USPTO to Bar: We Are Drowning in Continuations

The U.S. Patent and Trademark Office (USPTO), in an attempt to reduce its considerable backlog, is trying to change the rules governing examination of patent applications. The USPTO proposals, if adopted, will substantially change current practice.

Currently, when a new application is examined, an examiner will typically reject at least some of the claims as not being patentable for various reasons. The filer is then given an opportunity to rewrite the claims and present a written argument explaining the merits of the invention. The examiner may reject the claims again, and another response may be presented. The process usually formally ends with the second round. Further positions to be taken by the filer typically require that the patent application be resubmitted as a "continuation application": a "recycled" application that enables the filer to try a different approach. Under accepted practice, this process can be repeated as long as the filer develops legitimate new positions