The clear target of the new continuation and claim limit rules: Thomas Edison

October 08, 2007
Post by Blog Staff

This was received over email today. While we have not verified the information, it shows that the new rules arguably do not "Promote the Progress of Science and Useful Arts."

THANK GOODNESS FOR COMMISSIONER DUDAS AND HIS NEW RULESBefore 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, of course is now prohibited by 37 C.F.R. § 1.75(b)(1). Furthermore, this same inventor slid by without filing any of the 7,326 separate statements about co-pending applications that are now required by 37 C.F.R. § 1.78(f)(1)(i), or any of the 243 terminal disclaimers under 37 C.F.R. § 1.78(f)(2)(ii)(A) or explanations under 37 C.F.R. § 1.78(f)(2)(ii)(B) for the applications filed on the same day with the exact same title. While this inventor did not file any continuation application, 67 times he obtained more than three patents with identical titles, 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 C.F.R. § 1.75(b)(1). THANK GOODNESS that Commissioner Dudas has put a stop to the likes of Thomas Alva Edison, what would become of us if we had more like him?I just completed an analysis of all 1093 of Thomas Edison’s patents. These statistics don’t even 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 7326 statements under § 1.78(f)(1), as many as 72 on a single day, and 243 terminal disclaimers under 37 C.F.R. § 1.78(f)(2)(ii)(A) or explanations under 37 C.F.R. § 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, and movies is a small price to pay for the convenience of Patent Office management.PS: Don't forget that -- because nobody in their right mind would ever choose the torturous option of filing an ESD -- the rules amount to two fundamental changes:
(1) The 5/25 rule of 5 independent claims and 25 claims total per invention; and
(2) The 2+1 rule of 2 continuations and 1 RCE as of right per patent family (stemming from a common parent/priority document).
All the other new rules are implemented to help enforce those two fundamentals.

Update (10/18): This was apparently taken from research done by LegalMetric. The data can be obtained here.

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