Quick – how many inventions are disclosed in your portfolio of patent applications currently pending before the United States Patent and Trademark Office? How many of those inventions have actually been claimed? Do you have claims on file of proper scope to cover your current commercial products? Your next generation products? Your competitor’s products?
If you can’t even come close to answering those questions, don’t worry…yet. You’re not alone. It’s common practice to disclose multiple inventions in a patent application and then use legitimate continuation practice to seek protection on those inventions in subsequent applications that claim priority to the original application. It’s also common to use continuation practice to seek claims of varying scope. These uses of continuation applications are especially common in the biotechnology, pharmaceutical and medical device industries where inventions are typically complex, commercial viability is difficult to predict, and product development lifecycles are frequently long.
But the USPTO’s proposed rule limiting continuation practice could put an end to these strategies.
Now you can worry.
To make matters worse, the proposed rule would apply to applications filed on or after the effective date of the rule, if adopted. What does that mean? In essence, beginning on the effective date of the rule, any application that is a third or subsequent application in a chain must be accompanied by a petition providing justification for its existence. Oh, and another thing…the standard for the justification you must provide…it’s perfectly undefined.
Now you can really worry.
If adopted as proposed, the new rule would force all companies that make use of legitimate continuation practice to review their entire portfolio of pending applications and determine which continuations should be filed before the effective date of the rule. This would result in great expense and administrative burden and would likely translate into a massive surge in filings during the weeks, days, and months before the effective date of the rule. If a company elects to avoid the time and expense of reviewing the portfolio and filing continuations, it will risk losing the ability to seek protection because the burden that must be satisfied under the proposed “justify your existence” petition is not known.
So, for corporate counsel, the proposed rule creates a largely unpredictable expense and a tremendous fear of the unknown.
Now you can really, really worry.
What should you do?
First, understand the proposed rule and its potential effect on your patent application filing strategy. Biotech, pharma, and medical device companies should pay particular heed. You can view and/or download the Federal Register Notice of the proposed rule here.
Second…contact your intellectual property trade association of choice and get involved with its coordinated effort on the issue.
Third, consider filing comments on the proposed rule. Written comments can be sent by e-mail to AB93Comments@uspto.gov and must be received on or before May 3, 2006.
Fourth, cross your fingers. This is, after all, administrative rule-making.
