Ending Abuse of Patent Continuations

Abstract

One of the oddest things to an outsider about the United States patentsystem is that due to continuation practice it is impossible for the U.S.Patent and Trademark Office (PTO) ever to finally reject a patentapplication. Continuation applications have led to abuse of the patentprosecution process. They serve very little useful purpose, and whatbenefits they confer may be outweighed by their potential for mischief. Inan effort to study the pervasiveness of continuation practice, we compiledan original dataset comprising 2,224,379 patents, every patent issued from1976 through 2000. We found that while continuations are filed in 23% ofall patent applications, patents based on continuation applicationsrepresent 52% of all litigated patents. Although continuations are used ina minority of all patents, it is the most important minority because it isthe minority most likely to end up in litigation. We examine the effortsundertaken to control the problems associated with continuation patents(changing the patent term, publishing applications, prosecution laches) andfind them insufficient. The world would probably be a better place if theywere abolished. Recognizing, however, that the abuse of continuationpractice is not as pervasive as some might think, we propose a number ofmeans by which Congress and the courts could strengthen existing rulesdesigned to limit their abuse while preserving the practice. At a minimum,the empirical data we present can provide litigants and judges with abaseline for assessing the reasonableness of delay caused by the filing ofmultiple continuations by the patentee in determining the applicability ofequitable remedies such as prosecution laches.

Cite this work

No public copy is stored for this record, so only the metadata is cited.

Stored only when both papers are in the corpus — 27 citations exist upstream.