02 November 2007

Limitation on U.S. Continuation Patent Applications on Hold

I am pleased to report that GlaxoSmithKline and an individual named
Triantafyllos Tafas have succeeded in persuading a court in Virginia
to stop the U.S. Patent and Trade Mark Office (USPTO) from
implementing its new rules concerning continuation applications
http://www.uspto.gov/web/offices/pac/dapp/opla/presentation/focuspp.html.

A continuation application is effectively a further application based
on an initial or parent application. The continuation application is
used to cover an invention that is described in the parent, but has
not been claimed in the parent. The Australian equivalent is called a
divisional application.

The USPTO rules would have limited the number of continuations that
could be filed from one parent application. However, many patent
specifications contain descriptions of multiple inventions. It is not
possible to cover more than one invention in a patent application. It
follows that a continuation application is a useful tool for
rightfully extending an inventor's rights.

I and many of my colleagues have maintained that the proposed rules
are arbitrary and capricious. Indeed, the USPTO is battling to cope
with its workload. But that is hardly a reason to limit fundamental
rights of inventors.

It will be fun to see the drama unfold...

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