USPTO MOVES TO CURB CONTINUATION PRACTICE AND FORCE APPLICANTS TO HELP STREAMLINE PATENT PROSECUTION: The USPTO recently announced a bold proposal to overhaul the patent examination process by sharply limiting an applicant's discretion to file continuations, and further requiring applicants to identify "representative claims" to the Office prior to examination. Each of these proposals will be discussed in more detail below.
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CONTINUATIONS
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(see USPTO notice here).

Proposed Rules:

(1) The revised rules would require that second or subsequent continuation or continuation-in-part applications and second or subsequent requests for continued examination of an application include a showing as to why the amendment, argument, or evidence presented could not have been previously submitted. If an applicant cannot show why such matter was not previously submitted, the USPTO will not allow the continuation to claim priority to the original application.

(2) When an applicant (or assignee) files multiple applications with the same effective filing date, a common inventor and overlapping disclosures, the Office will presume that the applications contain patentably indistinct claims. In such a situation, the applicant must either rebut this presumption by explaining to the satisfaction of the Director how the applications contain only patentably distinct claims, or submit the appropriate terminal disclaimers and explain to the satisfaction of the Director why two or more pending applications containing conflicting or patentably indistinct claims should be maintained.

Why is the USPTO Doing This?

There are two primary reasons. First, current continuation practice allows applicants to file unlimited continuations off of a single disclosure. As a result, the USPTO can never finally reject, or even allow, an application for patent. And when applicants file long strings of continuations from allowed applications, the effect of this is akin to the "submarine patents" of bygone days - defendants can feasibly be sued multiple times off of the same disclosure, and crafty applicants can tweak continuation claims to ensnare unsuspecting companies. Recent research conducted by legal scholars Mark Lemley and Kimberly Moore found that, while continuations are filed in 23% of all patent applications, patents based on continuation applications represent 52% of all litigated patents.

The second reason is that continuation applications unnecessarily eat up USPTO resources. The Office claims that 30% of examiner time is spent reviewing continuation applications. Furthermore, the Office issued over 289,000 first Office actions on the merits in fiscal year 2005. According to the Office, "had there been no continued examination filings, the Office could have issued an action for every new application received in 2005 and reduced the backlog by issuing actions in 35,000 older cases. Instead, the Office's backlog grew because of the large number of continued examination filings." While the USPTO appreciates the necessity of filing continuations to further prosecution, the Office has statistically concluded that the "marginal" benefits provided by second or subsequent continuations are outweighed by the burden placed on the USPTO.

The Office stressed that they are not attempting to set a per se limit on the number of continuing applications. Rather, the rule amendments simply require applicants to show that later-filed applications in a multiple-continuing chain are necessary to claim the invention and do not contain unnecessarily delayed evidence, arguments, or amendments.

"The Rub" - unfortunately, the notice provides no guidance on what type of "showing" is needed to file a second or subsequent continuation. Is it sufficient to take a reissue-type approach by simply claiming that the applicant claimed less than he/she had a right to claim in the original application? What if you claimed that "subsequent to the Notice of Allowance, it has come to applicant's attention that certain types of products may be infringing the disclosure contained in application 10/999,999, but not literally claimed. Accordingly, applicant is submitting new claims that would encompass the potentially infringing products." Would that be sufficient?

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CHANGES TO EXAMINATION PRACTICE
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(See USPTO notice here)

Proposed Rules:

(1) The Office will provide an initial patentability examination to the claims designated by the applicant as representative claims. The representative claims will be all of the independent claims and the dependent claims that are expressly designated by the applicant for initial examination. Thus, each independent claim and each dependent claim that is designated for initial examination will be treated as a representative claim for examination purposes. The examination of the dependent claims that are not designated for initial examination will be deferred until the application is otherwise in condition for allowance.

(2) If the number of representative claims is greater than ten, the Office will require the applicant to share the burden of examining the application by submitting an examination support document covering all of the representative claims. The examination support document must identify search reports or IDS documents, along with explanations regarding the utility and distinctness of the claimed subject matter in light of the prior art. Failure to provide a sufficient examination support document will delay examination of the application.

Why is the USPTO Doing This?

According to the USPTO, applications which contain a large number of claims continue to absorb an inordinate amount of patent examining resources, claiming they are "extremely difficult to properly process and examine." After reviewing the patent filings in 2005, the USPTO found that about 1.2 percent of all nonprovisional applications included more than ten independent claims. Accordingly, by limiting examination to 10 representative claims, the thinking was that efficient examination of every independent claim could be had in 98.8 percent of the applications filed since January 1, 2005, without any additional effort by the applicant.

"The Rub" - if they are filed without extra diligence, examination support documents can provide a sumptuous feast for opposing counsel during litigation. Without careful consideration of every word placed in the document, you could be filling the record with admissions and estoppel issues even before the first office action issues.

COMMENTS TO THE USPTO are invited.

For comments on continuation practice, e-mail : AB93Comments@uspto.gov

For comments on examination practice, e-mail: AB94Comments@uspto.gov