[4] The inventor pays an additional filing fee and continues to argue his case with the patent examiner.
[5] Because of a large number of last-minute Requests for Continuing Examination (RCEs) due to new prior art being found, and the additional burden these RCEs impose on examination, the USPTO launched in May 2012 the Quick Path Information Disclosure Statement (QPIDS) Pilot Program.
[6] The program can be used to submit an Information Disclosure Statement (IDS) during the time interval after payment of the issue fee but prior to patent grant.
A divisional application is often filed after the examiner issued a "restriction requirement", because a patent can only claim a single invention (cf.
One such defect occurs when the issued patent claims either more or less than the coverage to which the patentee is entitled, the latter situation resulting in a "broadening reissue".
Thus, an inventor can submit a reissue application with broader claims and attempt to get the full coverage to which he or she is entitled.
A broadening reissue application must be filed within two years from the grant date of the originally issued patent.
For example, inventor Jerome H. Lemelson filed a series of continuations over thirty years to get a very broad patent on bar code readers.
Lemelson was then able to collect over a billion dollars in license fees from large companies using bar code readers.
To minimize this alleged abuse of the patent system, the USPTO proposed several changes to the rules as to the number of continuations an applicant can file.
On October 9, 2007, pharmaceutical company GlaxoSmithKline filed a similar suit seeking a preliminary injunction to prevent the enforcement of the new rules.
The court consolidated the two cases and scheduled a hearing on GlaxoSmithKline's motion for October 31, one day before the rules were to go into effect.
On October 31, the court granted a preliminary injunction which prohibits the USPTO from enforcing the patent rules on continuations and claims which were to come into effect the following day.
[25] On April 1, 2008, the injunction was made permanent,[26] but in March 2009, it was overturned by United States Court of Appeals for the Federal Circuit.