Tafas v. Dudas: Appellate Briefs

Tafas v. Dudas (pending before the Federal Circuit)

GSK and Tafas have filed their appellee briefs in the landmark battle over whether the US Patent Office has the power to implement limitations on continuation applications or the number of claims requested in each application.


"The Final Rules [spurn the limits set by Congress] by, among other things, limiting the number of continuing applications, requests for continued examination ("RCEs"), and claims that an applicant may file. In issuing these rules, the PTO makes an unprecedented and unlawful grab for power that threatens both incentives to innovate as well as the authority of this Court, the Supreme Court, and Congress. Indeed, by enacting the Final Rules, the PTO attempts to grant itself the authority to do exactly what this Court and its predecessor court have repeatedly told the PTO it lacks the power to do."

Document:

45 thoughts on “Tafas v. Dudas: Appellate Briefs

  1. Thanks Max – I thought I might get a bit more of a reaction to that one, but I’ll take silence as approval!

    Reply
  2. …which delicious mental image (LOL) I imagine many readers will surely cherish, Mr Slothrop.

    Reply
  3. After the patina has been excoriated and the appeal has been dispatched to the netherworld whence it came, where shall Mr Dudas find any quantum of solace?

    Perhaps in the malodorous embrace of a lipstick-wearing pig?

    Reply
  4. So, you admire effective polished phrases phrases like “patina of legitimacy” do you. Prefer it to crude and simple language like “Lipstick on a Pig”, do you? Does any straight-talking, gun-owning, moose-dressing, brush-clearing, beer-drinking jury member, fit to be tomorrow’s President, ever use language like “patina of legitimacy”? Did any admirable and admired US President from earlier days ever use educated language like “patina of legitimacy”. Most of them, I shouldn’t wonder. Lawyers, keep up the fight against slipping standards.

    Reply
  5. “However, that doesn’t stop it from being raised regularly in such situations.”

    There’s nothing you can do to stop bogus IC theories from being raised. If you didn’t prepare an ESD, they’d find something else.

    Reply
  6. “I doubt you’ll find any Federal Circuit case in which IC was found based only on a mischaracterization of a cited prior art reference.”

    However, that doesn’t stop it from being raised regularly in such situations.

    Reply
  7. “And then get accused of IC 1,000 over? No thanks.”

    I doubt you’ll find any Federal Circuit case in which IC was found based only on a mischaracterization of a cited prior art reference. Patent lawyers and agents routinely characterize the cited art and doing so won’t be enough to support an IC finding because the examiner is free to read and understand the reference. A problem may occur where the characterization extends beyond attorney argument and into a declaration or extrinsic evidence of some sort. But that type of evidence isn’t required for the ESD.

    The real problem that lawyers/agents have with the ESD is that they don’t want to go on the record as to what their claims mean to give litigators the maximum enforcement flexibility. Also, they fear estoppel, but to a lesser extent since they often have to discuss the art in at least some amount in typical office actions.

    Reply
  8. “Come on now, you already know the answer to that question, you’re not ignorant of that. They’ll interpret it as broadly as suits their needs and can be gotten away with.”

    That’s the thing. They’ll interpret it ways they can’t get away with and we’ll need to fight over it. Or, sometimes, they’ll be hung up on particular phrasing for no good reason. Hell, other times, they will simply misunderstand and mischaracterize the art, think a claim term reads upon it, and I will need to correct them.

    “Actually it was a joke. But a true one none the less. A person that is willing to cooperate makes 25 or less claims, including at least one claim that is nearly garunteed to be allowable, or perpares an ESD and does the best job they can with infinite claims.”

    It’s not always so simple. You talk as though the attorney acts in a vacuum and doesn’t have to do what the client wishes.

    “In all seriousness, I’m pretty sure I could prepare a decent ESD in just about as long as it takes to examine an app. Ref 1: doesn’t show at least feature x, Ref 2: Doesn’t show at least feature y Ref 3: Doesn’t show at least feature x and it wouldn’t be obvious to combine 1 or 2 with 3 because they’re entirely different designs/devices. Repeat. Could probably have that done before I could write up an OA.”

    And then get accused of IC 1,000 over? No thanks.

    I will say that I would be willing to do a search and provide a decent ESD if I was protected from IC charges. In fact, such a thing might actually speed up prosecution. Again, however, the client must be protected from having their patent held unenforceable due to their attorney’s negligence or mistake in preparing the ESD.

    Reply
  9. The secret to understanding procedure / substance:
    (drum roll, please)
    It’s procedure when the court says it’s procedure, and substance when the court says it’s substance. Here, the rights of the patentee are affected to such a degree, and much of it at the discretion of the patent office (rather than just making sure all the boxes are checked, for example) that the court is very likely to call it all substance and shoot it down. Everything substantive has some procedure, and every procedure has some substantive effect, and neither lawyers nor philosophers will ever definitively sort the difference out.

    Reply
  10. you don’t think that all of the congressmen spent this evening worrying about the precise legislation language for a new patent claim statute. Or do you think that they have more important and larger things to worry about this evening?

    Reply
  11. zomg please hold your breath until that act of congress is actually passed. I think most regulators right now have bigger problems to tackle then whether to enact a silly requirement to limit the number of claims in a patent application to 5/25.

    Reply
  12. Fairness is not relevant when we’re discussing ignorance of the art lowly.

    “Am I to be blamed for ignorance of how exactly the examiner will interpret a claim term?”

    Come on now, you already know the answer to that question, you’re not ignorant of that. They’ll interpret it as broadly as suits their needs and can be gotten away with.

    Actually it was a joke. But a true one none the less. A person that is willing to cooperate makes 25 or less claims, including at least one claim that is nearly garunteed to be allowable, or perpares an ESD and does the best job they can with infinite claims.

    In all seriousness, I’m pretty sure I could prepare a decent ESD in just about as long as it takes to examine an app. Ref 1: doesn’t show at least feature x, Ref 2: Doesn’t show at least feature y Ref 3: Doesn’t show at least feature x and it wouldn’t be obvious to combine 1 or 2 with 3 because they’re entirely different designs/devices. Repeat. Could probably have that done before I could write up an OA.

    Reply
  13. “Unfortunately your ignorance of the state of the art at the time of filing is not an excuse so far as I know.”

    So it’s fair for the examiner to make an awful first rejection, stick to it and final me so he can get a rce, THEN finally do his job for real and find the reference that he should have found the first time?

    Am I to be blamed for ignorance of how exactly the examiner will interpret a claim term?

    “Your blaming the examiner for your failure at claim drafting is merely an indication of your irresponsibility, ignorance and being unwilling to cooperate.”

    Is this a joke? Unwilling to cooperate?

    Reply
  14. My feelings about this case can best be expressed by a quote from the movie “Fargo”

    (William H. Macy playing John Dudas)

    Federal Circuit: “Mr. Director, you call this a brief?”

    Director (played by Macy): “I answered the darn – I’m cooperating here! I’m cooperatin with ya”

    Reply
  15. I thought the Tafas brief had much deeper coverage of the Chevron issue. Before the two part Chevron test can even be applied, the contested rules have to be 1) formal rulemaking; and 2)have to be within the rulemaking authority granted by statute, clearly the law only gives the PTO authority to promulgate rules facilitating continuations that are requested by the applicant not restricting them.

    Both briefs were quite adept at pointing out how the PTOs own actions and arguments contradict their primary assertions.

    I can’t wait to see the PTO brief.

    Reply
  16. Sounds good to me Lowly, it would reflect what is already going on in the office (with respect to the numbers of claims). Unfortunately your ignorance of the state of the art at the time of filing is not an excuse so far as I know. Your blaming the examiner for your failure at claim drafting is merely an indication of your irresponsibility, ignorance and being unwilling to cooperate. And fortunately an act of congress may just be right around the corner.

    Reply
  17. “(like the 1 garunteed RCE, and the ability for you to tell the office why you couldn’t have submitted the claims beforehand) ”

    I don’t suppose the office will accept “because the examiner didn’t find this reference until the first RCE and didn’t explain to me how he was interpreting this term until he issued a final,” will they?

    If these rules actually passed, I’d freakin appeal everything. I’d never use up my RCE. I’d file 5/25 applications where each independent claim was directed to a patentably distinct invention so I’d get a 5 way restriction requirement and thus keep the thing alive with divisionals (although I guess the office could change its stance and suddenly have examiners never issue restriction requirements). I’d file 10 applications on the same day, each with similar but patentably distinct claims.

    Thankfully, the only way these rules will ever pass is by an act of congress.

    Reply
  18. There are a few who think like you do Itsallabout, but the fact remains we’re still a gov agency.

    “has at least two safety valves that keep it from affecting substantive rights of the applicant. ”

    So, if we have some safety valves (like the 1 garunteed RCE, and the ability for you to tell the office why you couldn’t have submitted the claims beforehand) then a rule is OOOOOOO K.

    “Second, Rule 105 states expressly that “I don’t have that information” is an acceptable reply, in which case the Office may NOT regard the application as abandoned for failure to respond.”

    That’s correct. But the app can then be hit with ineq conduct later if he did know of such information. Analogously, the applicant could claim that he could not have earlier submitted the claims he is trying to get a second RCE on because the CIA prevented him from doing so by threatening his life but have now ceased threatening him. Petition/RCE granted, ineq conduct at trial because it was a lie.

    “To start with, the proposed rules say that the PTO can refuse to examine the RCE at all. This is contrary to the express language of the Patent Act, and clearly substantive.”

    Nice argument, but it doesn’t actually say that. It says examination may be put off until the excuse has been vetted. This may be indefinitely if you never send in a response, and your app may go abandoned after 6 mo. Would you be happier if we sent you an action stating you had to send in your excuse before we sent you an issue fee, but that the application was in condition for allowance after an examination? No? Didn’t think so. What about if our “examination” consisted of a 10 word word search that returns 0 results and we call it a day?

    Likewise, sending in a reply to rule 105 that states “we know this information but refuse to tell you” will result, I suppose, in a notice of noncompliant response, and eventually in abandonment after 6 mo. from last action.

    And hey, I wasn’t the one to bring up USC 133, I’m just saying that if it did excuse (which it likely does not) all the rest of the substantive measures in 105 etc. then it excuses any substantive portions of the new rules in the same manner. And let’s be real, the part that is substantive is a. abandonment or b. loss of FD.

    And you’re right, sorry about that sentence I noticed it sucked when I wrote it but I type these up so fast I don’t really care. This is leisure.

    Reply
  19. Itsallaboutthemoney

    My understanding is that applicants’ fees fully support the PTO. So it is not about the money. It is the inability of the PTO to attract and retain good examiners and to provide them with excellent searching tools and classification system.

    Having a revolving door of patent examiners is very expensive. You put them through expensive training and then when they get to be self-supporting they leave.

    Reply
  20. This all comes down to money. Think about it. Why should the patent office really care if a hundred continuations were filed or even hundreds of claims? The answer is lack of money. If Congress raised the patent fees to pay for the services provided by the USPTO to an amount comparable of what private industry would charge for that same service (and let the USPTO keep and apply the money to these services instead of siphoning it off), most of the USPTO-practitioner hostility would vanish as would all these squeeze the system efforts forced onto the USPTO. In fact, Congress should allow the USPTO to charge $200 per hour for it’s search and office action preparation services. The USPTO then would be encouraging the filing of hundreds of claims and continuations and its customers could pursue their client’s causes to meet the needs of their client.

    Reply
  21. “In that event, rule requirements can make up ‘any action’ and the new rules requiring (In an OA) you to tell the office why the claims couldn’t have been presented prior to the final in the event you used your RCE already is also ‘an action’.”

    Keep working at that English language. The above is almost comprehensible. You might want to consider (but you probably won’t, since you’re not truly interested in a rational discussion) that 37 cfr 1.105 has at least two safety valves that keep it from affecting substantive rights of the applicant. First, the Office can only require information known to applicant that is “reasonably necessary” to examine the application. Since the Office is required by law to examine the application, this is a reasonable procedural requirement to ensure that the right information is considered. Second, Rule 105 states expressly that “I don’t have that information” is an acceptable reply, in which case the Office may NOT regard the application as abandoned for failure to respond.

    You suggest that this is no different from the proposed requirement to provide an acceptable excuse in order to have an “extra” RCE examined. To start with, the proposed rules say that the PTO can refuse to examine the RCE at all. This is contrary to the express language of the Patent Act, and clearly substantive. The PTO says it will examine the case if the excuse is good enough, but won’t otherwise. Thus, a bona fide response that is deemed “not good enough” will result in “abandonment,” a substantive rule change.

    Sorry, 35 USC 133 does NOT provide cover for a rule change that allows the PTO to refuse to examine a case simply because they don’t think an answer is good enough. You’ll have to look elsewhere in the statutes for that cover. And I don’t think you’ll find it.

    Reply
  22. (2) this Rules package is clearly substantive (no matter what “rhetorical nonsense” the USPTO blathers). For the USPTO to win, the Federal Circuit would have to have “stare decisis” amnesia , and that isn’t going to happen.

    That rhetoric just happens to be “what is the truth”. I agree that they’d have to have “stare decisis” amnesia or change what is blatantly a false interpretation of of the prior decisions. If any rule that is substantive *at all* is invalid then there go many of our rules, and many future rules.

    The question before the court when determining if a rule is “substantive” or “procedural” has also been laid out and was addressed in the previous thread. Should it, and does it not involve seeing if there is a mere procedure lain out by the rule that must be followed in order to be satisfied so that no substantive right is affected just as in every other rule that has been assumed not to be substantive? In this case there clearly is a procedure lain out that will result in no substantive right being affected. You submit the reason that your amendment could not have been earlier produced and no right is ever affected.

    Reply
  23. Go d, go for lunch and I come back to this bunk.

    “You’re way confused, e6k.

    35 USC 133 authorizes the Patent Office (actually, it requires the Patent Office) to regard an application as abandoned upon failure of the applicant to prosecute the application within six months after ANY ACTION therein. Unless you’re trying to tell us that a request for information is not an “action” in the prosecution of the application, then the Office regulations regarding abandonment for failure to respond to a request for information is completely authorized by statute, and merely procedural.

    Nice try, though.”

    Thanks for bringing this up. In that event, rule requirements can make up “any action” and the new rules requiring (In an OA) you to tell the office why the claims couldn’t have been presented prior to the final in the event you used your RCE already is also “an action”. And, by that same token, apparently no effect of any rule that affects “a right” of the applicant runs counter to the statute since it happened in “an action”. BTW, you get 6 mo to respond under the new rules iirc.

    “The fact that an application can be abandoned by failing to comply to a procedural rule does not transform the procedural rule into a substantive rule.”

    Then the fact that an application can be abandoned (or not accorded a prior filing date in the alternative) by failing to provide a reason the claims could not have been presented earlier does not transform the procedural rule of having to submit such reason into a substantive rule. Lol, let’s play tit for tat!

    “Instead, the question is whether the rules, when followed by applicant and/or the USPTO, involves a right of applicant.”

    I’m aware that is the question being put forth. You focus on “when followed” but really that is irrelevant, what about “when not followed”? That is what the actual question revolves around. Obviously when the new rules ARE followed by applicant no right is involved. It is only when they FAIL to follow the rule that a right is involved. Now, wouldn’t you say that if the applicant fails to follow rule 105 then subsequent abandonment involves a right of applicant? Yes or No pds. Does abandonment as a result of failing to follow the rule constitute an involvement of a right of applicant? I’m assuming you say No even though the answer is yes. So if they fail to follow the new rules and abandonment follows then all of a sudden one rule that wasn’t followed is substantive whereas the other is not? Ridiculous. Calling 105 completely not substantive is ridiculous, and whether 105 is substantive is not a question I have seen addressed before a court. It is a procedural rule with substantive side effects if you don’t follow them. So are the new rules. So are many other rules. The fact that these new rules are more difficult in some situations (read nearly all) to comply with than the previous rules is irrelevant.

    Reply
  24. Does it really strike anyone odd that the one person who is rallying for the PTO is e6k? Really? Is there a greater contrarian among you (excluding Max, if you will)?

    In the words of the great T.O. Owens, “get your popcorn ready.”

    Reply
  25. e6k,

    You need to get real. GSK’s brief again exposes the sheer sophistry of the USPTO’s position on these continuation-claim Rules. The Federal Circuit won’t have to go further than the following argument: (1) the USPTO has no authority to enact substantive regulations; and (2) this Rules package is clearly substantive (no matter what “rhetorical nonsense” the USPTO blathers). For the USPTO to win, the Federal Circuit would have to have “stare decisis” amnesia , and that isn’t going to happen.

    But if the Federal Circuit wants to go further (including blasting the USPTO hierarchy for flouting the APA, RFA and OMB rules), more power to them. How the USPTO is going to address GSK’s arguments at oral argument with a straight face in view of what should be blistering questions from the Federal Circuit bench should be a sight to behold and hear. I suggest getting your popcorn (and may be your favorite malt beverage) ready for December when this “blood bath” is scheduled to take place.

    What is also really sad is how much ink, effort, money and frustration has been spent by us in the private sector to bring these thoroughly improper and misguided Rules to ground. We can only count the days to when the current USPTO hierarchy is gone, and with it hopefully this warped attitude about what is needed to make USPTO practice run more smoothly. And it’s going to take awhile for my anger over the current USPTO hierarchy to subside.

    Reply
  26. “Only if the Rule complies with the statute and is within the PTO’s powers to promulgate.”

    So, Tafas statement is not correct. They merely add that statement in for no reason.

    “And I think you misread Tafas’ argument re: Chevron deference. Go back and read Chevron, Mead, Adams Fruit, etc. Then read what Tafas argues, it’ll make more sense then.”

    I would like to. I’ll have time after the end of the year. For now it’s laundry time>amendment time. Although, from my recollection, what they’re trying to say about Chevron is that Chevron only applies to rules that are already in effect (and were presumably issued properly). Right/Wrong?

    “It is a shame that your strongest argument is about “mischief to be brought against other new rules that are proposed in the future.””

    That’s only part of the problem though if procedural rules that have substantive effects are all called into question.

    “but of course any rule will [substantively] affect (adversely or positively) the ability of applicants to secure claims under the existing statutory scheme. So what?”

    That is the office’s point.

    Reply
  27. You’re way confused, e6k.

    35 USC 133 authorizes the Patent Office (actually, it requires the Patent Office) to regard an application as abandoned upon failure of the applicant to prosecute the application within six months after ANY ACTION therein. Unless you’re trying to tell us that a request for information is not an “action” in the prosecution of the application, then the Office regulations regarding abandonment for failure to respond to a request for information is completely authorized by statute, and merely procedural.

    Nice try, though.

    Reply
  28. 6K

    You still don’t get the difference between substantive and procedural. The PTO can make procedural rules (e.g., 37 CFR 1.25 sets forth how deposit accounts are to be used). The fact that an application can be abandoned by failing to comply to a procedural rule does not transform the procedural rule into a substantive rule.

    The question isn’t whether or not failure by the applicant to meet the requirement of the rules involves a substantive right (e.g., loss of patent rights due to the USPTO abandoning the application).

    Instead, the question is whether the rules, when followed by applicant and/or the USPTO, involves a right of applicant.

    To quote GSK’s brief:
    Under that authority, any rule that “‘effects a change in existing law or policy’ which ‘affect[s] individual rights and obligations’” is substantive. ALDF, 932 F.2d at 927 (internal quotations omitted); see also Chrysler Corp. v. Brown, 441 U.S. 281, 302 (1979) (Substantive rules are those that “affect[]individual rights and obligations.”) (internal quotations omitted); Am. Hosp. Ass’n. v. Bowen, 834 F.2d 1037, 1045 (D.C. Cir. 1987) (Rules are substantive if they “grant rights, impose obligations, or produce other significant effects on private interests . . . or [] effect a change in existing law or policy.”) (internal quotations omitted).

    Thus, a distinction (ridiculous or not) has been made by the courts in many instances. Sorry 6K, whatever argument you are trying to peddle is a loser and isn’t going to prevent these rules from being completely shot down by the Federal Circuit.

    FYI: A word to an aspiring attorney, good lawyers don’t waste time on loser arguments.

    Reply
  29. The problem I had with the rules was not that the Office didn’t have the “power” to promulgate them but that(1) the rules were incomprehensible at the time of their enactment; and (2) there was no evidence (or logical argument) showing that enactment of the proposed rules would accomplish what they were intended to accomplish.

    Of course the PTO has the “power” to propose rules, and of course those rules must not contradict the statutory scheme, but of course any rule will affect (adversely or positively) the ability of applicants to secure claims under the existing statutory scheme. So what?

    Reply
  30. “Does the pto have the “right” to deny issuance of an application based on breach of a “rule” instead of only having the “right” to deny issuance based on failure to comply with the statute?”

    Only if the Rule complies with the statute and is within the PTO’s powers to promulgate.

    And I think you misread Tafas’ argument re: Chevron deference. Go back and read Chevron, Mead, Adams Fruit, etc. Then read what Tafas argues, it’ll make more sense then.

    It is a shame that your strongest argument is about “mischief to be brought against other new rules that are proposed in the future.” If your Office stuck to promulgating rules within its statutory authority, it wouldn’t be in this embarrassing pickle.

    Face it, 35 USC 2 restricts what your Office can do to affect substantive patent law. Congress kept that power for itself, sorry.

    Reply
  31. Having it withdrawn is not the same thing as failing to comply. Nice try tho.

    Reply
  32. “Hmmm, anyone ever fail to comply with a request for information? What happens when that happens? A b a n d o n m e n t.”

    I’ve “failed” to comply twice; instead I just C a l l e d t h e S P E. And in the next office action the request was W i t h d r a w n.

    Reply
  33. “I like the phrase “patina of legitimacy,” and hope to use it one day myself in a pleading.”

    Me too, totally awesome phrase and I thought the same thing when I read it.

    Sorry my additional comment from last night appears to not have gotten published due to my leaving with a female companion at an inopportune moment. I will post it when I get the chance.

    “did you just make 6k’s point for him, again?”

    Yes, he did, both of them. But he still doesn’t get it. I’ll post my reply that didn’t get sent last night later. But for now, in one instance he thinks I confused a rule with a statute, whereas I was actually using that distinction to make a point. Let me spell it out for you p, the subject above is: Does the pto have the “right” to deny issuance of an application based on breach of a “rule” instead of only having the “right” to deny issuance based on failure to comply with the statute? If the answer is “No” as Tafas asserts then failure to comply with a request for information should NEVER be allowed to abandon an application. Yet, that is what happens by rule 105. Thus, it seems that the office does, in certain circumstances, posses the “right” to deny issuance of an application for failure to comply with a *rule* as opposed to being limited to denying issuance based on the *statutes*.

    “It appears that even IF the USPTO is successful in arguing its point of non-substantive rulemaking, they still fail in that the promulgated regulations add requirements not covered by the statute.”

    That is how, if at all, the rules should fall. This is also why pds et al. I do believe are arguing that the rules are substantive (amongst other things, burden shifting etc). However, it is clear from their wording that they are “procedural rules that are incidentally substantive” as are so many other rules. Any ruling involving them being purely “substantive”, or holding all procedural rules that are “incidentally substantive” to be purely “substantive” will be a disaster for other forthcoming rules, as well as current rules being challenged as also being substantive (and thus improper). Apparently, under Tafas’s reading of Chevron, the only reason the office gets difference on the hundreds of rules already in place is strictly because they are already in place and are not “proposed rules”. Interesting take, but it seems a bit of a ridiculous distinction to make, and if adhered to by the courts in these type of situations still leaves room for much mischief to be brought against other new rules that are proposed in the future.

    Reply
  34. ” I’m guessing e6k did not read the brief.”

    Perhaps he did, but he’s showing that playing a lawyer in the comment sections of the blog isn’t his strong point.

    Reply
  35. pds,

    I’m on your side and all …

    but …
    >

    did you just make 6k’s point for him, again?

    Reply
  36. Just argue: Not substantive and let the chips fall where they may after showing a few examples of other already in effect rules that are “procedural” until reviewed under the same standard proposed by the DC.

    Posted by: e6k | Sep 29, 2008 at 12:08 AM

    Well, e6k may come out on the wrong side of the decision, but this is not a bad approach for the USPTO to take in its reply brief. It’s certainly something I would include if I had remaining space after my other, hopefully better, arguments.

    Reply
  37. While looking at an article by Hricik, Geczi and Thomas on a separate matter, I was struck by Emunim V. Fallsburg, 577 N.E.2d 34, 47, (N.Y. 1991), People ex rel. Kilquist v. Brown, 561 N.E.2d 234, 237 (Ill. App. Ct. 1990), In re Agency of Admin., 444 A.2d 1349, 1352 (Vt. 1982) and Dep’t of Natural Res. v. Wingfield Dev. Co., 581 So. 2d 193, 197 (Fla. Dist. Ct. App. 1991).

    It appears that even IF the USPTO is successful in arguing its point of non-substantive rulemaking, they still fail in that the promulgated regulations add requirements not covered by the statute.

    Reply
  38. The Final Rules are going down like a cheerleader on prom night.

    6k, do you honestly think the PTO has a snowball’s chance in hell of winning?

    Reply
  39. Funny quote from Tafas brief “Although the USPTO did carry out a sort of ersatz notice and comment period with its proposed rules, as part of an attempt to lend a patina of legitimacy to its controversial Final Rules, the USPTO stated in its own interpretive material that is was not required to provide notice and comment…” since the rule were allegedly procedural, thus rendering the rules informal and exempt from Chevron defense.

    Like I said before, Barney Fife with a machine gun.

    I like the phrase “patina of legitimacy,” and hope to use it one day myself in a pleading.

    Reply
  40. I just finished reading the entire GSK brief. Its inconcievable where e6k gets off thinking that the PTO has a chance. Sometimes you just have to know when you’re beat. I’m guessing e6k did not read the brief.

    Reply
  41. “Also, while you’re at it, may as well challenge rule 56 for kicks. A more substantive rule I cannot think of.”

    See 18 USC 1001.

    Reply
  42. “Hmmm, except the whole part of 132b. This law is like thousands of others that say a: do x b: except also meet y condition.”

    Unfortunately for the PTO (and your cheerleading), 35 USC 132(b) does not provide y conditon besides being “at the request of the applicant.”

    “The Director shall prescribe regulations to provide for the continued examination of applications for patent at the request of the applicant. The Director may establish appropriate fees for such continued examination and shall provide a 50 percent reduction in such fees for small entities that qualify for reduced fees under section 41(h)(1) of this title.”

    The continued examination is provided at the request of the applicaton (period). The Director may prescribe regulations as to how the request is made and set an appropriate fee, but nothing in the language gives the power to deny the request on a substantive basis (i.e., too many requests already having been made), which is different than denying on a procedural basis (the request does not identify the application number, inventor name, the filing date or the title of the invention).

    “I also like “No right is given to permit the Director to fail to give a notice of allowance or to issue a patent if the applicant has satisfied all of the eligibility requirements of the patent statutes”. Hmmm, anyone ever fail to comply with a request for information? What happens when that happens? A b a n d o n m e n t.”

    Bone up on the differences between rules and statutes. I’ll give you a hint. 37 CFR 1.105 is NOT a statute.

    Reply
  43. Good reading! Go PTO! The only argument these guys have is: Substantive. Just argue: Not substantive and let the chips fall where they may after showing a few examples of other already in effect rules that are “procedural” until reviewed under the same standard proposed by the DC.

    Also, JD, pds etc. I understand better what your position is based on after having been listening to some SC cases over the weekend. It has merit, but the fact of the matter is that if we use the proposed standard for “substantive” then more than these rules fall. Should this case prevail on those grounds then there will be more mischief in the future than would allow the courts to just toss in that reasoning now in such a big case and have to deal with it later.

    I love the part “shall prescribe regulations to provide for the continued examination of applications for patent at the request of the applicant” … Nothing in Section … 132b supports the USPTO’s assertion that it has the right to set the “conditions and requirements for continued examinations”. Hmmm, except the whole part of 132b. This law is like thousands of others that say a: do x b: except also meet y condition.

    I also like “No right is given to permit the Director to fail to give a notice of allowance or to issue a patent if the applicant has satisfied all of the eligibility requirements of the patent statutes”. Hmmm, anyone ever fail to comply with a request for information? What happens when that happens? A b a n d o n m e n t.

    Oh, but no right has been given. That rule is substantive!

    If Tafas wins under the current DC ruling then the next thing you guys should challenge is the request for information rule. Also, while you’re at it, may as well challenge rule 56 for kicks. A more substantive rule I cannot think of.

    Reply

Leave a Reply

Your email address will not be published. Required fields are marked *

You may use these HTML tags and attributes: <a href="" title=""> <abbr title=""> <acronym title=""> <b> <blockquote cite=""> <cite> <code> <del datetime=""> <em> <i> <q cite=""> <strike> <strong>