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Archived updates for Monday, October 11, 2004

Ending Abuse of Patent Continuations

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.

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Anonymous Anonymous said...

This sounds like typical drivel from academics with no real understanding of the realities of patent prosecution. Further, Lemley and Moore's comments give far too much credit to the efficiency and competency of the PTO. Other than that, their uninformed opinions do not deserve further comment from this practitioner.

October 12, 2004 9:36 AM  
Anonymous Anonymous said...

I checked the PTO roster of agents/attorneys on-line, and neither of these authors even possesses a registration number. Coincidence?

October 12, 2004 9:54 AM  
Anonymous Anonymous said...

Yet another academic that has plans to fix a "broken system." The system is not broken. It works as good as it did 100 years ago.

To me there is one and only one answer to the back-log of cases. A solution that would solve the back log of cases and avoid many of the delays the applicants currently see...

HIRE MORE EXAMINERS and support staff, and quit passing out the inventors money to all these public contractors.

Examiners do the work. A case will sit until there is an examiner to work on it. No amount of software, rule changes or anything else will change the fact that an examiner must look at the case. So hire more of them, that simple.

Some times bigger government is better than hiring a bunch of contractors that really don't understand the problem (similar to looking to academia for answers).

The patent office has been around since the 1700's. Very little has changed except the ratio of examiners to applications.

October 12, 2004 4:37 PM  
Anonymous Anonymous said...

Also on questionable commentary on continuations, note the text of a review of a paper by Quillen and Webster (from

By abolishing continuations, the PTO could reduce its
workload by 25 percent and use the extra resources
that it gains to increase its rigor. If a rigorous
system is undesirable, the authors argue, the present
grant rate of 97 percent may be appropriate, but in
this case, the PTO should admit that it issues a
patent "for virtually every original application.? In
that event, the authors ask, ?why maintain an
examination system at all??

[Problem is, the present grant rate is not 97%. Lemley and Moore relied on later work by Quillen and Webster in writing their "ending abuse" paper.]

November 06, 2004 1:37 PM  

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