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Archived updates for Wednesday, October 19, 2005

What You Can Do to Help the USPTO

According to Sam Mamudi writing for Managing Intellectual Property on October 18, 2005, USPTO Commissioner Jon Dudas is calling on patent practitioners for "a reduction in the number of continuations, fewer claims for each application and a limit to the number of supporting references":

"Out of 375,000 applications we received last year, 100,000 were
[continuations]. When one-quarter of our work is rework, we look at that," said
Dudas, adding that "examiners are concerned about the quality of applications
coming through the door".

The fact that between 20,000 and 30,000 applications every year are second continuations makes the problem worse, said Dudas. As a result, he said, the Office is looking at whether there should be a limit to continuations.

Perhaps we could just start with eliminating restriction, election, and final action practices at the USPTO, before we dismantle the duty of disclosure. While the patent bar can no doubt do more to make claims easier to read, much less examine, I'm not sure that practioners have that much control over the volume of continuing applications and supporting references. Besides, isn't the examination process supposed to get just a little bit easier after the third round?
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Anonymous Anonymous said...

The underlying assumption here is that everybody in the USPTO does their job flawlessly, and thus the problem must be with the patent bar and their clients. However, the reality is quite different.

I regularly get office actions from examiners who clearly didn't bother reading the application, who clearly didn't bother reading the prior art, and who clearly don't understand patent law and their own job responsibilities. Gee, I wonder if that might be the cause of the excessive number of continuations?

If the USPTO wants to reduce the number of continuations, they need to fix their own organization first, and then start pointing fingers at the patent bar.

October 20, 2005 9:31 AM  
Anonymous Anonymous said...

I concur with the previous poster.

The quality of examination has plummeted over the last five to eight years, and because the USPTO does not appear to have any plan in place to train examiners, it's probably safe to assume that things will get worse before they get any better. I have several clients who rely on the filing of continuation applications in the hopes of getting the claims that they should have received in the parent application. And before you jump to the conclusion that I'm biased on behalf of my clients, I should point out that I just received a notice in one of my clients' applications -- the examiner had never cited a single relevant reference, nor advanced a valid rejection, and so I appealed to a panel of experienced examiners. The panel agreed with me, vacated ALL of the rejections, and sent the case back to the examiner for (hopefully) actual examination.

Many of the suggestions that I've heard for "fixing" the USPTO (such as eliminating multiple rounds of examination) would be great IF applicants could be confident that they'd get competent examination on the first round.

October 20, 2005 11:29 AM  

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