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Archived updates for Wednesday, June 08, 2005

Restriction Practice Reform Must Address Disposal "Churning"

According to Professor Hall Wegner, a major reason for long patent application pendencies in certain areas at the U.S. Patent and Trademark Office is the high rate of "churning" by examiners:
Patent Examiners are forced to gain multiple disposals per invention by
coerced refilings of applications through, inter alia), (a) complex formalities
rejections taking many pages which are impossible to clear up without at least
one refilling; (b) forced narrowing of generic claims on pain of forcing an
appeal (thereby compelling patentees to file a "Vogel trailer" continuation to
gain true generic protection); and (c) otherwise unnecessary, disposal-based
restriction requirements. Until the PTO keys production requirements for
Examiners to actual net disposals of initial applications without the
gamesmanship of the refilings, there will be no significant decrease in the
horrific rate of churning patent applications. The proposed reform
of restriction practice is particularly meaningless in the absence reform of the
disposals system.
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