USPTO Publishes RFC on Continuation and Other Criticized Patent Practices

“The RFC asks how claims and continuation practice should be changed, if at all, including considerations such as requiring ‘applicants to describe what subject matter is new in continuing applications…to explain or identify subject matter that has been added, deleted, or changed in the disclosure of the application, as compared to the parent application(s)?'”

USPTOThe United States Patent and Trademark Office (USPTO) announced today that it is seeking comment from the public on “proposed initiatives directed at bolstering the robustness and reliability of patents to incentivize and protect new and nonobvious inventions while facilitating the broader dissemination of public knowledge to promote innovation and competition.”

During IPWatchdog’s LIVE event in Dallas, Texas, in September, USPTO Texas Regional Office Director Hope Shimabuku explained that issuing “robust and reliable patents”—which seems to have replaced the oft-maligned term, “patent quality,”—is a key focus for USPTO Director Kathi Vidal. The request for comment (RFC) tackles this problem from a number of angles, from fee-setting to terminal disclaimer and continuation practices, to improving prior art searches.

The RFC stems in part from a July letter sent by the USPTO to the Food and Drug Administration (FDA) outlining the USPTO’s planned initiatives to help combat perceived links between patents and drug pricing problems.

The letter identified a number of projects, including: 1) enhanced collaboration with agencies like the FDA, such as “initiatives to require patent applicants to provide relevant information to the USPTO that has been submitted to other agencies and to remind patent applicants of their disclosure obligations and the ramifications of failing to disclose required information at the USPTO”; 2) introducing more examination time into the examination system, providing examiners with more training and resources, enhancing communication between examiners and the PTAB, “applying greater scrutiny to continuation applications in large families and/or the use of declaratory evidence to overcome rejections,” exploring whether changes need to be made to minimize the effects of obviousness-type double patenting practices, and conducting a comparative analysis of examination and issuance of pharma and bio patents between the United States and other countries in order to identify ways to strengthen the U.S. system; and 3) considering ways to improve the PTAB process, such as additional scrutiny in cases involving continuation patents in large families when deciding whether to institute an America Invents Act (AIA) proceeding.

The RFC also asks for input on questions raised by Senators Leahy, Blumenthal, Klobuchar, Cornyn, Collins and Braun in a June 8, 2022, letter. That letter voiced concerns over the anti-competitive impacts of so-called “patent thickets,” especially in the drug industry, and urged Vidal to address issues of large numbers of patents granted to cover various aspects of a single pharmaceutical treatment, “primarily made up of continuation patents.” The senators gave Vidal until September 1, 2022, to issue a notice of proposed rulemaking or a request for comments, but the Office did not meet that deadline.

IPWatchdog regular contributor and Principal of Knowles IP Strategies, who headed the campaign to enjoin the USPTO from limiting continuation applications in 2007, has weighed in on many of the key issues raised by today’s RFC here and here.

The main questions posed with respect to initiatives outlined in the USPTO letter include:

1) What additional sources of prior art outside of the Patents End-to-End Search system should the Office be considering and how should the USPTO facilitate such submissions of prior art?;

2) How should claims and continuation practice be changed, if at all, including considerations such as:

    • requiring applicants “to explain or identify the corresponding support in the written description for each claim, or claim limitation, upon the original presentation of the claim(s), and/or upon any subsequent amendment to the claim(s) (including requiring a showing of express or inherent support in the written description for negative claim limitations)?” or
    • requiring “applicants to explain or identify the corresponding support for each claim, or claim limitation, in the written description of every  prior-filed application for which the benefit of an earlier filing date is sought…” or
    • requiring “applicants to describe what subject matter is new in continuing applications (e.g., continuation, continuation-in-part, and divisional applications) to explain or identify subject matter that has been added, deleted, or changed in the disclosure of the application, as compared to the parent application(s)?”;

3) Whether the USPTO should “implement internal process changes once the number of RCEs filed in an application reaches a certain threshold, such as transferring the application to a new examiner or increasing the scrutiny given in the examination of the application?; and

4) How the USPTO, if at all, should “limit or change restriction, divisional, rejoinder, and/or non-statutory double patenting practice.”

The RFC also asks for comment on six specific questions posed by the senators’ letter, which are explained in more detail here.

Written comments must be received on or before 90 days after October 4, when the RFC is scheduled to be published in the Federal Register.

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3 comments so far.

  • [Avatar for lnm]
    October 6, 2022 01:56 pm

    Oh no. They used the word “robust.”

  • [Avatar for Model 101]
    Model 101
    October 4, 2022 09:27 am

    This will turn into more cheese for Big Tech and Judicial rats!

    Don’t waste your time or money on a patent.

  • [Avatar for Pro Say]
    Pro Say
    October 3, 2022 08:43 pm

    1. “The request for comment (RFC) tackles this problem …”

    Stop it. Just stop it. There is no problem. None. The only folks who believe otherwise are those repugnant companies (and countries — here’s looking at you, Communist China) desiring free and unfettered access to the innovations of others … along with all those confused, hooked-on-donations, lobbyists-loving, lapdog congressional members.

    Director Vidal, please don’t drink this innovation-poisonous kool-aid.

    The fact is, the existing claims and continuation practice has served American (and indeed the World) well for a generation.

    Accordingly: Leave. Them. Alone.

    2. Thanks to the PTAB, CAFC, and SCOTUS, “reliable patents” is an oxymoron.

    3. “Patent thickets”

    Stop that, too. Again; the only actual thicket . . . is the innovation-killing, stop-all-competitors-at any-cost Big Tech thicket; who’s members have managed to bamboozle so many members of Congress.

    THAT’S the real thicket. The thicket that really matters.

    The thicket that Congress should be training their sights on.