Intellectual Property Law

As has been well documented, the backlog of pending patent applications at the USPTO is increasing. In some areas of technology patent Applicants have received estimates that it will take over 6 years for the USPTO to issue a first office action for pending patent application.

On January 3, 2006, in an attempt to reduce the growing backlog of cases, the USPTO proposed a number of rule changes to limit the number of continuing patent applications (continuations, continuations-in-part, and requests for continued examinations) which can be filed in connection with a patent application. These rule changes are available from the USPTO website. Additional rule changes directed, in part, to limiting the number of claims examined in a patent application were also proposed.

The discussion provided by the USPTO, in connection with the proposed rules changes for limiting the number of continuing applications, states that approximately 1/3 (one third) of the ?new? applications filed with the USPTO in 2005 were continuing patent applications. The discussion goes on to suggest that the USPTO?s ?backlog [of pending applications] grew because of the large number of continued examination filings? 71 FR page 50 (available at the above link to the PTO website).

In order to reduce the number of continuing application filings, the USPTO proposes limiting the number of such applications as a matter of right to a single continued application filing. If an Applicant wants to file a second continuing application, then the Applicant would have to file a petition with a showing to the ?satisfaction of the Director? that the argument or amendment in the continuing application could not have been presented earlier.

In support of the proposed rule changes, the USPTO refers to In re Bogese, 303 F.3d 1362 (Fed. Cir. 2002) as showing that the Director has the inherent authority to limit the number of continuing type applications filed, where the applicant is not making a good faith effort to advance the prosecution of a patent application. In re Bogese appears to be a truly extreme case of using continuing applications to merely delay the prosecution of a patent application. For example, over a six year span during the pendency of the application in In re Bogese, the Applicant filed eight continuing applications consecutively without making any changes to the underlying claims.

A number of questions are raised by the proposed rule changes limiting the number of continuation applications. In the past when an Applicant was faced with a final rejection, and the Applicant did not want to abandon the application, the Applicant could: (1) file a request for continued examination; (2) file a continuation application; or (3) appeal the rejection to the Board of Patent Appeals and Interferences. The USPTO clearly intends that the proposed rule changes will dramatically reduce the number of continuing applications (options 1 and 2 above). Many patent Applicants will likely find themselves confronted with a choice between either abandoning the patent application, or appealing the final rejection to the Board. Thus, it appears possible that the proposed rule changes might reduce some of the backlog of patent applications pending with Examiners at the USPTO, but the open question is whether Applicants will abandon the finally rejected patent applications, or appeal these finally rejected cases, and thereby create a large backlog in the number of appealed cases pending before Board of Patent Appeals and Interferences.

Today's Blogger:  Brian Keating