Mark Nowotarski recently posed the following question over at LinkedIn:

“What impact do you think the new US patent “continuation” rules will have on the
pharma industry?”

With Mark’s permission, I have reproduced our ensuring discussion below:

>>Duncan

Pharma patent families tend to have at least 4 or 5 US equivalents
and usually 1 or so in other countries. So with 3 as of right Continuations and
a couple supported by declarations, you would think they would be ok, on
average.
So practically – it seems as though it won’t make much difference
to them. There are also ways to avoid the new Rules too – which are expensive, but
maybe this won’t be a problem.
I think smaller entities will be hurt much
more than large pharma as it is a common strategy to bundle a few inventions in
a single PCT application to save fees in the early stages They hope to be in a
better position to pay to ‘unbundle’ the patents at or after National phase
entry – which would be potentially problematic in light of the new rules.

>>Mark
Excellent points.
I think, “on average”, pharma can live with the package. But
what about the “non-average” inventions? What about the breakthroughs?
These lie
well outside of the norm in terms of number of continuations, CIPs etc. that
pharmas feel the need to file to protect them. I’ve seen issued patents that
claimed priority to a string of 27 sequential CIPs. I’ve seen original
provisionals that have over 100 child applications. How will pharma
protect these types of inventions under the new rules?

>>Duncan
Thanks for your further comments. For these unusual situations
(which are often predictable), the strategy will probably to file more
originating applications in the US – fine if you have big pockets.

What do you think?