"Impact" of New Continuation and Claims Rules

Patent Docs received an e-mail today that contained some interesting information about the impact the new continuation and claims rules might have had if only the Patent Office had promulgated the new rules a "little earlier."  We were unable to identify the author online, so if you know who originally penned these two paragraphs, please let us know [UPDATE: We have been informed that the authors of this piece are Gregory E. Upchurch of LegalMetric, LLC and Bryan K. Wheelock of Harness, Dickey & Pierce, PLC; Additional UPDATE: We just received a copy of LegalMetric's e-mail, which can be obtained here].  In addition, due to the number and age of the patents described in the piece, we were unable to confirm the accuracy of the figures presented [UPDATE: A table of the authors' analysis is available for download at the LegalMetric's webpage or here].

As most of you know the new Patent Office rules will take effect November 1st.  Before the new rules, one New Jersey inventor amassed 394 patents with more than 5 independent claims, 21 of which had more than 25 total claims.  This will be prohibited by new 37 CFR 1.75(b)(1).  Furthermore, this same inventor slid by without filing any of the 7,326 separate statements about co-pending applications that will now be required by 37 CFR 1.78(f)(1)(i), or any of the 243 terminal disclaimers under 37 CFR 1.78(f)(2)(ii)(A) or explanations under 37 CFR 1.78(f)(2)(ii)(B) for the applications filed on the same day with the exact same title.  This inventor obtained more than three patents with identical titles 67 times - once obtaining 37 different patents with the exact same title, with a total of 188 claims.  286 times he obtained patents with the same titles with more than 15 total independent claims, and 53 times he obtained patents with the same titles with more than 75 total claims, which would now be nearly impossible under 37 CFR 1.75(b)(1).

THANK GOODNESS that the Patent Office has put a stop to the likes of Thomas Alva Edison.  What would become of us if we had more like him?

These figures don't include applications Edison filed that did not issue, or the rejected claims in the patents that did issue.  Even with a lot more work, Edison probably could not have obtained equivalent protection.  Because he violated the 5/25 rule on at least 394 occasions, he would have had to file and prosecute at least that many more applications.  He also would have had to file 7,326 statements under 1.78(f)(1), as many as 72 on a single day, and 243 terminal disclaimers under 37 CFR 1.78(f)(2)(ii)(A) or explanations under 37 CFR 1.78(f)(2)(ii)(B).  He doubtless would have lost at least some of his protection in the 67 instances where he had four or more patents with the same title, and in the 286 patents in patent families where the total number of independent claims exceeded 15, and in the 53 patents in patent families where the total number of claims exceeded 75.  Destroying the incentive to invent such trifles as the electric lamp, the stock ticker, the phonograph, movies is a small price to pay for the convenience of the Patent and Trademark Office.

Undoubtedly the Patent and Trademark Office will now remove the 2,108 references on its web site to Edison, now that it has identified him as a serial patent abuser.

For a copy of the spreadsheet from which these figures were obtained, go to www.legalmetric.com and click on Edison Patent Spreadsheet under Resources.

Comments

[A]

Very nice entry. Mr. Dudas's wikipedia entry is also sorely in need of updating.

[NIPRA anonymous]

Over 30% of the patents that have been the basis for the National Inventors Hall of Fame inductees (www.invent.org) and the National Inventor of the Year Awards (www.ipo.org) would also run afoul of the 5/25 and/or 2+1 rules, as detailed in questions 8 to 10 of the NIPRA quiz linked at http://www.nipra.org/action.html.

[Jonathon]

cool post

[Rick]

With regard to 1.78 Subpart (f)(1) requiring applicants prosecuting "an application to identify other commonly owned applications or patents having (a) an inventor in common with the application being prosecuted, and (b) a claimed filing or priority date within two months of the claimed filing or priority date of the application being prosecuted". Would this include converted and expired provisional applications and abandoned applications?