In Immersion Corp. v. HTC Corp., the Federal Circuit upheld the USPTO's longstanding interpretation that 35 USC § 120 permits filing a continuation as late as the issue date of the parent.
The decision observed although 35 USC § 120 literally requires a continuation be filed "before patenting" (the issue date), the USPTO has interpreted this language for at least 50 years as only requiring a continuation be filed no later than the issue date.
This decision is estimated to save the validity of up to 13,500 U.S. patents. But given the USPTO's electronic filing system (EFS) is not always available and the Supreme Court could revisit this issue and see things differently, it does not seem entirely safe to rely on this decision.
Copyright © 2016 Robert Moll. All rights reserved.
Showing posts with label continuation. Show all posts
Showing posts with label continuation. Show all posts
Wednesday, June 22, 2016
Friday, March 29, 2013
America Invents Act - Making the Simple Act of Filing a Continuation Complex
A continuation is a patent application that is entitled to the benefit of the filing date of a prior application. The specification and drawings are the same but the claims are different. A continuation allows one to seek different claims to protect different aspects of the invention. Before the America Invents Act, filing a continuation was also relatively inexpensive. One simply copied the specification, added a sentence claiming priority, drafted claims, completed an application transmittal, calculated USPTO fees, and uploaded the application papers at the USPTO.
The America Invents Act has increased the expense of continuation applications filed after September 16, 2012 in that it requires an application data sheet (ADS) form, which was formerly optional, just to claim domestic or foreign priority. See 37 CFR 1.76 and 1.78. Adding to the chore if you file after the application is filed, the ADS form will not permit adding an application number, an attorney docket reference, or the title. You must apparently grab a typewriter or handwrite that information. But you still are not done, because the ADS requires filing an AIA power of attorney with no data field for the application number. Acting in a representative capacity under 37 CFR 1.34 is not an option in the form. What application does the power of attorney refer to? It refers to a statement under 37 CFR 3.73(c) for the application number. But this requires completing the statement, which requires gathering the notice of recordations in the chain of title. USPTO forms should save time, not generate the need to complete more forms! Further, the USPTO should amend 37 CFR 1.76 and 1.78 to be more consistent with Congressional law. There a claim to priority is only required to be contained in an application. These rules requiring priority claims be made in an "optional ADS form" generate filling out additional forms with little benefit to applicants.
Copyright © 2013 Robert Moll. All rights reserved.
The America Invents Act has increased the expense of continuation applications filed after September 16, 2012 in that it requires an application data sheet (ADS) form, which was formerly optional, just to claim domestic or foreign priority. See 37 CFR 1.76 and 1.78. Adding to the chore if you file after the application is filed, the ADS form will not permit adding an application number, an attorney docket reference, or the title. You must apparently grab a typewriter or handwrite that information. But you still are not done, because the ADS requires filing an AIA power of attorney with no data field for the application number. Acting in a representative capacity under 37 CFR 1.34 is not an option in the form. What application does the power of attorney refer to? It refers to a statement under 37 CFR 3.73(c) for the application number. But this requires completing the statement, which requires gathering the notice of recordations in the chain of title. USPTO forms should save time, not generate the need to complete more forms! Further, the USPTO should amend 37 CFR 1.76 and 1.78 to be more consistent with Congressional law. There a claim to priority is only required to be contained in an application. These rules requiring priority claims be made in an "optional ADS form" generate filling out additional forms with little benefit to applicants.
Copyright © 2013 Robert Moll. All rights reserved.
Subscribe to:
Posts (Atom)