Patent Docs received an e-mail today that contained some interesting information about the impact the new continuation and claims rules might have had if only the Patent Office had promulgated the new rules a "little earlier."  We were unable to identify the author online, so if you know who originally penned these two paragraphs, please let us know [UPDATE: We have been informed that the authors of this piece are Gregory E. Upchurch of LegalMetric, LLC and Bryan K. Wheelock of Harness, Dickey & Pierce, PLC; Additional UPDATE: We just received a copy of LegalMetric’s e-mail, which can be obtained here].  In addition, due to the number and age of the patents described in the piece, we were unable to confirm the accuracy of the figures presented [UPDATE: A table of the authors’ analysis is available for download at the LegalMetric’s webpage or here].

As most of you know the new Patent Office rules will take
effect November 1st.  Before the new rules, one New Jersey inventor amassed 394
patents with more than 5 independent claims, 21 of which had more than 25 total
claims.  This will be prohibited by new 37 CFR 1.75(b)(1).  Furthermore, this
same inventor slid by without filing any of the 7,326 separate statements about
co-pending applications that will now be required by 37 CFR 1.78(f)(1)(i), or
any of the 243 terminal disclaimers under 37 CFR 1.78(f)(2)(ii)(A) or
explanations under 37 CFR 1.78(f)(2)(ii)(B) for the applications filed on the
same day with the exact same title.  This inventor obtained more than three
patents with identical titles 67 times – once obtaining 37 different patents
with the exact same title, with a total of 188 claims.  286 times he obtained
patents with the same titles with more than 15 total independent claims, and 53
times he obtained patents with the same titles with more than 75 total claims, which would now be nearly impossible under 37 CFR 1.75(b)(1).

THANK GOODNESS that the Patent Office has put a stop to
the likes of Thomas Alva Edison.  What would become of us if we had more like
him?

These figures don’t include applications Edison filed
that did not issue, or the rejected claims in the patents that did issue.  Even
with a lot more work, Edison probably could not have obtained equivalent
protection.  Because he violated the 5/25 rule on at least 394 occasions, he
would have had to file and prosecute at least that many more applications.  He
also would have had to file 7,326 statements under 1.78(f)(1), as many as 72 on
a single day, and 243 terminal disclaimers under 37 CFR 1.78(f)(2)(ii)(A) or
explanations under 37 CFR 1.78(f)(2)(ii)(B).  He doubtless would have lost at least
some of his protection in the 67 instances where he had four or more patents
with the same title, and in the 286 patents in patent families where the total
number of independent claims exceeded 15, and in the 53 patents in patent
families where the total number of claims exceeded 75.  Destroying the incentive
to invent such trifles as the electric lamp, the stock ticker, the phonograph, movies is a small price to pay for the convenience of the Patent and
Trademark Office.

Undoubtedly the Patent and Trademark Office will now
remove the 2,108 references on its web site to Edison, now that it has
identified him as a serial patent abuser.

For a copy of the spreadsheet from which these figures
were obtained, go to http://www.legalmetric.com and click on Edison Patent Spreadsheet
under Resources.