According to Mark Lemley and Kimberly A. Moore, one of the oddest things about the United States patent system is that it is impossible for the U.S. Patent and Trademark Office to ever finally reject - or grant - a patent application. The culprit is the "continuation" application, which has allowed abuse of the patent system by what have been called patent "trolls."
In their article entitled "Ending Abuse of Patent Continuations," they present the results of an empirical study on abuse of the patent continuation process, and argue that the current system must be abolished or at the very least radically reformed. They suggest five ways to restrict, the abuse of continuation practice in a world in which the continuation application must remain a reality:
- Limit each applicant to no more than one continuation application or CIP. . . . Allowing even one continuation application will give the applicant five or six bites at the apple. Surely that is enough.
- Permit applicants to file continuation applications, but not permit them to broaden the scope of their claims during the prosecution of those applications.
- Publishing all applications regardless of whether the applicant intends to file abroad in order to minimize the surprise associated with submarine patents.
- Create intervening or prior user rights for competitors who began making, using, or selling the patented invention prior to the broadening continuation.
- Limit the time an application can spend in prosecution to six years. The median amount of time patents spend in prosecution from their earliest filing date to issuance is 2.04 years; the mean is 2.47. Six years after a filing date, more than two standard deviations, only 3.66% of all patent applications are still pending.
Click here for a video recording of Professor Lemley's Spring 2004 lecture on this topic ant the Duke Law School Center for the Study of the Public Domain.