Sometimes I receive comments on my blog worth repeating (most of you receive my posts via RSS and/or e–mail and thus don’t read the comments). This anonymous one, to my post on Continutations, raises some interesting arguments.
When you say:
“The revised rules would require ………. be supported by a showing as to why the amendment, argument, or evidence presented could not have been previously submitted.”
What suffices for “supported”???
What if an applicant cannot afford to file claims for all aspects disclosed in the application at the outset? It is — very expensive, afterall! Some of the most significant inventions in fact originate from people who literally have to decide between taking a bus or getting something to eat off a McDonald’s dollar menu. People don’t admit this but it’s true.
How is the rule change even Constitutional??? Why won’t the change, if it goes through, not face a challenge on Constitutional grounds? Because it amounts to seizing an applicant’s inventions after the applicantion has already been filed, in those cases where the applicant disclosed inventions with portions yet to be claimed, but can no longer be. The patent system up to now has encouraged people to “show all up front”, on the promise that they will be afforded an opportunity to protect what they show. Zillions have done just that. So having done so, in good faith, how is it equitable to now say “Gee, yup you disclosed a large body of inventions but we won’t let you protect anything but that one little piece you claimed already”. That’s tantamount to “fooling” applicants into revealing their inventions –IN GOOD FAITH, and after the horse is out of the barn, denying them the opportunity of legal protection they were ORIGINALLY PROMISED.
Even if the rule change were to only effect newly filed applications (and not already filed applications), still, there seem to be contradictions to what the Constitution specifies: “to promote the useful arts”.
That is because applicants henceforth will have to decide on aspects of inventions TO INTENTIONALLY CONCEAL. If you cannot claim it you have no choice but to conceal it. But doesn’t that INVITE accusations of abandonment??? So in other words the new rules “set up” applicants to be accused of abandoning portions of a larger family of inventions (those portions they cannot afford to claim at the time of filing)? And besides, as soon as the issue of concealing portions of the totality of an invention enter the picture, doesn’t that CONTRADICT the Constitution’s “promote the useful arts” statement? The new rules DISCOURAGE, NOT promote the useful arts when applicants are forced to conceal portions of their inventions.
Still further, with (land) emminent domain the government reimburses the landowner for the land seized from them. Here, an applicant in disclosing an invention, discloses it ONLY because of the promise that they can pursue patent protection for their ENTIRE invention; but if after their good faith filing is made, if portions of their inventions are seized… Are those applicants compensated in any way for the seized portions??? Most certainly not!
Thus…how is any of this even Constitutional?
Related posts:
I think the USPTO’s response to the comment would be that there is no unconstitutional taking or forced concealment of inventions because:
(1) the rule does not restrict the filing of divisionals;
(2) when filing, an applicant should submit a claim (or claims) that cover all patentable features of the disclosed invention; and
(3) if after two Office actions + 1 RCE, an examiner is not convinced, the applicant is not forced to abandon the subject matter of the rejected claims, as the applicant can appeal to the BPAI -> Fed. Cir. -> SCOTUS.
Of course, the real problem is (2), where an applicant does not know what the important features of his/her invention are until years after filing. In this case, I would suspect the USPTO would argue that a broadening reissue (and not another continuation application) is the proper solution.
In my view, the taking/APA violation occurs where there are allowed and rejected claims in an application after one RCE or continuation has been exhausted. In this situation, the applicant is forced to appeal as described above, which may take years.
The applicant is entitled to a patent on the allowed claims, but is not able to receive the patent until the lengthy appeal process is finished regarding the rejected claims. In effect, the USPTO is forcing the applicant to dedicate to the public his patentable invention for several years to receive a fair hearing on the rejected claims. This is akin to being forced to allow the public to use your land for any purpose while a zoning dispute is settled with the government.
I believe the original post started out with:
“What if an applicant cannot afford to file claims for all aspects disclosed in the application at the outset? It is — very expensive, afterall!”
So it seems that “J. Brown’s” proposed solution to the original story involving:
“when filing, an applicant should submit a claim (or claims) that cover all patentable features of the disclosed invention”
appears to miss the point entirely. I believe the Nipper article centers on applicants who cannot afford to seek patents on the “all patentable features” “J.Brown” refers to, in one sitting, that is, in parallel patent prosecution, and thus are forced by the rule change to either abandon some of the patentable features or disclose those features knowing that they will be forfeit with respect to being patentable. Resort to Divisionals wouldn’t help since that is still “parallel patent prosecution”, and the original premise already established that that would not be possible. The current and now threatened system of Continuations permits sequentialization of prosecution; and in so doing is faithful to the Constitution’s “to promote the useful arts” objective. Eliminating the option for sequential prosecution seems to harm the “to promote the useful arts” goal and so the question of Constitutionality seems legitimate. Now I am wondering whether this adds Civil Rights issues into the rule change ontop of Constitutionality? An applicant is being discriminated against on the basis of finacial means: a poorer applicant is selectively being forced to disclose-and-release-to-the-public-domain OR abandon because they don’t have the means to pay for expensive parallel prosecution via Divisionals — ONTOP OF the issues already raised in the original Nipper article.
Woa…thanks for raising interesting questions once again Steve Nipper!
Is the government of France and their courts reading Steve Nipper’s blog?
Are posts such as this one, in particular, influencing their decisions?
France is taking care not to seize an individual’s property:
“The constitutional council effectively highlighted the importance of intellectual property rights,†and
“Released late Thursday, the council’s 12-page legal finding made frequent reference to the 1789 Declaration on Human Rights and concluded that the law violated the constitutional protections of property.”
whereby at the very least:
“the constitutional council highlighted the need for compensation”.
{see NY Times story =>
http://www.nytimes.com/2006/07/29/technology/29music.html?pagewanted=print
}
France is attempting to be fair and faithful to its Constitution, the question is will America respect its own Constitution???
Or on this side of the Atlantic is the spirit of invention about to be crushed, and are inventions to be seized without any hope of compensation for their inventors and turned over as a gift to huge corporations waiting greedily to profit off of such seizures?