Editing Continuing patent application (section)

==Controversy around attempted changes by USPTO to continuation practice==
In 2007, USPTO announced new regulations under 37 CFR (published August 21, 2007) that would significantly alter procedures regarding continuation applications before the [[United States Patent and Trademark Office|USPTO]]. Previously, USPTO rules allowed an inventor to file as many continuations as necessary to get desired breadth of claims. The procedure was criticized for creating uncertainty as to what is covered or could be covered by a given patent application. An inventor, for example, could have sought to get claims with limited scope approved early, and then continue to file continuations over many years seeking broader coverage. For example, inventor [[Jerome H. Lemelson]] filed a series of continuations over thirty years to get a very broad patent on [[bar code]] readers. This patent was issued in 1984, long after bar code readers had become an integral part of the U.S. economy. Lemelson was then able to collect over a billion dollars in license fees from large companies using bar code readers.  (Note however that the Lemelson optical recognition patents followed a since-replaced rule under which patents would expire 17 years after the patent was granted, regardless of when the patent application was filed. For patents filed on or after June 8, 1995, under the [[TRIPS agreement]], continuation patents expire 20 years from the date of filing of the parent patent application, regardless of when the patent is granted. Thus, Lemelson's "submarine patents" strategy of taking steps that would delay the patent grant date will no longer extend the patent expiration date.)

To minimize this alleged abuse of the patent system, the USPTO proposed several changes to the rules as to the number of continuations an applicant can file. The proposed changes were announced on January 3, 2006, and were published in final form on August 21, 2007, after various modifications were made pursuant to input received as public [[Notice of proposed rulemaking|notice and comment]] (during which the public was invited to comment on the proposed rule changes<ref>USPTO web site, [http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/continuation_comments.html ''Comments on Proposed Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims, Notice of proposed rulemaking''] {{Webarchive|url=https://web.archive.org/web/20061205193854/http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/continuation_comments.html |date=2006-12-05 }}</ref>). Many of the provisions in the new rules went into effect November 1, 2007; however, certain additional exemptions apply for continuation applications filed before the publication date of August 21, 2007, even after November 1, 2007.

The proposed rules would have limited an inventor to filing two continuation applications for each type of invention disclosed in an original patent application, unless the applicant can show "good cause" for filing additional continuations. Furthermore, applicants could file only one RCE for each "family" of applications (that is, the group of applications including original applications and each of the continuation applications claiming the benefit of priority of the original application) unless the USPTO granted the applicant permission upon showing "good cause".<ref>USPTO web site, [http://www.uspto.gov/web/offices/pac/dapp/opla/presentation/clmcontfinalrule.html ''Claims and Continuations Practice - Final Rule'' (www.uspto.gov)] {{Webarchive|url=https://web.archive.org/web/20070826232605/http://www.uspto.gov/web/offices/pac/dapp/opla/presentation/clmcontfinalrule.html |date=2007-08-26 }}</ref>

The proposed changes were generally opposed by [[patent attorney|patent agents and attorney]]s,<ref>USPTO web site, [http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/aipla.pdf ''American Intellectual Property Law Association comments on proposed rule changes for Continuation practice''] {{Webarchive|url=https://web.archive.org/web/20070103004723/http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/aipla.pdf |date=2007-01-03 }}</ref> manufacturing companies,<ref>USPTO web site, [http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/honda.pdf ''Honda R&D Americas comments on proposed rule changes to Continuation practice''] {{Webarchive|url=https://web.archive.org/web/20070101140734/http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/honda.pdf |date=2007-01-01 }}</ref> biotechnology companies,<ref>USPTO web site, [http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/bio.pdf ''Biotechnology Industry Association comments on proposed rule changes for Continuation practice''] {{Webarchive|url=https://web.archive.org/web/20060926210257/http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/bio.pdf |date=2006-09-26 }}</ref> and independent inventors.<ref>USPTO web site, [http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/ia_con.pdf ''Inventors Alliance comments on proposed rule changes to Continuation practice''] {{Webarchive|url=https://web.archive.org/web/20070101162552/http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/ia_con.pdf |date=2007-01-01 }}</ref> There was concern that the rule changes failed to consider the difficulties commonly encountered in getting a patent, and that the changes would result in inventors failing to get the full range of patent protection to which they are entitled. The groups also maintained that the rule changes were not consistent with the current regulations on continuations.

The rule changes were generally favored by software companies,<ref>USPTO web site, [http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/bsa.pdf ''Business Software Alliance comments on proposed rule changes for Continuation practice''] {{Webarchive|url=https://web.archive.org/web/20061231132823/http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/bsa.pdf |date=2006-12-31 }}</ref> electronics companies<ref>USPTO web site, [http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/intel.pdf ''Intel comments on proposed rule changes to Continuation practice''] {{Webarchive|url=https://web.archive.org/web/20061231132950/http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/intel.pdf |date=2006-12-31 }}</ref> and US government agencies<ref>USPTO web site, [http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/usdoj_ad.pdf ''The Antitrust division of the US Department of Justice comments on proposed rule changes for Continuation practice''] {{Webarchive|url=https://web.archive.org/web/20070101162955/http://www.uspto.gov/web/offices/pac/dapp/opla/comments/fpp_continuation/usdoj_ad.pdf |date=2007-01-01 }}</ref> for the reasons given above. Those that favored the rule changes felt that said changes were consistent with the laws governing continuation practice.

On August 22, 2007, inventor Dr. Triantafyllos Tafas sued the USPTO in the United States District Court of the Eastern District of Virginia on the ground that the rule changes were in violation of the U.S. patent law and therefore are invalid.<ref>[http://www.patentlyo.com/patent/2007/08/dr-tafas-files-.html#comments ''Dr. Tafas Files Declaratory Judgment Action to Block Implementation of Continuation Rules''], Patently-O Blog, August 22, 2007</ref>{{Unreliable source?|date=October 2007}}  On October 9, 2007, pharmaceutical company [[GlaxoSmithKline]] filed a similar suit seeking a preliminary injunction to prevent the enforcement of the new rules.<ref>[http://www.filewrapper.com/index.cfm/2007/10/11/Another-lawsuit-filed-to-stop-implementation-of-new-USPTO-rules-this-time-by-a-heavy-hitter ''Another lawsuit filed to stop implementation of new USPTO rules, this time by a heavy hitter''] {{webarchive|url=https://web.archive.org/web/20071014061633/http://filewrapper.com/index.cfm/2007/10/11/Another-lawsuit-filed-to-stop-implementation-of-new-USPTO-rules-this-time-by-a-heavy-hitter |date=2007-10-14 }}, Filewrapper Blog, October 11, 2007</ref>{{Unreliable source?|date=October 2007}}  The court consolidated the two cases and scheduled a hearing on GlaxoSmithKline's motion for October 31, one day before the rules were to go into effect.<ref>[http://www.filewrapper.com/index.cfm/2007/10/18/Glaxos-preliminary-injunciton-motion-to-be-heard-October-31-consolidated-with-earlier-challenge ''Glaxo's preliminary injunction motion to be heard October 31, consolidated with earlier challenge''] {{webarchive|url=https://web.archive.org/web/20071117043024/http://www.filewrapper.com/index.cfm/2007/10/18/Glaxos-preliminary-injunciton-motion-to-be-heard-October-31-consolidated-with-earlier-challenge |date=2007-11-17 }}, Filewrapper Blog, October 19, 2007</ref>{{Unreliable source?|date=October 2007}}  On October 31, the court granted a preliminary injunction which prohibits the USPTO from enforcing the patent rules on continuations and claims which were to come into effect the following day.<ref>[http://www.ipo.org/AM/Template.cfm?Section=IPO_Daily_News_&template=/CM/ContentDisplay.cfm&ContentID=16610 ''Preliminary Injunction Granted to Block New Rules on Continuations and Claims from Taking Effect Tomorrow''], Intellectual Property Owners Association, October 31, 2007</ref>  On April 1, 2008, the injunction was made permanent,<ref>Jim Singer, [http://ipspotlight.com/2008/04/01/court-issues-permanent-injunction-against-uspto-patent-rule-changes/ ''Court Issues Permanent Injunction Against USPTO Patent Rule Changes''], IP Spotlight blog, April 1, 2008.</ref> but in March 2009, it was overturned by [[United States Court of Appeals for the Federal Circuit]].<ref>{{Cite web|url=https://ipspotlight.com/2009/03/22/federal-circuit-largely-backs-uspto-limits-on-patent-claims-and-rces-strikes-down-limits-on-continuations/|title=Federal Circuit largely backs USPTO limits on patent claims and RCEs; strikes down limits on continuations|date=March 22, 2009}}</ref>

In October 2009, USPTO withdrew proposed changes{{clarify|date=September 2021|reason=Were all proposed changes withdrawn or just some of them? If only some of them, which ones? What rules were in effect between March 2009 when the Court of Appeals issued its ruling and October 2009 when proposed changes were withdrawn?}} to the continuation rules.<ref>{{Cite web|url=https://www.genomeweb.com/archive/uspto-rescinds-controversial-patent-rule-changes-proposed-prior-administration|title=USPTO Rescinds Controversial Patent Rule Changes Proposed by Prior Administration|date=October 9, 2009|website=GenomeWeb}}</ref>