Dr. Tafas Files Declaratory Judgment Action to Block Implementation of Continuation Rules

Dr. Tafas invented a high throughput diagnostic microscope sold through his company, Ikonisys. He also has a patent pending on a method for improving automotive efficiency. Tafas protects these inventions through patents and has now sued the USPTO. Tafas asks the E.D. Virginia District Court for a declaration that the PTO’s newly finalized rules are in conflict with the Patent Act and are thus invalid.

Commentary: Tafas will likely lose here. On its face, the rule may operate within the laws because it allows Tafas to file his continuations if he has good reason to do so. The law certainly does not require the PTO to examine clearly repetative or bad-faith continuation filings. If applied lightly, the new rules would simply block those “bad” continuation filings and the good ones will pass through.  The better case will be raised by an applicant who is denied a continuation filing despite having a “good” reason for the additional filing.

Files:

Press Release from Kelley Drye, his attorneys:

Washington, DC, August 22 – Within a day of the United States Patent and Trademark Office (“USPTO”) publishing its final rule changes in respect to continuation practices, the USPTO and its Director, Jon Dudas, have been sued in the U.S. District Court for the Eastern District of Virginia by Tafas, an independent inventor. Tafas, represented by the law firm of Kelley Drye & Warren LLP, is seeking a declaratory judgment that the new continuation rules are null and void, and is seeking a preliminary and permanent injunction prohibiting the USPTO from putting the new rules changes into effect.

The complaint, and memorandum of law in support for the motion for preliminary injunction assert that the USPTO exceeded its Congressionally-delegated rulemaking authority and that the new rule changes specifically violate Section 120, 132, and 365 of the Patent Act. It is further asserted that USPTO failed to comply with the Administrative Procedure Act in promulgating the new rule changes. The suit also alleges that the USPTO has engaged in retroactive rulemaking and has failed to consider USPTO-induced reasons for multiple continuation filings.

Furthermore, Constitutional impediments to the new rule changes are raised. It is asserted that the USPTO did not comply with Article I, Section 8, of the United States Constitution by failing to adequately determine the effect of its rulemaking on the promotion of the “progress of science and the useful arts.” It is also asserted that the USPTO’s rule changes violate the taking clause of the Fifth Amendment.

Kelley Drye Partners William Golden, Steven J. Moore, James E. Nealon and Senior Associates Joseph Wilson and James Moriarty are representing independent inventor Tafas.

114 thoughts on “Dr. Tafas Files Declaratory Judgment Action to Block Implementation of Continuation Rules

  1. I think Tafas has a good chance to prevail here. The new rules are retroactive which I think would violate the APA and (while I am not positive about this), I don’t think the court would have authority to strike down parts of the rules. That is, either the rules stand or fall. However, I do think for political reasons the Virginia District court would be reluctant to overturn anything the USPTO does. I think only the CAFC would have the balls to right this mess. Read the dissent in the Bogese case. So I think it is only a matter of time. I also suspect Tafas will attempt to file a continuation on Nov. 1 so then it can then be declined, upon which I would expect him to amend his complaint. Then his will be a “better” case as Dennis points out.

  2. I agree with MS, the rhetoric just distracts. I’m guessing this complaint won’t be the only one in the pipeline though.

    Re: “bad faith” continuations – It isn’t bad faith to preserve your ability to craft claims that best reflect an invention you’re commercializing – something you may not appreciate when you first file.

    What strikes terror most is how the PTO will continue to misapply the term “patentably indistinct.” The new rules have been rolled out with no mention of Examiner retraining on this one. Look for continued whimsy in restriction requirements with even more dramatic effects on IP rights.

  3. Simply out of curiosity, how many of those posting comments here have studied the plaintiff’s complaint?

    I express no opinion on the propriety of the course taken seeking a preliminary injunction. Neither do I express an opinion concerning ripeness. I do, however, hold to the view that this is not a case of constitutional dimension. I also hold to the view that a shotgun approach towards stating deficiencies about what the PTO is doing weakens the force of arguments containing real legal substance.

    There are two questions I view as being of paramount importance, and I believe they are really quite simple. First, are the rules consistent with the relevant portions of Title 35? Second, have these rules been promoted consistent with the substantive and procedural requirements of the Administrative Procedure Act? Why other issues are presented in the complaint in a manner resembling a traveling evangelist preaching under a tent escapes me.

    If the plaintiff is intent on pursuing his case, then I hope at the very least the complaint is amended to eliminate rhetoric and focus squarely and forcefully on the real issues.

  4. The type of saviour I need knows the inner workings of Microsofts OS and how to send e-mails. Could Jesus do that:)

  5. [Apologies everyone: this is to Djinngenie]

    Djinngenie, I appreciate your remarks. If you want to pursue this discussion, please feel free to e-mail me at the address indicated higher in this thread. But to address your comments briefly:

    Deuteronomy 20: Yes, those were God’s instructions to the Israelites as to how they should act more than 3400 years ago. Nowhere in the Bible are Christians today commanded to be like Israelites in how they relate to the cities or nations, or is it even implied that they should follow those instructions. Jesus in fact contradicted rabbis’ teaching on relationships with enemies, and He completely overturned the Jewish mindset of the day:

    [Jesus said,] “You have heard that it was said, ‘You shall love
    your neighbor and hate your enemy.’ But I say to you, love your
    enemies and pray for those who persecute you, so that you may be
    sons of your Father who is in heaven; for He causes His sun to rise
    on the evil and the good, and sends rain on the righteous and the
    unrighteous. For if you love those who love you, what reward do
    you have? Do not even the tax collectors do the same? If you greet
    only your brothers, what more are you doing than others? Do not
    even the Gentiles do the same? Therefore you are to be perfect, as
    your heavenly Father is perfect. (NASB (R))

    Matthew 10: The sword is metaphorical – even a babe should understand that. It is metaphorical to the same extent as the sword that was to pierce Mary’s heart (Luke 2:35). And yes, if I may, Jesus **did** come to cause division: dividing the new from the old, the light from the darkness, and calling a people who love God and love their neighbors to Himself.

    In so far as higher rank goes, Jesus was speaking as the Son of God, and Paul by the Spirit of God, so neither is higher.

  6. Dear Djinngenie,

    With all due respect, if there be a point in your post, I’m not sure I see it.

    Are you suggesting that, to learn anything from the Bible, or from any other great book, you have to buy into it hook line and sinker?

    [R]eal anonymous made a currently crucial and central distinction, i.e.,
    “Regarding fanatics, however, there is one very significant difference between “Muslim fanatics” and “Christian fanatics” that I hope doesn’t escape your attention.”
    He “punctuated” his point, which, of course, is painfully true, with quoted phrases.

    [R]eal then correctly and courageously criticized religion with its war count and communicated the corresponding pertinent Constitutional credo so clear to our much wiser founding fathers.

  7. Dear realanonymous

    (to continue the threadjacking, and to take my mind off the continuation rules)

    Doesn’t Jesus outrank Paul? Who’s a real Christian to obey?

    “Do not think that I have come to send peace on earth. I did not come to send peace, but a sword. I am sent to set a man against his father, a daughter against her mother, and a daughter-in-law against her mother-in-law” (Matthew 10:34-35)

    And, uh, do you ever read the Old Testament? Explicit instructions on warfare. Notice the above quote from the Koran discusses casting terror “into the heart.” The OT is much more explicit about what to do with enemies–slavery or death. One example:

    “When you approach a city to fight against it, you shall offer it terms of peace. If it agrees to make peace with you and opens to you, then all the people who are found in it shall become your forced labor and shall serve you. However, if it does not make peace with you, but makes war against you, then you shall besiege it. When the LORD your God gives it into your hand, you shall strike all the men in it with the edge of the sword. Only the women and the children and the animals and all that is in the city, all its spoil, you shall take as booty for yourself; and you shall use the spoil of your enemies which the LORD your God has given you… Only in the cities of these peoples that the LORD your God is giving you as an inheritance, you shall not leave alive anything that breathes (Deuteronomy 20:10-17)

    Perhaps you shouldn’t quote-mine the Bible.

  8. JAOI’s personal comments (including two taboo subjects; read at your own peril):

    ON POLITICS: Above all else, Bill disgusts me because of his disrespect for the office of President of the United States. Hillary is perhaps the smartest woman in politics, perhaps too smart; I don’t trust her to put We the People above her own interests. VP Gore disgusts me for two reasons: (i) I believe he would liked to have seen a few more Katrinas last year just to prove him right; Gore is a total phony (which is not to say anything about warming), and (ii) I had devastating personal disappointment with his VP non-feasance.

    I despise all who would see America fail here or there just so their political interests can then prevail. I am not at all comfortable with fellow citizens who don’t care about our nation losing the advantage and prestige of being top dog and being suckered into the crowd of second-rate nations. Being on top isn’t everything, but it is the American thing, and that is something to be cherished.

    Bush II’s sincerity scares the living sh-t out of me. However, I believe neither Gore nor Kerry has any concept whatsoever of what sincerity is – and that’s even worse – for that you would need to have a heart and they don’t. Also, I’d guess we’d have been hit more than once so far had either Gore or Kerry become President. I believe it likely we will be hit again no matter; it is just a matter of time. The best chance our nation would have is with an independent, perhaps Bloomberg, I hope Bloomberg runs and wins, I really really do.

    I also have a personal grudge v. Bush II; he is responsible in large part for causing and or allowing my ability to provide for my family to become threatened – - as a self-employed inventor, patents are my livelihood. Owing to the weakening-as-we-speak American patent system, far fewer self-employed inventors will wind up on easy street, and many many more will wind up on the street. And I personally hold Bush II and all those bi-partisan bastards in Washington culpable for allowing organized banking lobbies to cut the heart out of the bankruptcy laws instead of routing out the abuses thereof.
    ———————–

    ON OUR CONSTITUTION: I have perhaps a more pragmatic allegiance to the Constitution than others, especially during war time. I believe the preamble rules the rest:

    “We the People of the United States, in Order to form a more perfect Union, establish Justice, insure domestic Tranquility, provide for the common defence, promote the general Welfare, and secure the Blessings of Liberty to ourselves and our Posterity, do ordain and establish this Constitution for the United States of America.”

    For example: It makes perfect sense to me to profile based on nationality, behavior and other factors. It makes less sense to do random searches of backpacks to get on the subway during rush hour. I don’t want me, my family, my neighbors or any of my fellow Americans to die at the hands of crazies, and I would turn my head if pragmatic means are deemed necessary to “PROVIDE FOR THE COMMON DEFENCE.” The gruesome realities of the day make our election of leaders even more important than in peacetime. Lest anyone have any doubt, we are in the worst kind of war, a holy war, and, given the variety and availability of wmd, today’s holy war is much worst than the Crusades.

    Lord only knows why the attack on the World Trade Center in 1993 wasn’t our wake up call – - had we had a hawk instead of a preoccupied love-dove in the oval office, perhaps it would have been our wake up call and those two proud American icons in the world’s most famous and prestigious skyline would be standing today and we wouldn’t have lost three thousand citizens and America’s finest on 9/11, and perhaps tens of thousand young Americans wouldn’t have been lost to the grave and physical and mental wounds that will never heal, and perhaps we wouldn’t be so stressed in the Mid East, perhaps…
    ———————–

    ON RELIGION: My pastor was open minded, and my hero, and a great man who went on to the central Lutheran office to administer to teenagers’ needs en masse. After hours of debate with my him countless times in Sunday school and in Luther League gatherings, he was happy to let me believe what made sense to me and develop my own principles, not necessarily consistent with the rule of any organized religion.

    I’ll again share some personal thoughts I wrote a couple years ago for my family’s Christmas card: Feeling thankful and projecting prayers of thankfulness into the incredible universe is good for the body and spirit – - such thankfulness is positive thinking, and it fosters self-fulfilling prophecy.

    I favor in patriotism. Together, citizens comprise power greater than one. Historically, America’s democracy has thrived on strength, honor and principled Biblical behavior, and by helping one another.

    These not-particularly-religious principles, and these, comprise my personal beliefs.

    >He that hath principles should abide them.
    >He that hath principles and does not abide them should try harder.
    >He that hath no principles be damned, and that’s fine by me

    I take pride in being an American. Others don’t, and that’s their personal choice, and I have no problem with that. After all, this is America. That, however, is not my choice. Insofar as such well-deserved pride is a good positive feeling to have, others are missing out.

    I am grateful to be an American, and I give thanks at least daily for being an American, despite the fact that, during for the past couple of administrations, there is and has been a severe shortage of sensible studious statesmen in Washington, and despite that life in America seems to be growing scarier and scarier owing in part to the scarcity of leadership integrity in all three branches of government, leadership that abides the Constitution religiously.

    Yours Truly,
    Just an ordinary standup Constitutional philosopher(TM)
    a/k/a

  9. Just when you thought it couldn’t get any worse: Gonzales out, Chertoff in. Unreal. Perhaps though, this will seal a Democratic presidency. We certainly reap what we sow.

  10. [Begin religious statement: please skip if offended by any such statements]

    “It’s not worth sacrificing the US Constitution to prevent lunatic bombers from engaging in their lunacy. Of course, the greatest exploiters of this notion are not Muslim fanatics but Christian fanatics.”

    Touché . I fear religious tyrants much more than political ones. Perhaps that is why the founding fathers denied to the government the right to make laws of religious consequence.

    Regarding fanatics, however, there is one very significant difference between “Muslim fanatics” and “Christian fanatics” that I hope doesn’t escape your attention.

    The Muslim fanatics are the ones that know and obey the Koran, for example:

    [3.151] We will cast terror into the hearts of those who disbelieve, because they set up with Allah that for which He has sent down no authority, and their abode is the fire, and evil is the abode of the unjust.

    The Christian fanatics are the ones that don’t know or obey the Bible, for example:

    (Rom 13:1) Let every person be in subjection to the governing authorities.

    Yes, religion has been the cause of more wars that I can count. But see historically what has happened to any country that has tried to stifle “other” or “all” religions. Our founding fathers were much wiser than we.

    [End religious statement]

  11. I certainly hope so Malcolm. I dislike these people in charge probably more than you. They are far, far from conservative! They are radicals. And I agree, religion should have no place in any party.

  12. I watched the towers fall in Paris, where it seemed likely at the time that we would be next. The point is that if insane idiots want to make you miserable, there are a million unstoppable ways for them to do so. It’s not worth sacrificing the US Constitution to prevent lunatic bombers from engaging in their lunacy. Of course, the greatest exploiters of this notion are not Muslim fanatics but Christian fanatics. Ask Planned Parenthood to explain it to you if you don’t understand.

    Now, rather than soiling ourselves or, as certain lowlife media pundits have put it, going around and telling Arabs in the Middle East to “suck on” the business end of the US military, a sober person capable of rational thought might suggest that a good long term solution to the problem of insane idiots is, to the extent possible, preventing their population from growing.

    That requires asking a tough question: what makes people become insane idiots. The answers are obvious and closely related: poverty, religion and war.

    So let’s refresh ourselves. In 2004, the US population allowed itself to be convinced that John Kerry was a child-killing military criminal who wasn’t fit to lead our great country. It therefore re-elected a fundie president who believed that what America needed was to start a long war in a poor country to dethrone a dictator who opposed Muslim fanatics.

    At the same time, the same administration supports the tanking of public education and leaves the teaching of fundamentalist anti-science religious garbage like “intelligent design” “up to the States.”

    Okay, then. The stink is pretty bad.

    So this time around we surely won’t see candidates for President making bizarre claims about how crucial it is that the leader of the United States worship some kind of deity. Right? And we won’t see the annointed journalisming elites asking candidates whether they believe that “prayer” is “effective”. Right?

    Of course not. Because America doesn’t want to continue it’s slow downward spiral. Right?

  13. Malcolm is not unlike a lot of lawyers I know. When I was downtown that day – our office was somewhat near the White House – we had to evacuate. Before leaving, everyone with a heart was very upset, myself included, and concerned about another plane supposedly still airborn (that one, I guess, was United 93). On the way home, I wanted to enlist and/or blow some small country off the face of the map. I calmed down, being much too old for the army and not knowing who the hell was responsible, but I’ll never forget the partners carrying on like nothing happened as we left the building!

  14. “diapers?”

    Yeah, Malcolm. Some of us were at the USPTO on 9/11 and heard/felt the Pentagon roof fall (that was the second shockwave that we were having trouble explaining, while we were already seeing the smoke plume). Even though my experience was nothing like a military doctor friend of mine who was a first responder at the scene, I am plagued to this day with a consciousnesses that is involuntarily reverted to the mass on-foot migration from Crystal City and the smell of smoke every time I hear more than one siren.

    But Malcolm, I would much rather have a weak consciousness than a weak heart. Wouldn’t you?

    JAOI, in a best-case case scenario for Malcolm, his words were the result of scotch. In a worst-case scenario, they came straight from his heart. Either way, bear them no mind. The problem is his to cope with, not yours.

    Thank you for your post.

    “What to do?, what to do?”

    For now, keep trying to do what you know to be right, and don’t forsake truth that you know (“love your neighbor”, 37 CFR 10.18, etc.) for what you only think to be true (like Malcolm does with his arguments). This battle is much bigger than rule changes, and it isn’t going to end any time soon. Things seem to be going from bad to worse, but don’t get discouraged: that, I believe, is why we’re here.

    Responses and opportunities will become evident in the coming days and weeks – it’s often better to be methodical than quick. But that is no reason for anyone to sit idle… we can all find something good to be doing, … and I’m not only talking patents.

  15. JAOI,

    With all due respect, you are proposing to talk to the wrong end of the horse. Politics is a dirty business and those who swim in that business (politicians) must of necessity be dirty people.

    You start the conversation here, at the grass roots. You try to make enough people understand how important invention, innovation and the independent inventor are to the survival of this country, to the survival of the world. You will have succeeded when in an un-staged political Q&A some random person in the audience gets up and asks a candidate, “What about the independent inventors, what are you doing for them so they can do for us?”

    Look at what has happened with Global Warming. Now, yes I know there are probably some here who do not believe in AGW and the point is not to start a diversionary debate about that topic here but rather to point out that for good or bad that topic came to the forefront of the current political consciousness only through the grassroots. As a result, all the top runners in the American presidential race are talking about how they are going to liberate humanity from “energy” by injecting some corn-fed ethanol into our veins or by re-branding coal as “clean”. It all started in the grass roots, in some small college class room where a young Al Gore sat and took some notes. It took that many years for the message to build in volume and to get above the noise level. I am not aware of any college courses where students learn about the history of invention and the crucial role that independent inventors played in it.

  16. Good morning,

    9/11, you had to be there to understand.
    If you were not, go see the hole and you will begin to feel the deep human despair and depression as never before.

    History tells us it was the sacrifice and unified effort of We the People, including victory gardens, rationing and profiling for saboteurs, and the development of advanced technology that lead to the Allied victory in the big one, WWII, namely, the enormous expenditure of Allied resources to research and develop advanced technology comprised of:
    (i) mass manufacturing;
    (ii) RADAR;
    (iii) Enigma code breaking;
    (iiia) Wind Talkers (ingenious, not advanced); and
    (iv) nuclear fission.

    IF, and it is “IF,” as big an IF as was the outcome of WWII,
    If We the People are to prevail over coming decades (yes, more than one, maybe multiple generations of time) in the most hideous religion-inspired WWarIII in human history, brought home to each and every American on 9/11, the extreme advancement of technology is just as important now as it was to victory in WWII.

    Yet, in the advent of this almost inconceivable WWarIII, which could kill We the People in our very homes, our own Government (Congress, Judicial & Executive, even the PTO!), dummies down our most vital technology generator, our patent system. We are the dummies, the fools if we just let it happen!

    Our ability to invent advanced technology is just as vital today as it was in 1941. To paraphrase a great movie, “Network”:

    I want you to go to you desks, take out your keyboards and write, write like your life depends on it, write not only to those slugs in Washington, but also write for the Internet, press releases, TV, radio, print, all news media.*

    The God(s) of the Universe helps those who help themselves – - Deities don’t abide fools.

    * * * * *
    *Does anybody have resources to generate a list of those to contact, including office and home email addresses, postal addresses and fax numbers?
    * * * * *

  17. Malcolm,

    Now look yourself in the mirror and give the reflection a smug malco-villian smirk.

    JAOI– ignore those mud-grenades that the MM’s of this world toss your way. They know not what they do & desperately need forgiveness. We understand where you’re coming from. There was a time when America stood for something much grander.

  18. “He said, not really, our sense of time is just different from that of a fanatic. They don’t care how many years it takes to attack us again; they care mainly to make it bigger, much much bigger, than 9/11. His admonition hit a nerve and changed my outlook.”

    Did you stop at Walgreen’s on the way home and buy an extra large box of diapers?

  19. Dear Mr. T,
    Plez don’t give up – - don’t let the bastards get you down. We need all the heroes we can get, both real and imaginary.
    ————————-

    Dear me,
    Yes, I agree. Historically, we’ve survived grossly failed leadership from Washington many times, and I believe we will again. (You may enjoy watching the preview of this HBO special, “Assume the Position”: link to hbo.com ).
    We survived the Missile Crisis in ’63, when the two nuclear armed to the teeth super powers faced off.

    I agree with you, me; I agree that America will survive yet again.

    But suppose me and I are wrong? Never before in human history have so many varieties of WMD been so available to so many, perhaps even to even local terrorists groups. We’d all feel like real jerks if we wake up one morning after a few million citizens have been vaporized or critically infected, and one of our cities has been rendered uninhabitable for a couple centuries, and the next day another such tragedy occurs, and we are held hostage to further pre-positioned attacks day after day.

    Could it happen? No, never, you say, and I agree. But, who knows for certain? I certainly don’t. Can we count on government to protect us? Maybe, but maybe not!

    Make no bones about it: We are at war, war which is potentially as devastating to our country as WWII potentially was. As we read, learn and hopefully enjoy Patently-O articles and commentary, there are untold fanatics without and within our nation planning, preparing and praying that the next attack on our soil will crush We the People forever.
    ————————-

    Dear real anonymous,
    What to do?, what to do?, to ward off the dooms day scenario painted above by me to me.

    And I’m sure we’ve all heard the rhymed maxim:
    For want of a nail the shoe was lost.
    For want of a shoe the horse was lost.
    For want of a horse the rider was lost.
    For want of a rider the battle was lost.
    For want of a battle the kingdom was lost.
    And all for the want of a horseshoe nail.

    I’m sure you see where I’m going with this.
    If we toiled as farriers, it would be our charge to fix the horseshoe “nail” lest we lose the kingdom. Since we are toil in the IP world, our “nails” are American patents.

    For want of a patent, industrial leadership was lost.
    For want of industrial leadership, the industry was lost.
    For want of the industry, national prestige was lost.
    For want of prestige, respect was lost.
    For want of respect, world leadership was lost.
    For want of leadership, the kingdom was lost.
    And all for the want of a patent.

    I’m sure we are all aware of the “butterfly effect.”
    How much more powerful than a butterfly can a patent be?

    Our patent system is, of course, only one part of the awesome threat our nation faces today, but it is our part, our responsibility.

    It is compelling that we start reversing that trend that weakens our patent system. Anything else we can create to help preserve our country’s leadership before we lose it would be icing on the intellectual property’s communities cake. After all, we are smarter than your average bear. Knowing what we do, seeing what we see, we would be ashamed of ourselves if we awoke one day as citizens in a second-rate nation, or worse, having done nothing to help prevent our downfall, or our demise. Could we have prevailed in WWII if citizens did not sacrifice and do whatever they could to help win?

    In a casual conversation in January on our way to Washington, I said to a scholarly patent attorney, not to worry, it’s been over six year and we haven’t been hit again; they must be doing something right in Washington. He said, not really, our sense of time is just different from that of a fanatic. They don’t care how many years it takes to attack us again; they care mainly to make it bigger, much much bigger, than 9/11. His admonition hit a nerve and changed my outlook. We should all take heed.

  20. Me, I have to agree, though I have always thought of Carter as the most honest President we have had, well that I remember (but I remember 18% inflation too, and the hostage crisis).

    Step back, never forget that our government could be much worse than it is, and do be thankful you live where you have liberties and freedoms and opportunities that the great majority of the world’s peoples can only dream about. From what I can see, I still think our imperfect government is the best in the world, though more room for improvement is growing every day, and I don’t assume it will be the best X years from now if we continue on our present course.

    I would not call our government “terror spreading” in any sense (in the U.S., you are free to disagree with me), and might remind you to compare the problems in our government with those in other nations (try living in the M.E. or in Africa, where governments have and literally do stifle ideals which are *much* more important than the progress of science and the useful arts, which they stifle also by so doing). The founding fathers were wise to set up checks and balances in our government that have impeded the spread of corruption and totalitarianism which is, as evidenced daily, much more rampant in other countries.

    That said, I *do* agree with the other problems (e.g. corruption) you describe: it’s part of our human nature. And I think that Dudas and Peterlin *both* should reconsider the importance of being subject to *all* the government’s laws (e.g. 35 USC 3), regardless of any “higher” agenda (in quotes) they may think they have, lest the corruption which stalks us all further overtakes them, unawares.

    [I'll duck if the replies come in... comments27@nipra.org]

  21. Well, I don’t think the sky is falling – but these guys hastened the coming demise of U.S. manufacturing, lost all the good will the world had for us after Sept. 11th, and generally screwed up the government for a decade or more, and the Middle East has lost yet another opportunity – and been made less stable. They have also squeezed the middle class in insane ways, hastening the mortgage crisis.

    Such is life though, they are still better than Carter and we will survive.

  22. I too miss Ronnie and the days when Hannibal, Face and I would receive orders to jump in the van and take care of these things the simple way. The cancer has metastasized to the point of no return, I believe, because these perverts infect the foundations of our once great government. Tears come to Mr. T’s eyes!

  23. Dear real anonymous,
    Dear step back,
    Thank you for your comments – - I hope other readers also take your comments to heart; I certainly do.

    [Begin another political and patriotic statement by JAOI, a rehash of a previous post: please skip if offended by any such rehashed JAOI patriotic statements; this one is titled:]

    AMERICA’S ADVANTAGEOUS WORLD LEADERSHIP POSITION IS BEING ATTACKED FROM WITHOUT AND WITHIN.

    Are Americans willing to cede our standing as the leading world power and step down, and trust world leadership to an other nation?, perhaps a socialist nation?, or a communist nation?, or a (neo)fascist nation?, or a totalitarian nation?

    Could America slip into second, or even third place? How would this even be possible?

    Here’s how — it would take a confluence/sequence of events, such as, for example, some of the following all-too-plausible tragedies:

    A) Our patent system, which gives America a clear innovative advantage, is being dismantled inch by inch and this could lead to losing our world-wide competitive technological edge.

    B) The mighty American greenback, the world’s leading currency and life-blood of world commerce, has become a less-competitive store of value compared to the Euro.

    C) The “brain drain” has reversed, and we are losing our human capital advantage of trained and talented individuals to nations against which we are competing, while allowing increasing numbers of unskilled workers into our country.

    D) We are the world leader in energy consumption, while Germany is by far the advanced world leader in generating wind and solar energy, and France is the world leader in generating nuclear energy.

    E) Our military might is being stressed in the MidEast, and it could even get worse, and other nations are beginning to close the military might and technology gap.

    F) Our financial, commerce, transportation and other infrastructure systems are dangerously subject to the vagaries of the vulnerable Internet.

    G) Many of our infrastructure systems are in desperate need of modernization and overhaul.

    H) Our cities are targets for terrorists-sponsored and state-sponsored WMD attacks. New York and Washington could be struck, for example, by dirty nukes that render them uninhabitable for hundreds of years.

    “On July 4, 1776, we claimed our independence from Britain and Democracy was born. Every day thousands leave their homeland to come to the ‘land of the free and the home of the brave’ so they can begin their American Dream.” (Quoted from a U.S. President’s July 4th speech).

    European sentiment has been overtly and covertly advancing anti-American patent system trash aimed toward neutralizing our IP system; for example:

    (i) Reducing the ability to enjoin an infringer of a valid patent;
    (ii) Increasing the number of ways to invalidate a patent;
    (iii) Limiting the damages award so that it pays an infringer to refuse to license;
    (iv) Limiting the scope of, and possible ways an inventor can patent his invention; and,
    (v) Vilifying self-employed American inventors.

    Here are excerpts from an excellent, extremely judicious and well written comment, one of the best ever, posted on Jun 26, 2007 at 07:33 AM on this thread-link:
    link to patentlyo.com
    ————————
    “ … The bottom line is that the majority of European law is based on a far more socialist leaning basis than we’ve adopted in the US … different in the manner in which individual contribution to the common good is measured.

    “In the area of patent law, especially patent enforcement, Europe is damn near the least cost effective playground in the world …

    “The bottom line is Europe doesn’t enjoy the benefit of independent inventor’s contribution to innovation to the extent we do in the US because they don’t compensate for it. We do, because we compensate for it. Being an independent inventor is, financially, among the highest risk professions. …

    “AMERICAN CULTURE EMBRACES THOSE WHO TAKE RISK AND SUCCEED IN BEING CORRECT DESPITE THE SPEWING OF ‘EXPERTS’. EUROPEAN CULTURE, BROADLY SPEAKING, DOESN’T. … WE’LL CONTINUE TO OUTSTRIP EUROPE WHILE THEY TAKE THEIR 7 WEEKS OF VACATION EVERY YEAR. … [emphasis added]”
    ————————

    Despite this optimistic view of our patent system, FORE WARNED IS FORE ARMED:
    A most problematic picture has been emerging: Owing in large part to the greed/growth based agenda of Organized Big Business, OBB (which could turn out to be worse than organized crime syndicates), our American patent system is being weakened from within by all three branches of our government,
    (i) via proposed Congressional patent-weakening reform,
    (ii) Supreme Court decisions based on Constitutionally corrupt patent statutes,
    (iii) and by the USPTO succumbing to personal agendas and public pressures cleverly created by OBB.

    Our Court of Appeals for the Federal Circuit, the CAFC, has been resisting the corruption of our patent system, but it is an uphill battle because of:
    (i) OBB’s steady broad-based lobbying efforts,
    (ii) Conjured up fairytale troll-talk,
    (iii) Overt and covert attacks of the U.S. patent system continuously surfacing.

    These anti-patent efforts are taking their toll inch by inch. OBB wants to $uck blood money from flattening global markets.

    My recent concern about our patent system brought back my gloomy concern from the 90s regarding America’s leadership position after certain events occurred, events comprising:
    (i) winning the cold war against the Soviet Union,
    (ii) the dismantling of the Berlin Wall, and
    (iii) Germany Unification.

    My personal concern for America’s world leadership position grew dire in the mid 90’s when I caught part of William F. Buckley Jr.’s PBS Firing Line talk show with guests that included Henry Kissinger (despite my search efforts, I have never been able to find a transcript of that show). During the show’s discussion, a surprise question arose:

    “HOW LONG WILL THE UNITED STATES REMAIN THE ONLY, OR THE LEADING, SUPERPOWER?”

    The first responses were, perhaps 50 years or longer? But the ensuing discussion wound up with the alarming consensus that OUR LEADERSHIP COULD BE LOST IN AS LITTLE AS TEN YEARS. Democracy is on a slippery slope.

    Mid-stream Americans still take for granted our nation’s leadership position. However, the gravity of that mid-90s Firing Line show’s revelation shattered any notion I had that America’s leadership is necessarily permanent. AMERICA’S LEADERSHIP IS NOT PERMANENT — it hangs by a thread.

    As events over the past two administrations have demonstrated, our government is not up to doing its job. Not only have all three branches been infiltrated and tainted by OBB’s greed/growth world-is-growing flat agenda, but our two-party political system seems to be unraveling. We have no statesmen strong enough to pull us out of what appears to be a deadly political tailspin. (Perhaps an independent party candidate could win in 2008, and that could shed some hope).
    ————————

    IN CLOSING — We should all be scared sleepless of these looming tragedies:

    (i) Our weakening patent system;
    (ii) our greenbacks losing their world-wide appeal;
    (iii) our growing catastrophic loss due to the reverse brain drain;
    (iv) our heads in the sand when it comes to vital energy innovation;
    (v) our increasingly stressed military might and lessening military technological advantage;
    (vi) our extreme dependence on the vulnerable Internet;
    (vii) our crumbling infrastructure; and
    (viii) our cities being targeted for simultaneous mass destruction.

    All this is why I ask:
    Are Americans willing to cede our prestigious premier position, step down and trust world leadership to some other nation?, perhaps to a socialist nation?, or a communist nation?, or a (neo)fascist nation?, or a totalitarian nation?

    Our government is hopelessly polarized, and dangerously short-sighted to boot — it is not protecting We the People’s interests, it is not performing its primary function. We in the intellectual property community are smarter than your average bear. The buck stops here, in our IP laps. IF NOT HERE THEN WHERE? If we, some of the brightest, best and most affluent our nation has to offer, sit by and do nothing, we will be ashamed of ourselves, to say the least, when we wake up one day as citizens in a second-rate nation.

    DON’T LET OUR PATENT SYSTEM BE DENIGRATED — we must start reversing that trend; think of things to help preserve our country’s leadership before we lose it.
    In the words of one of our most unique and endearing American patriots, Yogi Berra:
    It ain’t over till it’s over your head.

    Permission to copy and spread the concern for our country encouraged; Yours Truly,
    Just an ordinary standup Constitutional philosopher(TM)
    a/k/a

  24. “I’m not so sure, and think of the Roman Empire.”

    Yes we are in the last days of our version of the Roman Empire. Collapse of the patent system is not the cause. It is merely a symptom. As corruption spreads, it even infects our cherished patent microcosm in the same way that it has already infected everything else. Even we are ourselves are corrupt in that we don’t stand up and fight the good fight against the spreading collapse and against the endemic violation of law even by our own, terror spreading version of a “1984″ style government. Resistance is futile; or so they would like you to believe.

  25. [Begin political statement: please skip if offended by any such statements]

    “then the organization IS part of the problem”

    I would say this administration’s *appointment policy* (which me has perhaps accurately described) is the problem. This, I think, is the key distinction between the Bush and Reagan presidencies: Reagan surrounded himself with and gave responsibility to (much) more qualified men and women than Bush II has*. (Brownies… they’re not just junk food anymore! Horse trainer friends can, in fact, run any agency!) And thus by so appointing, the Bush administration has de facto dumbed down government to the detriment of the citizenry. And consequently, for the first time in my adult lifetime, we are seeing a Republican administration that is, and needs to be, fiscally irresponsible to operate, and a federal government that has become more bloated rather than leaner (contrary to everything that Republicans have historically stood for). And so, and perhaps thankfully, the Bush administration is alienating and has alienated the Republican base. Who’d a thunk?

    But, as my father tells me, this is perhaps nothing new in government (he sees the gravity of the situation differently than me, and thinks we will survive just fine after this wind blows over). I’m not so sure, and think of the Roman Empire. And unfortunately for all of us in the patent field and for those in industry who rely on patents, with Dudas and Peterlin, it is hitting closer to home.

    *even Mooney can agree with this wording, I hope.

    [end political statement]

  26. The problem with this administration is, at least partially, the Federalist Society. When membership is an organization – no matter what its views – replaces true knowledge, experience, and ability when appointing folks to the WH, the Patent Office, or – god forbid – the Justice Department, then the organization IS part of the problem.

  27. RA….

    Thanks for feeling my frustration and I completely agree with the lack of real leadership at the PTO.

    However, they are not going to resign, so solving the problems of the patent system will not be via that route.

  28. Steve, I hear ya.

    The reason we want to see Dudas and Peterlin resign is so that we can get *real* leadership in the USPTO management (with patent and trademark law background and experience) that can start to diagnos, address, and fix the problems with the system, not just administer a Band-Aid(R) brand adhesive bandage. No one is vindictive, and we are too busy with our careers to be merely venting: we want to solve the problems with the patent system, and they are unfortunately, by their illegal appointments, the impediments to the solution. Until they are removed, the chances of moving forward in the patent arena are virtually nil.

  29. I am not at all happy with Peterlin’s appointment. However, I don’t think it serves any purpose for all of us here saying why won’t she resign, or I can’t wait for her to be fired by the courts. She is there laughing at us and there aint nuttin we can do about it.

    She did not write these rules, the original rule set was proposed back when she was in the non-patent world. Anyway, how could she possibly have the knowledge to create or suggest these intricate rules. We are using her as a straw man.

    Additionally, I find it hard to believe that a new commissioner at the change of administrations in 08/09 will drop these rules. There has to be continuity in government and if the rules are thrown away with a “oops, we were wrong” excuse the PTO would have even less credibility than it has now. Congress, that useless bunch, would have to exert some authority.

    Yes, I am pessimistic and down on the system…a system I loved and which started with 5 enjoyable years at the PTO working with some great people. I also used to appreciate the AIPLA, but now see they are tools, themselves.

    Is Ahronian’s lawsuit good or bad? Who knows – but it will not change these rules even if she is fired. Whining about Peterlin and Dudas is a waste, what good does it do except give us a vent.

    It all boils down to this…in government, the spoils go to the victors and the people like us are not a concern.

    Just some thoughts having read the various threads over the last few days.

  30. “But we all now know (maybe in your infinite hindsight you knew 7 years ago) that these people, the so-called neocons, are for sale to the highest bidder. ”

    ?!! Hindsight was hardly necessary. The agenda of the neocons and Chimpy’s utter ineptitude was public record 7 years ago. Granted, you weren’t going to find much that was helpful in the New York Times or Wall Street Journal but that doesn’t mean the information wasn’t readily available.

    By 2004, with the blogosphere fully operational, educated folks had no excuses for favoring Rethugs for except laziness or greed (valid excuses, mind you, although not the sort of personality traits that folks — even Republicans — are prone to emphasize).

  31. “But we all now know … that these people, the so-called neocons, are for sale to the highest bidder”

    Well, I don’t quite know that yet, though I see why you might think so. (Sorry, Malcolm, I guess in some respects I’m still be a rube.)

  32. MM, in neocon theory yes. But we all now know (maybe in your infinite hindsight you knew 7 years ago) that these people, the so-called neocons, are for sale to the highest bidder.

  33. “I think equating “not caring” with a “strategy” is a bit of a stretch.”

    Malcolm, I was doing no such thing. I was asking much deeper questions, hoping that Ms. Peterlin might read this (ROLF) and begin to more deeply consider the implications of her current course and conduct. It is not without consequence: you can become less today than you were yesterday.

  34. “Malcolm Mooney, the ultimate liberal and patent-hater, proves the point”

    I love patents. Valid ones, anyway.

  35. “neocon patent strategies”

    I’m not buying this. A truly neocon patent strategy would be one that alleged to “promote US interests” and achieves that by directly and unambiguously antagonizing and punishing foreign competitors.

    I’m not sure that neocons give a hoot about US patent laws and I think equating “not caring” with a “strategy” is a bit of a stretch. Perhaps today’s USPTO could be considered to have neocon aspects if one wants to argue that it disfavors the neocon’s traditional enemy: “liberal” academia …

  36. “I don’t know what Dudas and Doll’s problems are, but the Federalist Society and Republicans are not the issue here.”

    Then why haven’t they resigned? Does Peterlin not care that she was appointed illegally? And if she doesn’t care, why doesn’t she? What can numb the conscience so? In my mind, the problem at the USPTO *identical* in its origin to the problem that we are seeing (perhaps more clearly manifest) at the Justice Department?

  37. OK, this thread is really off the rails now. Me’s “Federalist Society” comment is nonsense. Conservatives are the historical supporters of a strong patent system. William O. Douglas, the famed far left radical justice, was the initial destroyer of strong patents, and the patent system didn’t rebound until the CAFC and its conservative stalwarts like Giles Rich, Howard Markey, and Pauline Newman established a sensible and relatively objective standard of patentability. The softward industry, populated by liberals, is currently responsible for many of the problems we are dealing with now. Malcolm Mooney, the ultimate liberal and patent-hater, proves the point. I don’t know what Dudas and Doll’s problems are, but the Federalist Society and Republicans are not the issue here. Focus!

  38. OK, this thread is really off the rails now. Me’s “Federalist Society” comment is nonsense. Conservatives are the historical supporters of a strong patent system. William O. Douglas, the famed far left radical justice, was the initial destroyer of strong patents, and the patent system didn’t rebound until the CAFC and its conservative stalwarts like Giles Rich, Howard Markey, and Pauline Newman established a sensible and relatively objective standard of patentability. The softward industry, populated by liberals, is currently responsible for many of the problems we are dealing with now. Malcolm Mooney, the ultimate liberal and patent-hater, proves the point. I don’t know what Dudas and Doll’s problems are, but the Federalist Society and Republicans are not the issue here. Focus!

  39. “It’s difficult knowing that I work with highly educated but easily suckered rubes who voted for the Chimperor *twice* and don’t have the guts to admit they were conned.”

    [wishes he had some scotch, or some better excuse]

    Unfortunately, I think you are right here. What do you want me to admit? Mea culpa.

  40. MM, for someone who hates Bush and his cronies, you seem to agree with a lot of the neocon patent strategies.

  41. Yes, Malcolm, are you saying the USPTO can and should abdicate from it’s legal responsibilities in the patent process? Or are you saying, because we have prosecutors we don’t need defense attorneys? Or because we have complainants we don’t need respondents? Surely, one side can represent the interests of both.

    I think you meant to cite 37 CFR 10.18, no? We patent attorney’s abide by that (and yes, there are some bad apples who don’t). But 37 CFR 10.18 (or Rule 11 which is less applicable to USPTO proceedings because doesn’t apply to agents) doesn’t imply that the patent system can function without USPTO participation in a non-adversarial setting.

    Can you tell me in what kid of adversarial role the USPTO wants/intends its examiners to remain, or will the USPTO examiners just be like a judge and jury for whatever information the applicant (who should now also represent the public) presents? It won’t work!

    We can go to a non-adversarial registration system, but there will have to be a complete re-write of the laws to balance countervailing considerations, and to ensure protection for the public and reward for the inventor in such a non-adversarial system.

  42. “if we have another Republican president”

    [grabs scotch bottle and pounds down a shot]

    It’s difficult knowing that I work with highly educated but easily suckered rubes who voted for the Chimperor *twice* and don’t have the guts to admit they were conned. Until these Regent University nutjobs and assorted neo-con “fellows” and their apologists are expunged from DC this country will continue on the road to ruin and discreditation, regardless of the state of the patent laws.

    Try to believe it: the “serious” people who sold their neo-con fantasies to the dumb-as-nails American population (many patent attorneys and inventors, included) and who were proven utterly wrong (or liars) are STILL treated as “experts” by the traditional media outlets, STILL trotted out on a weekly basis and allowed to shape our country’s discourse.

  43. “It seems like the USPTO no longer wants to be on the other side of the legal balance from the applicant, and so it expects applicant’s own patent attorneys to fill that role (playing “both sides”, so to speak), even while *all* other aspects of our legal system militate that he not be there.”

    I think this is a gross mischaracterization of our “legal system.” Read FRCP Rule 11 again.

    link to law.cornell.edu

    Surely without Rule 11, our legal system would be more “adversarial” in nature. Would it be better?

    The Federal Judges I know do not think so.

  44. Then pray for them to leave post-haste, or vote for a Democratic president (it seems I voted for the wrong party in the last two elections), because if we have another Republican president, it could be (and will likely be) over 9 more years. And that might cripple the technological innovation in American industry.

  45. Well, if that is how it plays out it will be terrible for patents and innovation int he country, but I predict not long after Peterlin and Dudas leave things will change.

  46. “How could that not lead to better quality patents?”

    To answer my own question since the USPTO folks have demonstrated such weak foresight:

    One of many problems that such a system would generate is the destruction of adversarial proceedings and the attorney-client relationship on which our whole legal system is based. It seems like the USPTO no longer wants to be on the other side of the legal balance from the applicant, and so it expects applicant’s own patent attorneys to fill that role (playing “both sides”, so to speak), even while *all* other aspects of our legal system militate that he not be there. Talk about creating conflicts, setting applicant’s representative against his own applicant (in the context of admissions which may or may not be completely accurate due to his own human failings) and tying the hands of justice. What has ever happened to the USPTO’s ability to be a substantive part of legal patent proceedings?

    But you would need to be a patent attorney to see these things, you would need to have a background and experience in patent law.

  47. “I really doubt the office would be so disingenuous as to change restriction practice simply to eliminate patents. Even Mary “The Federalist Society” Peterlin can’t be that short sighted, can she?”

    Short sighted? I would perhaps use the word shrewd. In one scenario, your examiner has to examine on his own, but the other way, he gets the (compulsory) help of the applicant in locating prior art, proofing the claims for 112, and “admitting” which claim elements are known. How could that not lead to better quality patents?

    Such late restriction requirement as exemplified by the option 3) is absolutely not proscribed, and probably endorsed in the language of new rule 1.142(a):

    “Such requirement will normally be
    made before any action on the merits;
    however, it may be made at any time
    before final action.”

  48. Well, maybe I am being a bit naive – but I really doubt the office would be so disingenuous as to change restriction practice simply to eliminate patents. Even Mary “The Federalist Society” Peterlin can’t be that short sighted, can she?

    Also, restriction practice will be the only way for Examiners to get those easy long term points off the same application (e.g. they spent time learning the app in one divisional, and now they get the same app for ten more)!

    I expect restriction practice will remain alive and well, or at least lets hope it does.

  49. “Also, you get a shot at drafting your own “suggested” restriction requirement.”

    O.K., you file an application with three embodiments, 6/30 claims, and an SRR. Is that what you’re thinking?

    Now, the examiner has 5 options (at least). He can either:

    1) restrict, and the search one embodiment and examine 2/10 claims, doing normal examination work; or

    2) not restrict, and wait for you to abandon and refile the continuation (because of the ESD complexity and time limit), thereby receiving two counts; or

    3) not restrict, have you file the ESD which analyzes the prior art and 6/30 claims for him, and then restrict you either before or after the FAOM. That way he can use your work in his office action on the one elected embodiment, and have your additional work held “in reserve” should you later file on the other non-elected embodiments; or

    4) not restrict, have you file the ESD which analyzes the prior art and 6/30 claims for him, and then register your claims; or

    5) not restrict, have you file the ESD which analyzes the prior art and 6/30 claims for him, and issue a willy-nilly rejection.

    However, I expect an internal memo to be circulated in the USPTO shortly forthwith preventing examiners from choosing options 1), 4), or 5), in as much as they would be bad for office operations.

  50. “It is quite clear from that comment that you have never been a prosecutor, a litigator or the client of either.”

    One out of three. That’s not bad … for baseball.

  51. Did I miss something or don’t we get 5/25 for EACH divisional from a restriction? Doesn’t this mean that if you have five inventions your originally filed app can have 25/125?

    Also, you get a shot at drafting your own “suggested” restriction requirement.

  52. Thanks Jim:
    I forgot about the imminence requirement. It’s been a while since I studied rememdies. The cold war was still raging back then.

  53. I am surprised that the complaint and memorandum for preliminary injunction do not attack the clear violation of the APA-mandated notice and comment procedure with regard to the 5/25 limitations. The 5/25 limits are clearly very different from, and therefore not a “logical outgrowth” from the representative claims rules that were proposed originally. There was no APA-mandated opportunity for public comment on this aspect of the new rules.

  54. “Ownsership issues are the sort of thing that patent litigators figure out routinely. You’ve probably already retained some. Get them to work on your (ahem) “important” cases.”

    It is quite clear from that comment that you have never been a prosecutor, a litigator or the client of either. Go back to your ivory tower……………and contemplate your own (ahem) “importance”

  55. “I would like to see donations forwarded to contract out a clown organization that would place a pie in the face of each of Duda, Dull, Lovey and Peterlin. If not too late, also get that Pinko guy before he gets too far away.” – Bozowannabe

    In view of the new rules, I would do this myself. But the question is, would throwing a pie at Mr. Doll subject me to USPTO discipline?

  56. ” Large institutional clients are literally never going to be able to sort this out. ”

    Ownsership issues are the sort of thing that patent litigators figure out routinely. You’ve probably already retained some. Get them to work on your (ahem) “important” cases.

  57. One of the most problematic aspects of the new rules is the reporting requirment of 1.78(f). How the heck am I supposed to figure out whether my 1000 or so pending cases have a common owner and a common inventor? MDC (our fairly industry standard docket) does not even have the data fields necessary to write a computer program to figure it out. Given the extremely tenuous interrelationship between cases that is sufficient to require us to file this paper (or risk abandonment!), I don’t know if I can even figure it out– and even if I do for my cases, I don’t have any idea what cases for a given client/ inventor/ owner are with other firms. Large institutional clients are literally never going to be able to sort this out.

  58. “There is a big distance between Bogese’s “unreasonable and unexplainable delay” in prosecution after ten continuation filings with identical claims that did not advance prosecution and what applicants do when they need to file a third continuation”

    It’s what applicants do before they discover that they *need* to file a third continuation that is critical. My impression (based on comments made here and independent observations) is that applicants file continuations simply to “keep the case alive” in hopes that some big company with lots of $$$$$$ is going to step into some paragraph buried in their specification.

    Sometimes the patent families just acquire a life of their own as the applicant just follows the attorney’s advice (based on “tradition”) and consents to “file another continuation” in spite of the fact that there is already substantial redundancy and overlap in the claims …

  59. This case seems ripe to me.

    The pleadings basically say that Tafas was too poor to pay for additional continuations in the past. The PTO is now saying that the only way for Tafas to have future continuations examined is for Tafas to demonstrate that new claims in the continuation could not have been filed previously. Because the PTO is categorically stating that past poverty is not a good enough reason, the PTO is effectively stating in advance that no future Tafas filings will be examined due to his prior state of poverty.

    The nonhypotherical harm is the “lost oppotunity” for continuation filings to be examined.

    Given this scenario, I think this is more of a “as applied” challenge rather than a “facial” challenge. If I were the judge, I’d issue at least a preliminary injunction.

  60. DOC: “The ‘beauty’ of the PTO rule package, however, is that it does not limit the number continuations or claims. Even after November 1, there will not be any theoretical limits. Instead, the rule package would simply force high-throughput users to justify their unusual approach. . .”

    Do not insult our intelligence…This is the same BS argument the PTO made in its background material for the proposed rule. They said that there is no limit *per se*. Oh yea? what does it mean to have filed a petition for a third continuation and having it denied? Can you explain how that is not a limit?

    The PTO’s adoption of a set of criteria and tests (which it failed to disclose) under which it will *deny* applicants a right to further continuations will be exposed. Setting these criteria is Congress’ job. Whatever these criteria and tests are, courts would find them inconsistent with Sections 120, 132(b) and 365(c). Anybody who thinks otherwise might as well tell us that the law does not matter. There is a big distance between Bogese’s “unreasonable and unexplainable delay” in prosecution after ten continuation filings with identical claims that did not advance prosecution and what applicants do when they need to file a third continuation.

    The Patentee

  61. Re TRO comment

    No immediate irreparable harm for which relief is needed. Harm to begin Nov. 1. PI should be decided by then.

  62. You can’t catch Bozowannabe copper. He’s everywhere and nowhere. He represents the oppressed, wretched 26-claim application filers. Pie-to-face political statements are his thing and he will not stop.

  63. Bozowannabe and Mooney, for online racketeering and gambling.

    Gentlemen, we’re close to shutting down Patently-O as it is for spreading anti-government propaganda contrary democratic (with a capital “R”) principles (or would they be “principals”). Consider yourselves warned.

    (j/k)

  64. I would like to see donations forwarded to contract out a clown organization that would place a pie in the face of each of Duda, Dull, Lovey and Peterlin. If not too late, also get that Pinko guy before he gets too far away.

    A double-secret probation bonus will be paid out if the pie-ing is done at a commerce ceremony with the Gutterez attending (and, of course, also creamed). Triple bonus if Bush is attending, and five- times bonus if any of the pie reaches his suit.

    $1,000,000 payout plus legal fees for placing a pie squarely in Bush’s face.

    I will contribute to this!

  65. “Malcolm Mooney: How much are you willing to wager on the upholding of the continuation rules?”

    100 bucks makes it interesting, I suppose. We’ll need to agree to let Dennis decide if the continuation rules are changed substantially, say, 1 year from today …?

  66. 35 USC 120 include the following:

    “No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this section.”

    Congress saw it necessary to expressly authorize the PTO to deny a late priority claiming under 35 USC 120. Why did the PTO need Congress’s authorization? Couldn’t the PTO do it by simple “rule-making”?

    The answer is obvious.

    The only “PTO mandated” limitations on continuations is those relating to late-filing of a claim to priority. It is that clear.

    Patent policy is Congress’s domain.

    It is just utterly ridiculous to support the notion that the PTO can allow itself unfettered discretion “on a case by case basis” to decide whether an application was filed in “bad-faith”.

    Malcolm Mooney: How much are you willing to wager on the upholding of the continuation rules?

  67. Either I am being extremely dense or I have fallen down the rabbit hole. Perhaps both. (I am suffering from a massive headache today, which I don’t necessarily blame the PTO for — not everything is their fault, although sometimes if feels that way.)

    My point is this: Doesn’t the plain language of §120 *requre* the PTO to treat ALL “continuations” as continuations? §120 states the requirements for filing a continuation, and then provides that it “*shall* have the same effect, as to such invention, as though filed on the date of the prior application” (emphasis added). Forgive me if I am wrong, but how exactly does the PTO get around that pesky “shall”? I see nothing in the statute that gives the PTO leeway, i.e., language such as, “and meets other such requirements as promulgated by the Director.”

  68. Malcolm predicted, “this lawsuit isn’t going to get very far and, in any case, these rules or rules very similar to them are going to be enacted”

    I think the rules that give the USPTO the right to decide on a case-by-case basis whether priority may be claimed are inconsistent with 35 USC 120. Basically, 35 USC 120 does not give the Director the USPTO the power to decide whether priority may be claimed to an earlier patent application, when the priority claim is made at the time of filing. The statute says “shall have the same effect.” I don’t see any discretion in the word “shall,” but then again, I don’t work for the Bush administration.

    But as for the other rules, I agree with Malcolm that some version will survive.

  69. The portion of the rules that is retroactive to all pending applications that have not received the 1st Office Action on the merits is extremely problematic, and should be declared illegal. For example, if an applicant has an important application that got issued and multiple continuation applications (let say 5) have been filed before August 21, 2007, claiming different aspects of the disclosed invention, the new rules will now unfairly and retroactively force the applicant to consolidate all claims to 5/25 threshold, and perhaps, even cancel some pending continuation applications. This portion of the new rules is clearly in violation of due process, and can’t withstand the challenge. However, the complainant must have this set of fact to win.

  70. Kevin, I agree with you that a hard limitation on the number of continuations would create a much more likely facial challenge. The ‘beauty’ of the PTO rule package, however, is that it does not limit the number continuations or claims. Even after November 1, there will not be any theoretical limits. Instead, the rule package would simply force high-throughput users to justify their unusual approach. . . .

  71. I don’t know, Dennis – there is nothing in the statute that limits continuations. The Office is taking the position that there is nothing that mandates unlimited continuations, but that isn’t the way the USSC has been construing statutes (and to paraphrase Thomas More, “Silence connotes consent”). And don’t forget – there is NO standard (besides “reasonable diligence) for obtaining an additional continuation/RCE.

    How’s Missouri?

  72. I predict that some of the enterprising and experienced patent examiners will recognize a business opportunity to get into the ESD and searching business and do so. Same work only you are rewarded for your efforts.

    Let’s hope the companies with the dough come through and file some good substantive suits and kill this baby before it comes into effect.

  73. Regarding “Also, we need to send a message to our own organizations (e.g., AIPLA, ABA, NAP (and even POPA for the examiners!)) to be more responsible in the future.”

    Actually, NAPP (National Association of Patent Practitioners) did file extensive comments primarily in opposition to the rules package (around 100 pages if I recall correctly). This probably resulted in some of the better changes that were made – as if there is much good about these rules.

  74. Mr. Mooney,

    Pray tell what is the logic, necessity or reasoning behind the PTO’s assertion that a patent applicant should not be entitled to file CIP of a DIV, even though a CIP is permitted of a parent and the only disctinction is of which group an election is made?

    Capricious? Arbitrary? Please explain why it is NOT capricious and arbitrary!!

  75. Money … seriously

    i put one mooney dollar against full implementation of the final rules with congress pushing the pending patent act revisions to boot.

    second, since the money for more continuations are basically expensed anyway, and bigpharma has its pricing power intact, turning that bowl of mooney dollars for further litigation against the rules is simply too easy to pass up.

    third, it was rim and who is wh counsel today?

  76. Dear Mr. Mooney:
    I bow to your glory. Permit me to speak sir. I don’t hear the fat lady singing. So the show ain’t over yet.

  77. “Suppose the applicant has an arguably good reason to file the extra continuation, e.g. the examiner allowed half the claims and the applicant wants to get the allowed claims issued asap while continuing to fight the rejected claims”

    Since when is wanting to have one’s cake and eat it, too, a “good reason” for bending the rules? The Lindsay Lohan era of patent prosecution is ending and there is nothing uglier than a cocaine hangover.

  78. Dennis, I agree with you that Tafas is likely to lose (though all but certain to appeal this all the way); but the tone of your comment suggests that you are skeptical that the PTO can enforce the rules against a good “as-applied” challenge. Suppose the applicant has an arguably good reason to file the extra continuation, e.g. the examiner allowed half the claims and the applicant wants to get the allowed claims issued asap while continuing to fight the rejected claims. If the PTO denies the continuation, I think that the deferential standards of the APA would lead to sustaining the agency action; so that an as-applied challenge would also be unlikely to succeed. Certainly an as-applied challenge would be a stronger case, but it is still likely futile. Do you disagree?

  79. “Is filing a continuation as a “place-holder” to allow you to correct your patent in the future in case you come across an error in your already issued patent, is that a “bad-faith” filing?”

    Yes it is.

    By the way, since some folks here are prone to label certain commenters as “serious” and others as “unserious” let me make a prediction: this lawsuit isn’t going to get very far and, in any case, these rules or rules very similar to them are going to be enacted.

    I’ve already made enough accurate predictions about case law decisions to establish my credentials as a serious person. I don’t believe I’m going out on a limb with this prediction. Dennis is right. I’m right.

    All the rest is whining, not unlike the whining you’d hear from a junkie when you separate him from his stash.

  80. anon writes -

    > Even if you petition that the office action was improper
    > the day it is mailed, the petition won’t get heard before
    > the six month period runs and you have no choice but to
    > file an RCE.

    Could you contact me regarding your experiences?

    Here is the typical pattern I have experienced repeatedly. Petitions relating to premature final take 5-7 months in the art unit, over a year in Petitions Office. (It’s perfectly clear that the Office has a consistent practice of deliberately screwing applicants by running the clock out – other petitions are decided in the art unit in 4-6 weeks, and in Petitions Office in 2-3 months.) Then the Petitions Office says the issue is “moot.” When a further petition points out to the Petitions Office that the Office’s assertion of “moot” is the Office’s promise to “eradicate all effects” of the conduct complained of, the Petitions Office tells the Supreme Court to go screw itself, and refuses to honor the consequences of its own position and holding.

    One of the top three key problems at the Patent Office is the open contempt for the rule of law, especially procedural law, most remarkably in the Petitions Office.

    In view of the outbreak of litigation, additional similar examples would be very helpful. My collection of examples are too few to demonstrate the consistency of the practice that would trigger the deep judicial skepticism needed to win a case. It would be helpful to have several similar examples. Please contact me.

    Thanks. PatentProcedure@gmail.com

  81. Dennis Crouch wrote:

    “The law certainly does not require the PTO to examine clearly repetative or bad-faith continuation filings. If applied lightly, the new rules would simply block those “bad” continuation filings and the good ones will pass through.”

    Dennis, can you explain what you mean by “bad-faith” continuation filings?

    Is filing a continuation as a “place-holder” to allow you to correct your patent in the future in case you come across an error in your already issued patent, is that a “bad-faith” filing? Must errors in a patent only be correctable by reissue, or can serial continuations be used as a strategic alternative?

    Consecutive continuations allows applicants to correct errors, eliminate overlooked unnecessary limitations, etc.

  82. I don’t know of this doctor or his financial position. However, I have the sense that someone else is behind this litigation.

  83. Hp: “Team these new “go ahead appeal” rules with the proposed draconian appeal brief requirements.. and its lights out for the little guys in the patent game”

    As in any rulemaking, in promulgating rule changes for appeal, the PTO must show that its new rules are directed at solving an existing problem. But the PTO has just made a big splash about historic and unprecedented BPAI pendency reductions. These impressive pendency reductions took place under existing BPAI rules. So it is clear that these BPAI rule changes are prospective, in *anticipation* of a flood of appeals. This is a prima facia admission by the PTO that its downplaying of the impact of its continuation and claims rules on applicants is a lie.

    This is a well orchastrated assault by PTO management on patentees and their rights by making sure that the rules of the game change, so that the weapons applicants have learned to use over the years are taken away just when they are most needed. Applicants hands will be tied with new strings with which applicants are not yet familiar.

    I expect that proper discovery of internal PTO communications and supporting documents for promulgating the BPAI rule changes will reveal that the real motive for adopting these appeal rules is to procedurally shut down applicants’ ability to sustain their continuation filing rights through appeals.

    - The Patentee

  84. “The better case will be raised by an applicant who is denied a continuation filing despite having a “good” reason for the additional filing.”

    But will this case strike the regs? This case sounds more like an as-applied challenge where the court may simply order the PTO to allow the continuation, without having to declare the reg as impermissibly construing the statute and void.

    I think a plaintiff with a “bad” reason for the additional filing would be the better vehicle to reach the Chevron incompliance issue and get the reg struck.

  85. Here is the first question that makes me suspicious about this lawsuit. Why did the good doctor not file for a TRO. This would have been more effective at bringing the issues to the forefront. Does anyone know how long the government has to respond to a preliminary injunction? As far as I understand it, a preliminary injunction can take nine months to be calendared and argued in court. Is there some rule against TROs when the government is the defendant?

  86. Man I would have guessed that this would have taken a few weeks. I am not convinced this is the proper plaintiff. This might very well be a planned lawsuit to halfheartedly address the constitutionality of the Continuation Rules so as to given Dudas and the courts reasons to say that the rules are proper.

    This is essentially what the Napster case turned into. The issues were controlled to get the public to stop file sharing. The position of Napster was absurd. The real issue in that case should have been you can’t hold a building owner liable for people putting photocopies of books on a wall. Why can a server owner be liable for putting copies of music on a harddrive? But I digress.

  87. “Also, we need to send a message to our own organizations (e.g., AIPLA, ABA, NAP (and even POPA for the examiners!)) to be more responsible in the future.”

    I think most patent practitioners dislike the proposed rules. Unfortunately, they can’t count on organizations to voice their opinion. The problem is that the big-business software will generally love these continuation rules, but big-business pharma will generally hate them. Organizations like AIPLA have members that represent both and likely could not come to any sort of agreement.

  88. To me, it seems the claim cap is the biggest problem. The ESD requirement is the biggest smelly pile of dog doo I’ve ever seen put together by our PTO civil servants. Like I’ve said before (and echoed by my dear friend Mr. T), we should simply go to a registration system and fire all these people!

    Why not hire Donald Trump as the new Director. He’s good at firing has no less experience as some of those now in charge!

  89. “if the new rules are applied lightly”

    But I doubt they will be. The limitation to ONE RCE suggests that the PTO believes one should be sufficient in the majority of cases. We in the trenches know that that is ridiculous, because, at least in the electrical/computer arts, the first Office Action is usually a complete waste of time, written by an examiner who has barely read the case and casually waved his hands over a few references. It’s not until the SECOND Office Action that the examiner apparently even takes the time to try to understand what is being claimed and search for some decent references. So, the second Office Action IS in effect the first Office Action.

    If the PTO intended to apply the new rules lightly, it would have imposed a limit of TWO RCE’s as a matter of right, with the third and subsequent only upon a showing of good reason.

  90. Team these new “go ahead appeal” rules with the proposed draconian appeal brief requirements.. and its lights out for the little guys in the patent game.

    Everybody make sure to file your comments to the proposed appeal brief rules:

    link to a257.g.akamaitech.net
    link to patentlyo.com

    Or you don’t have anyone to blame for the USPTO’s destruction of the patent system as we know it.

  91. If the CEO of Walmart was troubled by the success of his company, the inability of his company to handle the multitude of customers, and the inability to spend all of the money he was making, I don’t think that he would put a sign in the fornt window of every Walmart stating: “Effective November 1st we will only be selling brooms”

    But then again, a succesful business person would never make it working for the U.S. gov’t.

  92. “Tafas will likely lose here. On its face, the rule may operate within the laws because it allows Tafas to file his continuations if he has good reason to do so. The law certainly does not require the PTO to examine clearly repetative or bad-faith continuation filings. If applied lightly, the new rules would simply block those “bad” continuation filings and the good ones will pass through. The better case will be raised by an applicant who is denied a continuation filing despite having a “good” reason for the additional filing.”

    Dennis, how do you differentiate between “good” and “bad?” This standard is completely arbitrary.

  93. Isn’t it always about the money (or rather, the lack thereof)? If Congress had funded the PTO at sufficient levels the past two decades, there wouldn’t be a backlog or the need for (another) attempt at a quick fix.

  94. Is there any way to make Dudas, Peterlin and Love personally liable for damages? I think we should go ballistic now to ensure this never happens again to our dear patent office.

    Also, we need to send a message to our own organizations (e.g., AIPLA, ABA, NAP (and even POPA for the examiners!)) to be more responsible in the future.

  95. I rarely endorse rants, or even enjoy reading them, but I have to say that the post by “real anonymous” seems on the mark. The Patent Office is well on the way to being the “anti-patent office”.

  96. We ought to all be contributing to a legal fund to help support this litigation, if for no other reason than as a way of casting votes against it. I would contribute $500 in a heartbeat.

    As to Anon and the RCE issue, you know my feeling is that part of the problem of BSOA’s (bull sh!t office actions — I’m joining the PTO’s new-speak effort) is that we practitioner’s aren’t pushy enough. MPEP 710.06 gives you grounds for throwing the BSOA right back in the examiner’s face and telling him/her (assuming he/she reads English) to fix it. If they refuse or just can’t figure out how, appeal. I have never been convinced that an appeal costs the client any more than butting heads with an incorrigible examiner for 3 or 4 rounds.

    Did you notice in the PTO’s comments on the new rules, there is a very important question about limiting CIPs in fast changing technologies. And the answer is, essentially, a Doctor Spin enema treatment. This whole roll-out is just one big spin.

    My guess is that next week, once the readers of this and similar blogs have had time to digest the rules, the lid will really come off of this thing. That’s why I’m getting this response in early, so it will be near the top of 1000 comments.

    BabelBoy

  97. anon said, “this case seems unripe to me.”

    It does to me, too, in a way, but isn’t the problem that once the rules are implemented, actions will be taken (such as, for example, filing an ESD or canceling claims to avoid an ESD, etc.) that could prejudice a case (many cases) forever and be impossible to undo or unwind if the rules later are invalidated? And since the agency has a responsibility to make rules properly in the first place, it seems appropriate to challenge an improper rule-making. But I am not an administrative law expert, and would appreciate thoughts from anyone who is.

  98. I’m not a litigator, but this case seems unripe to me. The claimed damage is all future-tense. Doesn’t Dr. Tafas have to try and file one of his currently-ethereal future continuations and have it (or one of his already-filed continuations that has not received a first Office Action by the deadline) rejected under the new rules before he can sue?

    Furthermore, as I understand the rules, he *still* has the ability to file unlimited continuations, he just needs to file an additional paper explaining his reasons. We have yet to see whether that additional filing will be a formality, an insurmountable barrier, or somewhere in between.

    I’m no fan of the rules, but I don’t really see the merits of this particular action.

  99. What baffles me about the rules is how they could limit RCEs when I think a decent majority of RCEs are filed because of the PTO’s arrogant practice of ignoring their own rules. How many improper final office actions have you gotten? Even if you petition that the office action was improper the day it is mailed, the petition won’t get heard before the six month period runs and you have no choice but to file an RCE.

    Basically, these rules force early appeals with no RCE’s available to continue to try to persuade an examiner who is clearly wrong and the appeals process is just too expensive for small inventors.

  100. From the Complaint:

    “The Revised Rules should be preliminarily and permanently enjoyed….” Par. 6.

    I knew that nothing short of a court order would make the patent bar gladly embrace the new regs.

  101. From the Complaint:

    “The primary reason for the Revised Rules is not to promote the progress of science and useful arts, but instead to simply reduce the USPTO’s workload by reducing the volume of applications it receives.”

    There you have it – in a nutshell. The USPTO is using the mess it has created (through years of mismanagement, weak foresight, and substandard training) as the justification for stifling United States patent application filings, rather than correcting their own proplems. And they attempt to dumb down all patent application filings to the competency level which the USPTO has itself attained. Unreal.

    The USPTO is exhibiting complete blind disregard for the consequences that may be inflicted on anyone or anything (such as U.S. competitiveness) except the organization’s own operations. But, they say in response to such a charge, “Our operation is critical to the well-being of the United States!” If you truly believed that, Mr. Dudas and Ms. Peterlin, wouldn’t you have stepped aside long ago and turned over the helm to more competent professionals who have true background and experience in patent and trademark law and have more ability to diagnose and fix the system than you do? Or do you deceive yourselves as to your own effectiveness? To you, I fear, this is just a stepping stone, a political game to be played though the country be damned.

    Whatever has happened to a government “for the people”? So it begins….

  102. The USPTO legal team is going to have their hands full on this one! A blow for justice has been struck.

  103. The rule changes will have little effect on pendency. The rule changes were ill advised from the onset and rendered unnecessary following KSR v. Teleflex. The real problem is with Congress’ inability to promulgate legislation to correct the problems with the current patent system.

  104. Thank you Dr. Tafas and Kelley Drye. You are my heroes. I hope many others file suit as well!! Doll has gone way too far… I spoke to some examiners today and even all the examiners hate the new rules (because RCEs/continuations are much easier to examine). The inventors hate it. The corporations hate it (except for the giants that have plenty of $). So what’s the point?

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