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.

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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.