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Law Review on continuation application issue

By Lawrence B. Ebert, Esq.

An article by Hedwig Murphy titled CURRENT ISSUES IN PUBLIC POLICY: LIMITING CONTINUATIONS: A PHARMACEUTICAL BASED PERSPECTIVE [6 Rutgers J.L. & Pub. Pol'y 856 ] contains the text:

Accordingly, the statistics provided by the Patent Office "show a steadily growing inventory of unexamined patent applications that currently exceeds 900,000." n28 "[E]ach continued examination filing, whether a continuing application or request for continued examination, requires the [Patent Office] to delay taking up a new application and thus contributes [*862] to the backlog of unexamined applications before the Office." n29 The Patent Office "claims that the various types of continuing applications make up about one-third of all applications filed, and the number of such applications has been increasing." n30 It is suggested that the elimination of these continuations would increase the efficiency of the Patent Office, since some studies have suggested grant rates as high as 97% and, more reasonably, at least 85% due to continuing applications. n31 A case study examining the numerically calculated grant rate suggests that the rate is closer to 75%. n32 The average wait time "between filing a new application and receiving a first Office Action . . . ranges from eight months . . . to 130 months" depending on the technology area. n33 Therefore, according to the Patent Office, continuation applications produce the backlog of patents at the Patent Office.

As the Patent Reform Act of 2007 attempts to change an inventor's unlimited use of continuation applications, the justification for this drastic change lies in the Patent Office's hope "that the proposed change will 'improve the quality of issued patents, making them easier to evaluate, enforce, and litigate' and give 'the public a clearer understanding of what is patented.'" n34 Advocates for limitation of continuation state that unlimited continuation application ultimately abuses the patent system. It has been stated that applicants abuse the system by filing divisional patent applications which incorporate new or revised claims to obtain multiple patents that all cover [*863] essentially the same invention. n35 In the case of MedImmune, Inc. v. Genentech, Inc., the question of "evergreening" patents was presented as both abusing and compromising the integrity of the patent system. n36 Evergreening allows inventors to file endless continuation applications, issuing patent after patent based upon on a single original patent filing.

The process of continuing and patenting and continuing and patenting can continue until the 20-year patent term is finally exhausted. The entire 20-year patent term can be consumed before the public has a full and final understanding of what can be patented based upon that single, original patent filing. This is not how the patent system was ever intended to work. n37

It has been stated that "continuation clearly does not meet . . . the goal of shortening the time between filing a patent application and receiving a patent." n38

Endnote 10: Continuation, continuation-part, and divisional applications are commonly referred to as continuing applications.

Endnote 35: Mark A. Lemley & Kimberly A. Moore, Ending Abuse of Patent Continuations, 84 B.U. L. Rev. 63, 101 (2004).

Endnote 40: Stephen T. Schreiner & Patrick A. Doody, Patent Continuation Applications: How the PTO's Proposed New Rules Undermine an Important Part of the U.S. Patent System with Hundreds of Years of History, 88 J. PAT. & TRADEMARK OFF. SOC'Y 556, 564 (2006).

Full post as published by IPBiz on July 27, 2009 (boomark / email).