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« USPTO News: e-Commerce e-Alert | Main | West LEGALworks® CLE on New Continuation and Claims Rules »

August 29, 2007


In fact the continuation practice is only allowed at USPTO, whereas when one files a application with EPO or other patent offices such practices are not allowed. The new rule adopted by USPTO would promote the real invention and restrict the monopoly on improvements, which many a times were minor inventions.

Dear Vishvas:

Funny, I have filed divisional and continuing applications in China, Japan, Australia and other countries, and have had the opportunity to do so in Europe as well (unless my foreign associates were pulling my leg). It is true that these practices are not as widespread as in the U.S., but it is also true that many of these countries were not "early adopters" of patenting biotech inventions (the point of the piece).

And, if you consider the authors' point, these are not "minor" "improvement" patents, but rather either continuations filed to accommodate the style of examination faced by applicants at the US PTO, or new discoveries filed as c-i-p's.

Although it is certainly the case that there have been instances of "incremental" improvement patents in some art units, I don't think biotech is one of them.

Thanks for the comment.


If the US had the kinds of claiming practices as the EP (multiple-multiple dependent claims and a what is more often a more expansive view of what a single invention is, preventing exponential restrictions), there might be less of an outcry.

And Noonan is exactly on point.

I am a biotech examiner and I agree with many of your points.

While I have not read the rules or received training (although this is forthcoming) one question I have for you is, while it may not be as cheap/facile, what about using PCT filing as placeholders for an invention until such time that it makes sense to have claims examined in the US?

Is there any limitation on filing continuing applicantion type PCTs and then using these applications as the root of your patent family?

I wanted to check out the WSJ/Weinberg reference for the Lemley text. My local edition of the August 23 WSJ does not seem to have that article.

Could you give an exact cite?


Lawrence B. Ebert
August 31, 2007

Dr. Ebert:

The authors have informed me that the Weinberg article was published in the Dow Jones Newswires as opposed to the Wall Street Journal. I have revised the post to indicate the correct source. Thank you for bringing this to our attention.

Donald Zuhn

Hi ,is anyone can give me some hints...
why does a patent especially appropriate for maximizing the commercal gain from a biotechnology inventions?

Dear Shiva:

An answer not specific for biotech. Any time an invention is unique, requires large investments of money and time to produce, can be reverse-engineered much more easily and cheaply than it cost to invent in the first place, and has a long obsolescence time (i.e., it doesn't become obsolete very rapidly), then patent protection is valuable.

Which is why pharma and biotech are patent-favorable and IT and software are not. A drug like Prilosec is profitable 20 years after it was invented in the early 1980's. How many devices (telephones, computers, answering machines, music devices) introduced in that time frame are anything more than antiques today?

Hope this helps.

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