This post gets to several issues germane to Lemley and Sampat’s recent guest post on Patentlyo.com (“Tracking the Use of Continuations” 10/26/09). The post characterizes the patent process as a continuing process of negotiation which I completely agree with. Additionally, I believe the discussion on continuations may assign the intention of “opt[ing] for a slower process” to many applicants whose intentions are in the right place, but appear to contumely delay prosecution when problems inherent to prosecution are to blame. By thinking of the patent process as a binary search and finding ways to curb abuse of continuations that account for both the limitations in patent prosecution and the real need for continuations in some circumstances, a model that treats Examiners and practitioners with equanimity may be resolved by avoiding extremes.
Problem of Intangible Boundaries: An imprecise binary search for precise claim language
The patent process is completely a process of negotiating. From the filing of an application the applicant and the Examiner are poised to take part in a binary search of sorts (apologies in advance for banal algorithmic metaphors!). The binary search is a search for the claim language that perfectly describes the enabled technology just outside the penumbra of the prior art. The search starts with a likely over broad initial claim set filed with the application. The Examiner does the requisite search and sets the bounds for the search: one boundary is the applicant’s claims and other boundary is the prior art.
More technology
---------- Prior art
---------- Nebulous search territory on which to negotiate claims.
---------- Claims initially filed.
Less Technology
After the first office action part of the capacious “nebulous search territory” has been set by the Examiner in the first part of the binary search. I refer to this as a “binary search” because in algorithmic parlance a binary search in an ordered set of numbers is to choose the point half way between the bounds of an ordered set. The range between the claims initially filed and the prior art may be abstractly analogized to an ordered set, and the first office action should, in theory be the abstract point half way between the range in the “nebulous search territory.” The process continues in the response when the applicant decides on another set of points between the what the Examiner has said in the first office action and where the applicant believes the bounds of the technology lie, and so on … While in theory the search ends with finding the perfect language encompassing the applicants technology, in practice this is hardly the case. Put bluntly, the claim language that is finally agreed in even an issued patent on is almost certainly not the exact abstract boundary of where the applicants technology comports with ALL patent laws (enablement, written description, novelty, obviousness, to name a few). In other words, the claim language in a finally issued patent is probably either more or less than the applicant deserves because of the inherent problem in describing intangible technological boundaries in concrete words (Call this the Problem of Intangible Boundaries? We should call it something!). This, I believe is the strongest reason for allowing at least some form of continuations because while the intangible boundaries may not mean much in a patent with a market of $200,000, it will mean a lot in a market worth $200,000,000.
Continuations: Avoiding the extremes to promote a spirit of cooperation
The author’s state that many continuations in the form of RCE’s or normal continuations may be to delay prosecution and I agree that some and possibly many continuations may be for this purpose. However, at least some continuations filed are not to delay prosecution, or modify applications to track the marketplace, but to solve the Problem of Intangible Boundaries posited above. Several solutions have been tossed around to prevent prosecution delay, but I do not feel these solutions treat all parties equally. Some want to completely limit continuations a specific number. Others want to completely switch the burden of showing prior art to the applicant after a certain number of continuations. Still others want to charge a huge fee after each continuation. Some combination of all of the solutions may be appropriate, but any one is not likely to pass give the patent system the change it needs. Given the new spirit of cooperation I am feeling among the patent community with the passing of the new Examiner Count System, it seems likely that Mr. Kappos and the Patent Bar will proceed with equanimity. I just hope they don’t forget that some form of unimpeded continuations are necessary given one of the inherent difficulties in prosecution: the Problem of Intangible Boundaries.
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