This past Monday, the Federal Circuit ordered a full court review of Tafas v. Doll, the case that is challenging the Patent and Trade Office's (PTO) proposed rules for limiting patent application continuations. These rules would require that more information be submitted with patent applications that contain a large number of claims. In a friend-of-the-court brief (PDF) filed with the U.S. Court of Appeals for the Federal Circuit, The Public Patent Foundation, PK and other public interest groups urged that a decision by the Federal District Court for Eastern Virginia blocking the proposed rules be overturned.
These proposed rules are needed to help reduce abuses of the current continuation process. At present, this processs allows a patent applicant to try to wear down the examiners, by stretching the process out over several years. The proposed rules would enable the USPTO to curtail abusive behavior and would raise the standards that must be met in order to gain more than two continuations. These new rules would also require an additional filing after two continuations, “showing that the amendment, argument, or evidence sought to be entered could not have been submitted during the prosecution of the prior-filed application.” This would change the current process–which seemingly automatically grants continuation indefinitely–to require the applicant to demonstrate why continuation is necessary. The idea behind these rules is to improve patent quality. As we have seen time and again, poor patents can crush innovation and lead to anticompetitive monopolies.
For others interested in filing briefs, the Federal Circuit Court stated that the panel will consider the briefs filed by current parties, as well as additional friend-of-the-court briefs. A deadline has been set for the USPTO briefs of August 5, 2009, with appellees' briefs due on August 26th.
Patently-O' on, “Tafas v. Doll: Continuation Limits Invalid; Limits on Claims and RCEs are OK”. This includes the text of the rules under consideration and sheds some light on the opinion that is under review.