Weeds in the Docket : Tafas v. Dudas, Patent Continuation Reforms, and Their Impact on Patent Applications in the Biotechnology Industry

The United States Patent Office was poised to implement a new set of regulatory rules on November 1, 2007, that would have had considerable impact upon the use of continuation applications in patent prosecution. As the proposed Final Rules were struck down by the court in Tafas v. Dudas as substantive in nature, and thus beyond the scope of the USPTO's authority, their potential impact upon patent prosecution methods will likely remain in the realm of the hypothetical. This paper examines the history, use, and abuse of continuation applications in patent prosecution, as well as the prospects for legislative and regulatory reform. Whether the continuation and claim reforms go into effect as drafted after appeal to the Federal Circuit, are revised in order to conform to the judicial limitation, or are abandoned altogether in favor of a new proposal, one thing is certain: the USPTO, under Director John, has targeted continuation applications for reform. Industry resistance to continuation reform is significant, but seems primarily a matter of practitioner inertia. It is the opinion of the author that substantive change, whether through legislative action or the grant of limited substantive rule making authority to the USPTO, is still necessary. While the industry will resist such changes, once it adapts and adopts new methods of patent prosecution, the negative impact of the reforms would likely be minimal, and the risks poised by the abuse of patent continuation applications mitigated