Patent Act of 2005 imply the absence of such authority under current law?There is no question, though, that the Office sees RCE and continuation practice as significant contributing factors to the current backlog of applications.  The Office has been trying to secure appropriate statutory authority to place limits on continuation practice for some time.  Consider Section 8 of the Patent Act of 2005, which would allow the Director to limit the circumstances under which an application is entitled to the benefit of an earlier filing date under 35 U.S.C. section 120, so long as resulting regulations don’t “…deny applicants an adequate opportunity to obtain claims for any invention disclosed in an application for patent.” (emphasis added)

Here’s an interesting thought - does the specific granting of this authority to the Director in the Patent Act of 2005, which is the most significant legislative attempt at comprehensive patent reform to date, imply that the current law does not include such a grant of authority?

E-mail me any comments or questions you have.

For convenience, 35 U.S.C. section 120 and Section 8 of the Patent Act of 2005 are each reproduced below:

35 U.S.C. Sec. 120. Benefit of earlier filing date in the United States
An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this section.

The Patent Act of 2005 (109 H.R. 2795) - SEC. 8. CONTINUATION APPLICATIONS
(a) In General- Chapter 11 is amended by adding at the end the following:
`Sec. 123. Limitations on continuation applications
`The Director may by regulation limit the circumstances under which an application for patent, other than a divisional application that meets the requirements for filing under section 121, may be entitled to the benefit under section 120 of the filing date of a prior-filed application. No such regulation may deny applicants an adequate opportunity to obtain claims for any invention disclosed in an application for patent.’.