Are fewer continuations the sign of a healthy patent system?

By Gene Quinn
April 19, 2018

Are fewer continuations the sign of a healthy patent system?UPDATED Thursday, April 19, 2018, at 4:51pm.

Earlier today I received a telephone call from the United States Patent and Trademark Office, and had a good conversation with Commissioner Drew Hirshfeld.

Earlier in the week he gave a presentation to the Presidents of Inventors Groups from across America on April 17, 2018, at a conference at the United States Patent and Trademark Office, Commissioner for Patents Drew Hirshfeld (left) shared some statistics with those in attendance.

One of the things Hirshfeld explained was that the often-reported news that new filings at the USPTO are down is incorrect. According to Hirshfeld, new filings have been up, and up steadily. I thought I heard him say there was a decrease in the number of continuations, and had previously quoted him as saying “we want to minimize continuations anyway.”

Hirshfeld, who I’ve known for years, said what he was referring to was Requests for Continued Examination (RCEs), not continuations. Whether I heard misheard him or he misspoke, what is relevant is the original article is inaccurate.

Hirshfeld explained to me that he is well aware of all of the portfolio reasons why continuations are very important, but the Office does really want to minimize RCEs, which makes all the sense in the world. An RCE is not a new application, is essentially just payment for additional consideration by an examiner. RCEs, while sometimes necessary can and do become inefficient and attempts to streamline the prosecution process have long tried to make them unnecessary in whole or in part to the extent possible.

I should have confirmed with Hirshfeld my understanding of what he had said. As he was leaving the podium he commented to me that he had to race out the door to leave for Philadephia for another speaking engagement. Which is not an excuse, just an explanation. He took time to spend a part of his busy day with Presidents of the Inventors Groups, and I guess out of an abundance of respect for his time, and a belief I had understood what he said, I didn’t follow up.

In any event, what follows is the initial article, left here more as a reminder to me than anything else.

________________

 

Speaking to the Presidents of Inventors Groups from across America on April 17, 2018, at a conference at the United States Patent and Trademark Office, Commissioner for Patents Drew Hirshfeld (left) shared some statistics with those in attendance. One of the things Hirshfeld explained was that the often-reported news that new filings at the USPTO are down is incorrect. According to Hirshfeld, new filings have been up, and up steadily. What has been decreasing are the filing of continuations.

“We want to minimize continuations anyway,” Hirshfeld explained.

I’m not sure that is correct. But I’m not sure it is incorrect either.

A continuation is a subsequent patent application for a different invention related the disclosure in a prior non-provisional application (generally referred to as a parent application) and filed before the original prior application becomes abandoned or patented. The applicant in the continuation application must include at least one inventor named in the prior non-provisional application. The disclosure presented in the continuation must be the same as that of the original application and should not include anything that would constitute new matter if inserted in the original application. In other words, the invention in the subsequent patent application must be the same as the invention in the original patent application.

At any time before the patenting or abandonment or termination of proceedings on his or her earlier non-provisional application, an applicant may have recourse to filing a continuation in order to introduce into the application a new set of patent claims and to establish a right to further examination by the examiner. In other words, a continuation can be used to obtain patent claims on different aspects of a disclosure and obtain patent claims that will expand the footprint of the exclusivity already obtained. Indeed, with a lucrative invention having a portfolio of protection can be extremely important and quite valuable.

From the perspective of the Patent Office, I suspect the view Hirshfeld was expressing comes from the belief that an increase in the number of continuations means the Patent Office is not doing an appropriate job of coming to conclusion during the original examination of the underlying parent application. But there is much more to a continuation.

Continuations are filed many times not because the examination process has been somehow inefficient or non-conclusive, but rather because the underlying property is so valuable the owner wishes to have a patent portfolio rather than a single patent. Sometimes, with foundational important or pioneering innovations, there will be many patents issuing from the same parent application. Therefore, a decrease in the number of continuations could well signal a capitulation in various industries, with patent applicants and owners not seeking as many patents. This could mean there is a lack of confidence in the U.S. patent system, it could mean there are fewer foundational important, pioneering innovations, it could be the sign of a patent system that is less than optimally healthy.

“A continuation practice is an important part of a well-rounded patent program,” explained Mike McLean, a monetization and valuation expert who is Senior Vice President at TechInsights. “To be implemented successfully, it requires the patentee to track its progress in further developing or implementing the invention related to what was disclosed in the specification and to understand how other players in the technology space are doing so as well. Many of the companies we see having success in commercializing their IP have active continuation practices.”

While it is wonderful to hear that the number of new patent applications continues to grow, I don’t believe it is good news to learn that the number of continuations is declining. In fact, the number of continuations decreasing should be a canary in the coal mine moment. It suggests less success commercializing patented innovations, which for an innovation-based economy can’t possibly be a good thing.

UPDATED at 11:21am EST: See comment #2 and #6. In an earlier edition of this article a continuation was defined as “a subsequent patent application for the same invention claimed in a prior non-provisional application”. Technically that is inaccurate. An invention is defined by the claims, and the doctrines of claim differentiation and double patenting would require that claims obtained subsequently must be different in at least some way. While they can certainly relate to claims previously obtained, often a continuation will cover claims to entirely different aspects of a disclosure. In either case, as Anon points out, it is more accurate to say a continuation is to a different invention disclosed in the same parent specification.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 39 Comments comments.

  1. Night Writer April 18, 2018 9:17 am

    From my practice, the sign of fewer continuations is a sign of tightening budgets. The client doesn’t want that free RCE anymore. They want prosecution completed with a response to a NFOA or at worst a response to a FOA. I have clients that abandon applications if you can’t get them allowed with two responses at most.

    One client I briefly had had a rule of you get one shot at a response and then they transfer the application to another law firm.

    Budgets get tighter and tighter as the value of the patent goes down.

  2. Anon April 18, 2018 9:18 am

    “Same invention” is a bit of a misnomer.

    A better description would be a different invention related to the same disclosure.

    A disclosure may cover a rather wide family of inventions, some of which may end up being claimed in the original parent (first allowance), and others – for a variety of reasons – may end up not being claimed in that first allowance.

    To say “same invention” (too) severely downplays the notion that claims can contain (often purposeful) nuances.

    For example, I have counseled clients who desire a very quick first grant to have an initial claim set that is ultra precise (and thus easily worked around).

    The client may choose this path for a number of reasons including financing, pride, marketing and the like.

    But the (original) disclosure carries with it more (and different) invention than that first claimed invention.

    In the next continuation, a more broadly claimed invention is sought.

    Would it really be fair to say that the child is the “same invention” as the parent?

    I think not.

  3. AAA JJ April 18, 2018 9:25 am

    “‘We want to minimize continuations anyway,’ Hirshfeld explained.”

    The lifers at the PTO have no understanding of how applicants manage their filings. For him to state this as a goal of the PTO just demonstrates his complete ignorance.

  4. Anon April 18, 2018 9:33 am

    Night Writer,

    Sounds like you have some clients who are penny wise and pound foolish.

    Have you considered including examiner evaluation metrics in your prosecution discussions with your clients? There are (still) examiners who require an RCE (as indicated by plus 80% metrics) in order to make headway.

    Clients with expectations of first action grants (or one-reply grants) have either unrealistic expectations, are forgoing full scope coverage of their disclosures, both, or more.

    On the other hand, clients do come in a spectrum of views and abilities (and that includes budget), and foresight as to what constitutes the protections that they are willing to pursue.

  5. CP in DC April 18, 2018 10:08 am

    Night Writer, I second your views.

    Clients want prosecution concluded in timelines that are not realistic. Generally, clients want broad claims to “make sure my competitor does not steal my invention” but then are surprised when the first office action has many rejections. Amend the claims, and the examiner issues a final.

    The solution is simple, spend time (and yes money) during drafting and prosecution. A well written application is examined faster.

    Lawyers don’t want or like to speak poorly of their clients and will not do so publicly. Prosecution budgets are never discussed at conferences, while speakers cannot stop discussing how expensive it is to fight an IPR, but nothing is said of prosecution budgets that create those patents.

    I believe we are reaching a breaking point. New lawyers don’t want to do prosecution because litigation pays better. Ropes and Gray split their prosecution group from the firm, a clear signal of the value of the work.

  6. Gene Quinn April 18, 2018 11:13 am

    Anon says: “A better description would be a different invention related to the same disclosure.”

    Agreed. That would have been a much better way to characterize what I was referring to. In fact, I really think I need to amend the article to reflect that. Thanks.

  7. CP in DC April 18, 2018 12:34 pm

    More interesting numbers would be the number of RCEs and divisional filings. RCE filings reflect an inefficient examination process (examination does not reach a conclusion and must be continued). Divisional filings are as strategic as continuation filings.

    In life sciences, we often get restrictions that separate claims into 5-10 groups (sometimes more). Don’t bother to traverse, it won’t happen. Restrictions are along the lines of compound, method of treatment using the compound, method of making the compound, and formulations. If the compound claim is complex, then you get additional groupings for the subsets of compounds and a specie election.

    Divisional filings are preferable because of the 121 safe harbor. Breaking the line of divisionals (with an intervening continuation) can create problems with obviousness-type double patenting, which has been used to invalidate patents.

    To determine whether the patent system is healthy in promoting innovation, we should look to new original applications only. Leave the others out.

  8. Anon April 18, 2018 1:25 pm

    CP in DC,

    I have to disagree.

    As I noted, there are many reasons why a single application can (rightfully) spawn MANY patents covering different inventions.

    To follow your advise would be to discount the fact that a single application simply does not correlate to a single invention.

    That does no one any good.

  9. temorit April 18, 2018 1:25 pm

    CP in DC:

    Hasn’t prosecution always been less lucrative? Maybe it is getting moreso now, but when I started over 10 years ago, it was well know that if you did prosecution, you’d hit your salary ceiling within a few years, while the litigators had much higher potential earnings. I still remember a litigation associate who came over to prosecution (we were low on lit work, so the other option was being let go). He was given an Office Action to respond to. The mentor had to stop him when he’d already put like 30 hours into the case, and explain that the budget cap allowed the associate to bill 6 hours on the response. The lit associate was flabbergasted that we did work so quickly. He didn’t last more than a few weeks in prosecution.

    Night Writer:
    Those kinds of clients need a real sit-down heart-to-heart. If you want a patent before RCE, you need to give up a LOT of claim scope. If they have other firms willing to get the patents quickly, then your client needs to reevaluate why they are getting patents. If all they want is a patent, scope be damed, then have them get that to you in writing, and I’m sure you’ll oblige.

  10. CP in DC April 18, 2018 1:51 pm

    Anon

    “a single application does not correlate to a single invention.”

    I did not discount such statement. Restriction practice is about that concept.

    Restriction practice is based on independent and distinct inventions within one application, i.e. different inventions. An applicant doesn’t choose to restrict the application, the examiner issues the restriction. Fighting a restriction is useless, it requires a petition and it is not appealable. Hence, divisional practice takes place.

    The case law is replete with examples of patents found invalid for obviousness type double patenting. A continuation does not receive the safe harbor of 121.

    Temorit

    Yes, it has always been true. However, now more than ever the budgets are shrinking. Those 6 hours are now 3 or 4. While you may work hard to meet that budget, sometimes you work for free, i.e., cut hours. I have life science publications cited and it takes time to read and understand them.

    Now more than ever, attorneys who prosecute would rather work in-house because salaries are competitive and no one works on the treadmill of prosecution.

  11. Night Writer April 18, 2018 4:47 pm

    >>Restriction practice is based on independent and distinct inventions within one application, i.e. different inventions.

    Claimed inventions.

  12. Night Writer April 18, 2018 4:49 pm

    >>Hirshfeld explained.

    I listened to him talk. He doesn’t seem to be qualified. He seems like he is a fastidious man and thorough, but he doesn’t seem to really understand patent law and he seems to be not the brightest bulb. He should be replaced. Plenty of good spots for him a few rungs down.

  13. AAA JJ April 19, 2018 8:33 am

    “I listened to him talk. He doesn’t seem to be qualified. He seems like he is a fastidious man and thorough, but he doesn’t seem to really understand patent law and he seems to be not the brightest bulb. He should be replaced. Plenty of good spots for him a few rungs down.”

    I know Mr. Hirshfeld from my examining days. He’s bright enough. His problem is the same as all the other “career officials” at the PTO: He has zero perspective.

    Mr. Stoll had zero perspective when he was at the PTO. Making a comfortable living doing the yeoman’s work of ignoring the actual law and doing whatever the other “career officials” at the PTO told him to do. Now he’s on the outside. Making an even more comfortable living. And he’s shocked, SHOCKED!, that the PTO doesn’t care what the law is and will do whatever it wants regardless. But now he has perspective. He’s a giant phony and a hypocrite, but at least he’s got perspective.

  14. Paul Morgan April 19, 2018 10:24 am

    NW at 1 is also my own observation of a major reason why continuations, divisionals and RCEs are declining.

    Also, a fairly frequent but unstated reason for continuations is to delay patent issuance to enable claims to be re-written to better cover subsequent competitor products, and/or better distinguish prior art uncovered in asserting related patents. [The “late claiming” defense is dead in the U.S.]

  15. Paul Morgan April 19, 2018 10:30 am

    If, as suggested in this article, the intent of the continuations is to obtain more than one patent based on the same specification, there is a serious risk of creating a “double patenting” defense in subsequent litigation if the applications examiners did not raise that issue.

  16. Anon April 19, 2018 1:02 pm

    Perhaps I am jaded by reading anything penned by Paul Morgan….

    The view of declining use of the patent system – in general; and the various tools to protect innovation (in a portfolio) – in particular; are unhealthy trends.

    When I read Mr. Morgan’s last two posts, I obtain a sense of “of course, “late claiming” and “double patenting” are somehow “bad,” and that these items probably should never have been around in the first place.

    It’s as if the demise of the patent system is a “natural” thing for Mr. Morgan – one in which if any emotion can be gleaned, it is the emotion that his clients (albeit assumed to be of the Efficient Infringer types) are happy to see the US patent system decrease in strength and meaningfulness.

    I would address his last two points by pointing out opposite takeaways:

    Late-claiming is an “ill-named” label, reminiscent of the use of the “Tr011” narrative and seems to hint at the practice as somehow being improper. Such is not so. What the tactic is, is merely being able to more precisely describe the prior invention in terms of which those that may seek to deprive the full worth of that invention have sought to “sneak around.” (I am reminded of the proper reading of KSR and Kennedy’s words about protecting MORE the fruits of earlier patents).

    That this – like other full protection measures have diminished due to the weakening of the value of patents is NOT a good thing.

    As to the “double patenting dense,” this at best is a non-sequitur and a natural offshoot of the change in how a patent term is determined (a change to combat the submarining effect of measuring term from date of grant). Mr. Morgan’s phrasing makes it seem as if it is somehow “unfair” to obtain more than one patent based on the same specification. There is an understated and seemingly implied view that ONLY one patent should ever flow from a single specification.

    This is not the view of an attorney seeking to provide protection to clients for their innovations.

    Then again, it is rather common knowledge that Mr. Morgan long ago let lapse his USPTO registration number and that his only service now in the patent contexts is in service of those who seek to deny or eliminate patent protection.

    This is one reason (in my view) that he has been such a vociferous cheer leader of all things IPR (regardless of any infirmities in that system).

    Mr. Morgan has chosen to play the “I use my real name” gambit. Along with that gambit (and fair game) to his choice of wanting to attach some outside “cache” “with his real name,” comes the fact that he does not practice FOR the benefit of those seeking patent protection. He is not involved in prosecution to obtain patent rights for innovators. Whether or not his litigation practice includes litigating for those with patent rights may ameliorate his otherwise weak-patent positions may remain to be seen, but surely what is seen are his views that paint the ability to weaken patents as some type of “good thing.”

  17. Paul Morgan April 19, 2018 2:14 pm

    “Good” “bad” “unfair” and “unhealthy” – opinions irreverent to anyone interested in what the law actually is, and in this case baseless hostile imaginations, coupled with knowingly false statements that I am “in service” to anti-patent clients. Turning what should be professional substantive discourse into unprofessional attempted personal insults, the lowest form of commentary.

  18. Roger April 19, 2018 2:23 pm

    I don’t think that the Comment 2/6 issue has been fully resolved yet, because the article still says “In other words, the invention in the subsequent patent application must be the same as the invention in the original patent application.”

  19. Anon April 19, 2018 7:54 pm

    Mr Morgan / nothing of the sort and this is merely my pointing out that you should fully own your anti-patent positions.

    I prefer to be direct / as opposed to your insinuation that my posts are directly “knowingly false.”

    That statement itself is knowingly false.

    Have you not fully admitted that you long ago chose to let your USPTO registration number lapse? Is it not then a factual matter that (unless you engage in the unlawful practice of law), that you are not involved in obtaining patent protection for innovators?

    Are not your own (widespread) “defend the IPR no matter what” posts also of clear factual record? – as well as my own direct factual counter points – to which you do not have the decency to engage on the merits but would rather snipe from the sidelines?

    No “good sir, you merely receive here what you justly deserve.

    Let me know when you renew your registration number and once again choose to be active in creating and protecting property rights for innovators.

  20. Anon April 19, 2018 8:22 pm

    Roger @ 18,

    I saw that too – but thought it to be but a minor nit – Gene’s major changes more than make up for the first statements and reflect a truly appropriate view to a strong portfolio management position (as contrasted with others who would merely intimate that strong portfolios are somehow inherently “wrong”)

  21. Anon April 20, 2018 11:36 am

    I tried to restrain myself, but feeling frisky (it’s a Friday), I have to add another comment in regards to Paul Morgan’s rather obvious self-serving note at 17.

    First: “Good” “bad” “unfair” and “unhealthy” – opinions irreverent to anyone interested in what the law actually is,

    I do on occasion chose to post in a somewhat irreverent manner. Trust me though Paul – I have earned a fair degree of latitude in that respect because unlike certain others, I do not shy away from tackling issues on the merits. Further, most often my irreverence (read that as satire) is pointed – and on point. I am not one to engage in mindless ad hominem and insults that have nothing to do with anything. If you are being insulted by me, the chances are very high that you have done something (or omitted doing something) that draws the insult.

    And yes, I imagine that you had meant to say “irrelevant.”

    And in that regard, your attempt to “whitewash” the emotive words from “what the law actually is” could not be further off the mark.

    Law does not occur in a vacuum, and the changes and trends in law (the weakening of the patent system) VERY MUCH are directly on point here. Likewise, my comment as to your seemingly “nonchalance” as to that weakening – when coupled with the other factual observations that I have provided substantiate my post.

    You may not like the light that YOUR actions cast yourself in. You may not like the fact that I make note of the light that YOUR actions cast yourself in, but make no mistake – it is your own actions and your own posted views that have placed you in that light.

    Your choices then – I suggest that you own those choices.

    These are the opposite of how you would attempt to spin this: as some type of “baseless hostile imaginations“.

    The observations are directly based on your actions (and lack thereof).
    The only “hostility” is due to the fact that I am an ardent supporter of strong patent systems – and you are not.
    And their is absolutely no “imagination going on here (leastwise as you may be attempting to use that word).

    As to the lowest form of commentary – well, yours is honestly not there (I would reserve that for the likes of Malcolm Mooney. But you ARE near the bottom of the barrel. Any “false umbrage” that you want to gin up about my posting falls excessively flat. I suggest that you choose a different path – one more along the lines of actually engaging on the substantive matters (even the Constitutional ones that you always seem to beg off from). I would also suggest that you stop your sniping from the sidelines and reflect on your “IPR-no-matter-what” views. Recognizing the infirmities would be a good first step for you.

  22. Benny April 21, 2018 11:00 am

    Looks like you all missed it. Applicants file continuations so as to maintain prosecution active, leaving open the possibility of rewording the claims tailored to cover a competitors design around. Thats why you see so many double patenting issues – applicants simply re-file the same claims while waiting for the competitors product to launch. There is no innovation in a continuation or divisional – the original specification holds all the disclosure.

  23. Paul Morgan April 21, 2018 11:19 am

    Benny at 22, I did not miss it – see 14 and 15 above agreeing with you, although NW at 1 and I think that increased [and in some cases short sighted] client cost controls are reducing the total number of continuations anyway.

  24. Anon April 21, 2018 1:27 pm

    The fact that BOTH of you think that there is no innovation only shows BOTH to be wrong.**

    Paul and Benny – two anti’s of the same ilk.

    Thanks for the double confirmation gents.

    **that the innovation may be present in the original application does NOT take away from the fact that the CLAIMS that flow from continuations may cover DIFFERENT innovations.

    This is such a rudimentary notion in patent law that it makes me wonder if Paul choosing to relinquish his registration number may have had a different driver.

  25. Paul Morgan April 21, 2018 1:49 pm

    As usual, neither of us said what you are now accusing us of. I have filed many divisionals including those not based on restriction requirements.
    Maintaining an old PTO registration number, which has no MCLE requirement, does not mean much if you do not maintain a practice and insurance. If one has been been successful in patent practice one can fully retire and remove one’s name from the PTO roster to avoid getting unwanted unsolicited calls from the kind of dangerous and non-paying clients posting conspiracy theories on patent blogs.

  26. Benny April 21, 2018 2:20 pm

    Anon @24,
    You seem to have trouble differentiating between continuations and divisionals.
    Further, if you think that by faffing around with obtuse claim phraseology you can teach the PHOSITA anything that wasn’t gleaned by a first reading of the specification, you are severely underestimating the intelligence of people who actually read patent documents.

  27. Anon April 21, 2018 3:56 pm

    As usual, BOTH of your replies are off the mark.

    You two really do deserve each other – and I only wish that your mutual admiration and revolution around each other’s orbits was done in the quiet of your own homes.

  28. Anon April 21, 2018 3:59 pm

    I certainly hope Paul that you are not practcing in front of the USPTO without having that registration number.

    That is called unlawful practice of law -and as an attorney, you really should know that.

    *and the notion that you are not on the rolls in order to avoid unwanted solicitations is beyond bizarre. THAT is the stuff of “conspiracy theories”

  29. Paul Morgan April 21, 2018 6:52 pm

    You are really scraping the bottom of your empty barrel.

  30. Anon April 21, 2018 9:03 pm

    And why would that be, Paul?

    Are you – or are you not – practicing law without the proper license by helping innovators obtain patents without properly being registered with the USPTO?

    Since you are not registered, what FAIR facts can be “scraped” from the bottom of the barrel that you inhabit?

    Do you really want to continue to pretend that you actively seek to protect innovators by obtaining patent protection for them?

    Please, Paul – be direct.

  31. Paul Morgan April 21, 2018 11:34 pm

    OK, would it be direct enough to point out that your false accusation of practicing law without a license is professional slander?

  32. Anon April 22, 2018 8:59 am

    I have made NO such false accusation Mr. Morgan, and my words are truth – the ultimate defense to any charge of professional slander.

    I have asked you a direct question and asked for a direct answer.

    One – apparently – you are not comfortable giving.

    Why is it that you do not give a direct answer?

    Are you afraid of the truth of which I speak?

    Why is it that you STILL dance around with your “snipe form the sidelines” insinuations that it is I that have done something wrong here?

    Do you seriously think that having a registration number is optional to practice – as an attorney for others – before the USPTO? Do you need the number of the head of the OED in order to verify this?

    Once again, let me put it this way: “Please, Paul – be direct.

    Then tell me please, how my own direct – and truthful – comments could ever rise to the level of “slander.” Please be aware – yourself – that falsely accusing someone else of slander is itself slander – especially as an attorney you SHOULD know that what I say is the truth.

    Maybe you should consider yourself lucky that your direct admission in black and white “on that other blog” was (conveniently) lost in a “technical glitch.”

    Maybe you just cannot help yourself on this matter, and do not like the fact that my pointing out the truth establishes a clear case of bias for your relentless “cheerleading” of the IPR regime.

    Maybe I just don’t care whether or not that makes you uncomfortable, or that showing that bias diminishes your cheerleading. But none of that is “slander” – not even close.

  33. Benny April 22, 2018 9:33 am

    Anon,
    Check your blood pressure – it could be getting too high.
    I re-read the comments, nowhere did I find Mr Morgan claiming to be still practicing at the USPTO, so I don’t know what you are getting worked up about. Gene might correct me on this one, but as far as I know you do not need to be a registered practitioner in order to post comments on this blog.
    As far as maintaining “live” prosecution by filing endless continuations – that’s a business tactic. It’s either smart or weaselly, depending on whether you are the perpetrator or the victim. (I’ve done both). But once the application has published, carving words from the description and transposing them to the claims doesn’t come under the heading of “innovation”. You, who continually denigrate others as being ignorant of patent law, seem unaware that there can be no added material in a continuation. (That what CIPs are for). No added material means no new innovation.

  34. Anon April 22, 2018 10:40 am

    Benny,

    My blood pressure is excellent – thank you for your concern.

    There is no comment from me regarding requiring any type of license to post on the blog, so where you got this view is beyond me.

    As to Mr. Morgan’s claims to still be practicing before the USPTO in helping innovators obtain patent rights – THAT is the question that I put to Mr. Morgan, and that is the question that he apparently cannot find it within himself to answer. I am still awaiting his direct answer.

    Mr. Morgan (in other conversations) has stated that he “used to have” a registration number. My point is a simple (and truthful) one: you need to have an active registration number in order to practice law BEFORE THE USPTO in obtaining patent protection for others as an attorney.

    Mr. Morgan attempts a snide shot from the sidelines by suggesting that I stated something else: that ANY practice of law is barred if one does not have a USPTO registration, but I have never said anything remotely close to that. Such is a pure prevarication on Mr. Morgan’s part.

    The REASON why this point comes up in discussion (and this is NOT the first time that this has come up) is that Mr. Morgan likes to pretend that he is an attorney ACTIVE in protecting innovators through helping them obtain patent protection.

    This is simply false.

    The importance of this factual matter has several aspects.

    One is that he is NOT as he portrays: a “champion” of innovators. Quite in fact, his actual practice of law (and practice that is fully viable and above board) is in the court room – outside the obtainment of patent protection.

    THIS type of practice – and his ardent (and UNreasonable) cheerleading of anything IPR is what prompts discussion points as to his evident bias and LACK of being an actual champion of innovators. His views CLEARLY show him as a person more involved in removing patent protection from innovators.

    Another aspect is that IF he is indeed helping others obtain patent protection – WITHOUT the proper credentials of being registered before the USPTO, he is – in fact – practicing law without a license.

    Read that again – slowly if need be,

    This WOULD place his other proper practice in jeopardy, And this is most likely why he only throws shadows of insinuations at me and does not answer the direct question with a simple and direct answer.

    As to your other point – I am well aware that no new matter may be added to an application – but this does NOT prove your point that no new innovation may be provided in continuations.

    It is you that shows a lack of appreciation of what a granted patent provides. A granted patent provides protection ONLY for the claims granted. The application may full well have MORE innovation that remains unprotected until EITHER a divisional or a continuation is pursued.

    You have accused me of not understanding divisionals as well – and this accusation has no merit. I have not made a distinction between the items because the points I have presented do not need such a distinction to be made.

    Your view of “ once the application has published, carving words from the description and transposing them to the claims doesn’t come under the heading of “innovation”.” is simply NOT a true statement in its entirety.

    Sure, some “carving” and “transposing” MAY not amount to innovation. But that would be an exception that proves the rule that innovation CAN exist in that very type of “carving” and “transposing.”

    My denigration of others for ignorance of patent law is NOT impugned by my positions here, as my positions are in full accord with patent law. Your statement of “No added material means no new innovation.” shows the ignorance of the discussion – the discussion bearing on what is PROTECTED (and what is protected is what is claimed). A first family member from a same application may claim – and protect – a certain innovation, and (absolutely factually true), a second family member – be it a continuation of a divisional – from the same application may claim – and protect – a DIFFERENT innovation.

    So here, you are wrong BOTH about the substantive matter of the thread as well as off base on the conversation that I am having with Mr. Morgan.

    As usual, I can count on taking your position and noting pretty much that the opposite of that position is where veracity will be found.

  35. Benny April 22, 2018 11:09 am

    Anon,
    Unprotected innovation is still innovation. Subsequently obtaining protection isn’t new innovation. It is just protection. If you have ever learned something new from a claim that wasn’t clearly spelled out in the specification, I can only assume you fell asleep halfway through reading it.
    Practicing before the USPTO is only part of helping innovators obtain protection. In-house counsel, patent drafting experts, paralegals, and others do valuable work in “helping innovators” without requiring registration.

  36. Anon April 22, 2018 11:51 am

    Unprotected innovation is still innovation.

    Absolutely – and that is my point. The difference though (as you yet seem unable to grasp) is that patents protect only that which is claimed, and continuations allow PROPER protection for what was previously unclaimed.

    It is just protection.

    You seem to mis-perceive the entirety of patent law – with possibly some undue emphasis on “just” in this quote from you.

    It is NOT “just” protection. It is protection of different innovation from the same application.

    Before you jump away from this point – you should realize that this is EXACTLY why I am right on this point and why you are in error.

    Now, moving along to “and others do valuable work”….

    Nice strawman, and please move the goalposts back.

    Please note precisely the position that I have laid out – an attorney practicing before the USPTO in helping others obtain patent protection requires to have an active and valid registration number.

    You absolutely need to have a registration number in order to practice THIS law. As you clearly are outside of your sphere of knowledge on what it means to practice law without a license, I would suggest that you not compound your ignorance in this area with logical fallacies which simply are not on point.

    Doing other things that are not the practice of law is completely outside of my statements.

    But those other things are NOT the types of things for which Mr. Morgan would have previously had a registration number and for which he CHOSE to let that registration number lapse.

    So – too – on this point, you remain off.

  37. Old Examiner April 22, 2018 11:55 am

    Getting back to the issue, if Mr. Hirshfeld was referring to RCEs, the only reason I can think of is that it would help reduce the backlog of acting on new cases. RCEs show up as oldest new cases on an examiner’s docket and need be acted upon each pay period; straight continuations do not. That results in one less actual new case being acted upon, thereby increasing the backlog date.

  38. Anon April 22, 2018 1:25 pm

    Thanks Old Examiner,

    But correct if I am not mistaken – was not part of the deal to the “end the gravy train” of RCE’s to reduce their points AND provide that they exist on a separate timing schedule?

    Was not part of the deal some minimal attention sufficed for working on RCEs? As I recall, one concern was that there would be a “hidden” bloat of RCEs floating out there while the (then current) impetus was on providing some “First Action On the Merits” prior to the timing called for in the guarantees struck at about the time we allowed publication prior to grant.

  39. Old Examiner April 23, 2018 4:22 pm

    RCEs do have a separate timing schedule, but the oldest RCE shows up for action each pay period similar to a new case. That isn’t the case with straight continuations which merely fall in line with other new filings.

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