By Kevin E. Noonan —

More than 100 years ago, Mark Twain understood the corrosive power of numbers to sway a debate, particularly when those numbers are accepted unquestioningly and are based on faulty (but unspoken) assumptions.  One example in patent law is the 85-97% patenting rate of patent applications set forth in Quillen and Webster, 11 Fed. Cir. B.J. 1 (2001); although quoted extensively (most notably, by Mark Lemley and (now Federal Circuit Judge) Kimberly Moore in their paper condemning continuation application practice), the number has been thoroughly debunked by a variety of authors (see, e.g., Patrick Doody, "The Patent System is Not Broken," 18 Intellectual Property & Technology Law Journal 10 (December 2006)).  That has not stopped the idea from motivating much of the rhetoric about the "broken" patent system, or wrongheaded attempts to change the law by rule or statute (see "They Just Don’t Get It – ‘Patent Reform’ at the USPTO").

The Intellectual Property Owners Association (IPO) today posted another example of how statistics can be used to mistakenly frame the continuation debate.  Here is the notice on the IPO e-mailer:

PATENT APPLICATION LISTS 71 EARILER-FILED CONTINUING APPLICATIONS — A reader brought to our attention published U.S. patent application 2003/0229514, filed August 30, 2002, by Stephen J. Brown of Woodside, California.  The application is a continuation-in-part that lists SEVENTY-ONE earlier-filed continuation or continuation-in-part applications.  This is by far the most continuing applications we have seen listed in one application, and might be a record.

Unstated is the assumption that this is another patent submariner, keeping an endless string of continuations pending, Lemelson-like, and no doubt dreaming of one day blossoming into another patent troll to stifle innovation.  But a closer look reveals how wrong the assumption would be, and illustrates the benefits of using the application process to protect technology that is rapidly developing.

Initially, simple observation of the continuity data on the Patent and Trademark Office’s Patent Application Information Retrieval (PAIR) system shows that the list contains three simple duplications, and there are only 68 applications in the priority chain.  The first statistic that jumps out from the data is that this continuity chain has resulted in 37 patents (see below).  Thus, of the 68 filings noted in the IPO post, 54% have been granted.  There have also been 6 provisional applications, and since these expire and have been converted into utility applications they reduce the total number to 62 (or else we will have double-counted them).

Another thing that stands out is that of the 62 utility applications, 48 have been continuations-in-part (77%).  By its very nature, a continuation-in-part application contains new disclosure and is not simply a re-filing of a previous application.  Moreover, under patent prosecution rules any claim to the newly-disclosed embodiments will be entitled to the filing date of the continuation-in-part application, not the earlier date, thus negating any benefit from the priority claim (without which, of course, the application would not make up the provocative statistic).  And the consequence to the applicant is that the expiration date of any patent obtained thereby will be shortened to 20 years from the earliest filing date.  This term-shortening effect is felt for all of the applications in the priority chain filed after June 7, 1995, which constitute all but 9 of the applications (and 6 of the patents) in the priority string.

When the underlying data is reviewed, it is evident that the priority chain set forth in the published application (and posted by IPO) is in fact consistent with generations of U.S. patent policy.  Rather than attempting to obtain overarching patent claims that could be asserted against infringers from vastly different areas of commerce, the applicant here has chosen to file applications directed to each of the embodiments of his invention as he has developed them.  He has incurred the costs of these filings, even when failing to disclose might have permitted at least some of these embodiments to remain under trade secret protection.  More importantly, it is the disclosure, not the patents, that should be the focus of the story.  In this case it appears that the public benefit of the disclosure, and the transfer of this technology into the public domain when patent protection expires, outweighs the limited rights accruing to the patentee.  And it is equally clear that the bald statistic, of 71 prior applications, is at best misleading and at worst can be easily manipulated to support the proposition that the patent system is somehow "broken."  In fact, the revealed reality is that this is a good example of behavior the patent system was designed to promote.

The 37 patents:
5,307,263; 5,569,212; 5,601,435; 5,678,571; 5,782,814; 5,794,219; 5,828,943; 5,832,448; 5,879,163; 5,887,133; 5,897,493; 5,899,855; 5,913,310; 5,918,603; 5,933,136; 5,940,801; 5,951,300; 5,956,501; 5,985,559; 5,997,476; 6,023,686; 6,068,615; 6,144,837; 6,167,386; 6,168,563; 6,186,145; 6,196,970; 6,210,272; 6,233,539; 6,240,393; 6,246,992; 6,330,426; 6,334,778; 6,368,273; 6,375,469; 6,968,375; 7,167,818