Controversy surrounds continuing application practice at the United States Patent & Trademark Office. Legal scholars highlight problems with continuing application practice and ways that applicants abuse the system. Patent practitioners admit that continuing application abuses exist, yet believe that establishing limits on continuing application practice would lead to an increase in appeals to the Board of Patent Appeals and Interferences. The USPTO attributes much of its continually growing backlog to the volume of continuing applications and requests for continued examinations, and published Proposed Rules to limit continuing applications. Legal scholars and the USPTO propose solutions that are too restrictive on the system of patent prosecution. Patent practitioners, in contrast, recommend a stay the course approach that allows continuing application abuses to exist. The author applies the USPTO's Proposed Rules to a sample set of patent applications and empirically analyzes the results. From the analysis, guiding principles emerge for crafting new continuing application rules, termed Improved Rules. These Improved Rules prevent long-pending continuing applications and limit the number of non-divisional continuation applications allowed. The author proposes that the Improved Rules successfully balance the concerns of patent applicants, the USPTO, and the public.
Fixing Continuing Application Practice at the USPTO,
13 Marq. Intellectual Property L. Rev. 411
Available at: https://scholarship.law.marquette.edu/iplr/vol13/iss2/7