Proposed rule placing limits on continuation and continued examination practice - What does the coming application surge look like?

The patent community is still digesting the potential effects of the PTO proposed rule placing limitations on continuation and continued examination practice. The rule stands to have sweeping effects on patent practice, particularly in the industries that rely heavily on these aspects of patent prosecution.

One thing is clear - if the proposed rule is adopted, a surge in application filings is likely to occur just before the effective date as applicants seek to file claims and avoid the dreaded “justify your existence” petition for filing continuing applications. A small surge in filing of Requests for Continued Examinations might also be seen as ripe cases are accelerated to avoid tripping the petition requirement.

It is difficult, if not impossible, to predict the magnitude of the surge that might occur. These exercises can help you gain an appreciation for what might occur:

First, ask yourself what would happen if every single patent applicant was forced to review their pending application(s) for unclaimed subject matter.

Second, ask yourself what advice you will give to your clients that have pending patent applications as the effective date of the new rule approaches (assuming it is adopted, of course).

Third, ask yourself what subject matter is disclosed in, but not yet claimed by, every single patent application for which you are responsible.

As you consider these questions, remind yourself that the standard for the “justify your existence”" petition, as created by the proposed rule, is completely undefined and seemingly arbitrary.

Worrisome, to say the least.

Here’s another exercise that helps. The closest real-world example of an application surge is the GATT-induced surge in filings of June, 1995. I pulled some data from the PTO website to create the graph below, which shows the number of applications filed on June 7 of every year from 1990 to 2000. Note that the graph does not illustrate the complete surge because it only includes applications that matured into patents. I presume that many more applications were actually filed.

Over 10,000 applications were filed on June 7, 1995, nearly twenty times the average for June 7 of the other years between 1990 and 2000. The impact of this surge on industry, both in terms of workload and expense, was enormous. The impact of the coming surge, I believe, would rival or even best the GATT surge.