Controversy Around Attempted Changes By USPTO To Continuation Practice
In 2007, USPTO announced new regulations under 37 CFR (published August 21, 2007) that would significantly alter procedures regarding continuation application before the USPTO. Previously, USPTO rules allowed an inventor to file as many continuations as necessary to get desired breadth of claims. The procedure was criticized for creating uncertainty as to what is covered or could be covered by a given patent application. An inventor, for example, could have sought to get claims with limited scope approved early, and then continue to file continuations over many years seeking broader coverage. For example, inventor Jerome Lemelson filed a series of continuations over thirty years to get a very broad patent on bar code readers. This patent was issued in 1984, long after bar code readers had become an integral part of the U.S. economy. Jerome Lemelson was then able to collect over a billion dollars in license fees from large companies using bar code readers.
To minimize this alleged abuse of the patent system, the USPTO proposed several changes to the rules as to the number of continuations an applicant can file. The proposed changes were announced on January 3, 2006, and were published in final form on August 21, 2007, after various modifications were made pursuant to input received as public notice and comment (during which the public was invited to comment on the proposed rule changes). Many of the provisions in the new rules went into effect November 1, 2007; however, certain additional exemptions apply for continuation applications filed before the publication date of August 21, 2007, even after November 1, 2007.
The proposed rules would have limited an inventor to filing two continuation applications for each type of invention disclosed in an original patent application, unless the applicant can show "good cause" for filing additional continuations. Furthermore, applicants could file only one RCE for each "family" of applications (that is, the group of applications including original applications and each of the continuation applications claiming the benefit of priority of the original application) unless the USPTO granted the applicant permission upon showing "good cause."
The proposed changes were generally opposed by patent agents and attorneys, manufacturing companies, biotechnology companies, and independent inventors. There was concern that the rule changes failed to consider the difficulties commonly encountered in getting a patent, and that the changes would result in inventors failing to get the full range of patent protection to which they are entitled. The groups also maintained that the rule changes were not consistent with the current regulations on continuations.
The rule changes were generally favored by software companies, electronics companies and US government agencies for the reasons given above. Those that favored the rule changes felt that said changes were consistent with the laws governing continuation practice.
On August 22, 2007, inventor Dr. Triantafyllos Tafas sued the USPTO in the United States District Court of the Eastern District of Virginia on the ground that the rule changes were in violation of the U.S. patent law and therefore are invalid. On October 9, 2007, pharmaceutical company GlaxoSmithKline filed a similar suit seeking a preliminary injunction to prevent the enforcement of the new rules. The court consolidated the two cases and scheduled a hearing on GlaxoSmithKline's motion for October 31, one day before the rules were to go into effect. On October 31, the court granted a preliminary injunction which prohibits the USPTO from enforcing the patent rules on continuations and claims which were to come into effect the following day. On April 1, 2008, the injunction was made permanent, but in March 2009, it was overturned by Federal Circuit Court of Appeals.
In October 2009, USPTO withdrew proposed changes to continuation rules.
Read more about this topic: Continuing Patent Application
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