Patent Deception in Standard Setting: The Case for Antitrust Policy

Herbert Hovenkamp, University of Iowa - College of Law

10/14/2008
(Original Publish Date: 12/28/2013)

Many patent applications are rejected upon initial submission, but they are almost never rejected with absolute finality. Further, subsequent to filing its original application a patent applicant might wish to write an application with broader or somewhat different claims, or perhaps add claims that were not made in the original application. Or it may wish to rewrite claims that had been rejected in the original application. A patent "continuation" is an application for additional claims made on a patent that was previously applied for. Under generally accepted patent practices in the United States, when a subsequent continuation or divisional application is granted the subsequent patent "relates back" to the date of the original patent application, and will typically retain the original application's priority over rival filings. While continuations are an accepted and increasingly comon part of the process under which patents are granted, they can also bring anticompetitive abuse. In particular, the continuation process makes it possible for a patentee to write updated claims designed to exclude a rival's invention that has been placed on the market subsequent to the date of the original application.