Patent Law

IP academics and IP practitioners: two worlds?

By Lawrence B. Ebert, Esq.

The conference seems to be more directed to academics than to "academic minded individuals." In any event, LBE made a proposal:

In a recent article ?Are Patent Problems Stifling U.S. Innovation??, BusinessWeek brings up the patent application backlog issue and further suggests that the presence of a patent quality problem
[see http://www.businessweek.com/innovate/content/apr2009/id2009048_138177.htm ].
Various commentators, including Lemley/Moore and Quillen/Webster have suggested that continuation applications have contributed significantly both to the backlog and quality problems. In seeking modification of the rules on continuation practice, the USPTO relied upon arguments made in the Lemley/Moore paper, Ending Abuse of Patent Continuations [Boston University Law Review, Vol. 84, p. 63, 2004 ]. The present paper finds that the dominance of ?request for continued examination? form of continuing application undermines arguments and conclusions made in the 2004 paper, and that the rules proposed by the USPTO would have had negligible impact on the backlog problem. Further, the formulation of the patent quality problem in terms of an adjusted grant rate based on continuation applications contains flaws which place its viability in question. Although recent judicial decisions have altered the patent litigation landscape, the most pressing problem in the patent system remains one of inadequate resources to examine patent applications promptly and thoroughly. Add-on inspection steps, such as the proposed post-grant review [?opposition?] should not be considered in the absence of resolution of the basic problem.

Full post as published by IPBiz on April 11, 2009 (boomark / email).