Posts Tagged: "continuations"

In Response to Questions Signaling Major Changes to Patent System, Commenters Ask USPTO: ‘Where’s Your Data?’

Yesterday, February 1, was the deadline for submissions to the U.S. Patent and Trademark Office (USPTO) on its call for responses to a number of questions purportedly aimed at making U.S. patents more “robust and reliable.” But many commenters have weighed in to question why the Office is relying on data driven by advocacy groups to explore potentially major adjustments to the U.S. patent system when, as the expert agency on patents, it has not yet undertaken a data-driven study itself to confirm the need for such changes. The key data being questioned is that of the Initiative for Medicines, Access & Knowledge (I-MAK), an advocacy organization that has become a “principal, go-to source” for data on the number of patents and patent applications covering pharmaceutical innovations. Some of the questions raised in the USPTO’s Request for Comments (RFC) seem to be based on many of the premises of the I-MAK data.

Eileen McDermott

February 2, 2023

Note to Senators: U.S. Patent Office Remains Under a Permanent Injunction

On June 8, 2022, Senators Leahy, Blumenthal, Klobuchar, Cornyn, Collins and Braun sent a letter to U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal expressing concern about so-called “patent thickets” and requesting that she consider changes to the USPTO regulations and practices to address perceived problems with patent examination. The senators asked the USPTO to issue a notice of proposed rulemaking (which presumably must include new draft regulations) or at a minimum, a public request for comments followed by regulatory action, to address their concern about “the prevalence of continuation and other highly similar patents”.

Sherry Knowles

June 20, 2022

Drug Patent Thicket Letter from U.S. Senators to Vidal Seeks Reforms on Continuation Patent Filings

On June 8, a letter signed by a bipartisan group of U.S. senators was sent to U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal voicing concerns over the anti-competitive impacts of so-called “patent thickets,” especially in the drug industry. The senators’ letter urged Director Vidal to address issues of large numbers of patents granted to cover various aspects of a single pharmaceutical treatment, “primarily made up of continuation patents.” The letter, signed by Senators Patrick Leahy (D-VT), John Cornyn (R-TX), Richard Blumenthal (D-CT), Susan Collins (R-ME), Amy Klobuchar (D-MN) and Mike Braun (R-IL), advances a few claims about continuation filings that don’t come from any clear source.

Steve Brachmann

June 15, 2022

Implications of Filing Subsequent Patent Applications in the United States (Part III)

In Part I, the authors reviewed the law behind subsequent patent applications. In Part II, we reviewed the different types of subsequent applications. Part III will discuss some of the implications of these. When an applicant seeks to add new claims pursuant to a continuation or divisional application, U.S. Patent Law explicitly requires that the original specification provide adequate support for the new claims by the original specification satisfying the Section 112(a) written description and enablement requirements for the new claims. 35 U.S.C. § 120. The same is also true for continuation-in-part (CIP) applications claiming overlapping subject matter but not for claims comprising “new matter” because the new matter claimed must find support in additional disclosure, i.e., in material added to the CIP application itself.

Gary Maze & Jeffrey Wendt

November 14, 2020