35 USC 120

Is the legality of the PTO’s new rules to limit the number of claims foreclosed by Section 120 of the Patent Act?

Section 120 declares that a newly filed patent application “shall have the same effect” as a parent application so long as it is “filed before the patenting or abandonment …[of] the first application.”  The statute includes two specific limitations: First, the newly claimed invention must have been properly disclosed in the original application by overlapping inventors. Second, the new application must specifically reference the parent.

Courts have primarily used Section 120 in determining whether to grant an early ‘priority date’ to a later filed application. The following quote from a recent CAFC case is typical:

“A patent application for an invention disclosed in a previously-filed application in a manner that satisfies all the requirements of 35 U.S.C. § 112 is entitled to the benefit of the earlier filing date.”

Go Med, 471 F.3d 1264 (Fed. Cir. 2006). The practice of filing continuations is old — and was sanctioned by the US Supreme Court in the 1863 case of Godfrey v. Eames.

157 thoughts on “35 USC 120

  1. >Dennis, what to you predict will happen on Oct. 31? < It really happens-a preliminary injunction. I am a patent engineer from Asia and I can’t wait to see what will happen next. :)

  2. > 5.6 quake in Silicon Valley — the patent gods are mad!

    At the PTO. Our servers stayed up, our power stayed on, and we kept on with our efforts to file a zillion continuations in the next 12 hours.

  3. Here’s a good laugh at the right time . . . originally written by “Patent Hawk” on The Patent Prospector on August 23, 2007, just two days after the PTO announced its Rules – and really thought that they would get away with it!

    “Mark Lemley, professor at Stanford Law School, ‘widely recognized as a preeminent scholar of intellectual property law,’ toots of the new rules for examination limits: ‘The idea that this would be any sort of significant restriction on patent owners is ludicrous to me. It will affect 10 applications a year, maybe 50, out of 450,000.’

    “New 37 CFR §1.75(b)(1), known as the 5/25 rule, limits applications to five independent and 25 total claims without an odious examination support document (ESD). An ESD, covered under 37 CFR §1.265, comprises claim charts mapping claims, limitation by limitation, to the most relevant prior art references found; based upon a compulsive prior art search for which inequitable conduct liability is attached. An ESD also includes patentability claims charts: for each independent claim, citing specification support, limitation by limitation. 37 CFR §1.75(b)(4), soon to be known as the 5/25-totality rule, puts all applications in the same family, combined, under the 5/25 rule; where a family is for a set of claims that are ‘patentably indistinct,’ which is normal continuation practice. For all patents in a family, you only get five independent and 25 total claims without submitting detailed claim charts. This is a severe stricture.

    “One may reasonably observe as understatement that Mr. Lemley’s long suit is not likely to be statistical prediction, probabilistically speaking, of course.”

    Quotation of Mark Lemley from an article by Stuart Weinberg of Dow Jones, provided by Hal Wegner.

  4. If you have to stay under 5/25, don’t get CIPs or menaingful CONs you will change your filing strategy enormously. Thus, to make these rules retroactive is unfair, and a taking.

  5. “P.S. Rule 142(c) disappearing due to (mistaken) overwriting would perhaps be just like current Rule 704(c)(11) disappearing due to apparent (mistaken) overwriting.”

    My mistake. Old 704(c)(11) doesn’t disappear with the new rules, but rather becomes 704(c)(12), per FR 46843, block 19.

  6. Given the severe time constraints they were under, GSK’s brief was very good. However, I wish that GSK had noted that for any application that has already been published, they have lost forever the trade secret rights they had for any technology disclosed in the application. GSK gave up their trade secret rights in exchange for the provisional rights granted by the AIPA.

    From the USPTO itself:

    link to uspto.gov

    “Prior to the AIPA, damages for infringement can begin accruing no earlier than the date a patent issues. Under provisions in the AIPA, inventors can obtain reasonable royalties from others who make, use, sell, or import the invention during the period between the time the patent application is published and the patent is granted. This new right may be invaluable during the formulation stage of new businesses and for independent inventors in need of investments. Filers can also request that applications be published earlier than 18 months, a procedure that offers inventors provisional rights at an earlier stage.”

    By forcing to choose between cancelling claims to get under 5/25 or to file an ESD which will devalue the claims to which the ESD applies, the USPTO has clearly devalued GSK’s provisional rights. Effectively, the USPTO has changed the bargain they made with GSK when GSK allowed its application to be publish, thereby relinquishing their trade secret rights to the technology disclosed in the application.

    Furthermore, any action GSK takes at this point: cancel claims, amend claims, make arguments in an ESD, etc. will potentially give rise to potential prosecution history estoppel issues during litigation.

    Therefore, the new Claim and Continuation Rules will cause irreparable harm to GSK’s rights regarding the technology disclosed in the application.

  7. Given the severe time constraints they were under, GSK’s brief was very good. However, I wish that GSK had noted that for any application that has already been published, they have lost forever the trade secret rights they had for any technology disclosed in the application. GSK gave up their trade secret rights in exchange for the provisional rights granted by the AIPA.

    From the USPTO itself:

    link to uspto.gov

    “Prior to the AIPA, damages for infringement can begin accruing no earlier than the date a patent issues. Under provisions in the AIPA, inventors can obtain reasonable royalties from others who make, use, sell, or import the invention during the period between the time the patent application is published and the patent is granted. This new right may be invaluable during the formulation stage of new businesses and for independent inventors in need of investments. Filers can also request that applications be published earlier than 18 months, a procedure that offers inventors provisional rights at an earlier stage.”

    By forcing to choose between cancelling claims to get under 5/25 or to file an ESD which will devalue the claims to which the ESD applies, the USPTO has clearly devalued GSK’s provisional rights. Effectively, the USPTO has changed the bargain they made with GSK when GSK allowed its application to be publish, thereby relinquishing their trade secret rights to the technology disclosed in the application.

    Furthermore, any action GSK takes at this point: cancel claims, amend claims, make arguments in an ESD, etc. will potentially give rise to potential prosecution history estoppel issues during litigation.

    Therefore, the new Claim and Continuation Rules will cause irreparable harm to GSK’s rights regarding the technology disclosed in the application.

  8. Given the severe time constraints they were under, GSK’s brief was very good. However, I wish that GSK had noted that for any application that has already been published, they have lost forever the trade secret rights they had for any technology disclosed in the application. GSK gave up their trade secret rights in exchange for the provisional rights granted by the AIPA.

    From the USPTO itself:

    link to uspto.gov

    “Prior to the AIPA, damages for infringement can begin accruing no earlier than the date a patent issues. Under provisions in the AIPA, inventors can obtain reasonable royalties from others who make, use, sell, or import the invention during the period between the time the patent application is published and the patent is granted. This new right may be invaluable during the formulation stage of new businesses and for independent inventors in need of investments. Filers can also request that applications be published earlier than 18 months, a procedure that offers inventors provisional rights at an earlier stage.”

    By forcing to choose between cancelling claims to get under 5/25 or to file an ESD which will devalue the claims to which the ESD applies, the USPTO has clearly devalued GSK’s provisional rights. Effectively, the USPTO has changed the bargain they made with GSK when GSK allowed its application to be publish, thereby relinquishing their trade secret rights to the technology disclosed in the application.

    Furthermore, any action GSK takes at this point: cancel claims, amend claims, make arguments in an ESD, etc. will potentially give rise to potential prosecution history estoppel issues during litigation.

    Therefore, the new Claim and Continuation Rules will cause irreparable harm to GSK’s rights regarding the technology disclosed in the application.

  9. johng

    – a friend of mine told me that when he showed up for his first college final exam, he thought it was going to be the physics final when it turned out to be the calculus final

    – I hope that PTO management feels the same way today as my friend felt when he sat down to take his calculus final

  10. The “top news” at the PTO website is still the “China Roadshow” LOL. Do you think they are busy right now typing up a new one?

  11. With respect to the PTO’s arguments that all of the amicus briefs and GSK’s suit was “untimely”, I know our firm went in with a charitable attitude about the new rules and a desire to comply with USPTO rules, which significantly delayed our eventual complete opposition to the new rules. Also, what about the issue that it took weeks of significant amounts of attorney time (on tope of our regular docket!) to (1) read the rules (2) begin to comprehend the rules (3) figure out the “gaps” in the rules (4) begin to try out the rules in hypotheticals (5) figure out a firm policy to how to address the new rules and advise clients with respect to same (6) draft said letter (7) begin to apply the rules to specific portfolios (8) identify and advise clients with respect to particular portfolios–no two portfolios are alike and require individualized recommendations?

  12. The PLI website indicates that Senator Chuck Schumer has sent a letter to the PTO delaying implimentation of the rules pending an investigation.

  13. GSK’s Reply Brief is EXCELLENT!

    GSK nailed the PTO in all respects, including the PTO’s nonsense about having “sunk” a substantial investment into gearing up its computer systems to the Rule changes, and the full NINE hours of time devoted by the PTO’s staff in training.

    The U.S. Attorney’s Office, for reasons only conceivable to it and the PTO, are frantically filing oppositions to every conceivable amici, which are almost as counterproductive as its surreply filings of earlier today.

    The DOJ and PTO are now searching for some litgation “magic bullet” with the slew of dubious filings today, apparently, not recognizing that such filings are counterproductive to its (lost) cause!

  14. “See PACER for a copy.”

    Please, please post it, Dennis. I need something to distract me from this boring new app.

  15. Jim H.,

    The safeguard clause of that section 123 also speaks volumes concerning the safeguards which the current rules do not provide:

    Sec. 123 “…No such regulation may deny applicants an adequate opportunity to obtain claims for any invention disclosed in an application for patent.”

  16. Tom Dodd,

    HATS OFF to your effort and contribution! I know your contribution — along with another group I am associated with — had impact in getting this information into a footnote as we suggested!

    Here is a quote from GSK’s Reply re PI:

    “Also probative is the fact that, in 2005, the House considered vesting the PTO with authority to limit continuing applications, further evidencing that the PTO presently lacks such authority. See H.R. 2795, 109th Cong., § 123
    (June 8, 2005) (“The Director may by regulation limit the circumstances under which an
    application for patent, other than a divisional application that meets the requirements for filing under section 121, may be entitled to the benefit under section 120 of the filing date of a priorfiled application . . . .”).

  17. YOURMOMMASAYS,

    Here’s a cut-and-paste of one of the PTO’s filings:

    Respectfully submitted,
    CHUCK ROSENBERG
    UNITED STATES ATTORNEY
    By: /s/________________
    LAUREN A. WETZLER
    RALPH ANDREW PRICE JR.
    R. JOSEPH SHER
    Assistant United States Attorneys
    Attorneys for All Defendants
    Justin W. Williams U.S. Attorney’s Building
    2100 Jamieson Avenue
    Alexandria, Virginia 22314
    Tel: (703) 299-3752
    Fax: (703) 299-3983
    Lauren.Wetzler@usdoj.gov

  18. Is there a website that holds copies of the various filings?
    I had been looking at IPWatchdog and a couple others, but they don’t have copies of the most recent filings. Also, Justia has documents only up to about Oct. 15th. Is there a better place, or shall I be resigned to getting a PACER log-in established?

    Thanks.

  19. YOURMOMMASAYS,

    Don’t rely on this, but I believe there is a section of the DOJ that performs the litigation for administrative agencies.

  20. The Wheelan quote (on video at KelleyDrye) seems to contradict the sur-reply of the PTO (filed by Dudas) in the GSK case (the sur-reply to the AIPLA).

  21. I believe that most of this confusion could have been avoided had AIPLA simply affirmative articulated the fallicies of the rules early on. The fact that AIPLA waited so long to raise these issues makes me wonder if there should not be a shake-up of the upper management of AIPLA. This is definitely a case where better late than never certainly does not apply.

  22. Edwin D. Schindler,

    I see the following:

    Docket No. 55
    PTO’s Surrebuttal to AIPLA’s Reply

    Docket Nos. 56 & 57 (same):
    PTO’s Reply to GSK’s Oppo to Motion to Strike

    Docket No. 58:
    GSK’s Reply to PTO’s Oppo to Motion for PI

    Tally: Two Replies, One surrebuttal

    Concur?

  23. My “correction” was incorrect!

    The DOJ/PTO actually DID file a Surreply Brief on AIPLA’s motion for leave to file its amicus brief. The PTO simply termed the filing a “response.”

  24. Correction: The DOJ/PTO filed a Surreply Brief “only” on its pending motion to strike the Manbeck Declaration.

    No surreply has been filed in response to the AIPLA Reply Brief.

    Still desperate for daylight at the PTO!

  25. PTO is apparently freaking out!

    The DOJ/PTO has just filed a surreply brief to AIPLA’ reply brief for leave to file its amicus brief and a surreply brief to GSK’s reply brief on the PTO’s motion to strike the Manbeck Declaration.

    There’s always been some debate as to whether judges actually read reply briefs. Unless invited by the court, it seems doubtful that the surreplies will go very far!

    The PTO’s perceived need to file the surreplies says a great deal about how it views its own dismal chances of success. Time to hide sharp objects and lock the upper floor windows at the PTO! :-)

  26. They can’t propose new rules which are laid on top of earlier proposed rules. I’m sure that if the new rules re: claims and continuations go into effect, that the Markush proposals will be revised to deal with that. However, it is tricky trying to read all the proposals collectively.

  27. P.S. Rule 142(c) disappearing due to (mistaken) overwriting would perhaps be just like current Rule 704(c)(11) disappearing due to apparent (mistaken) overwriting.

    Haven’t yet been able to digest what Rules 703 and 704 will be like without the current 704(c)(11) which will apparently go bye-bye on Nov. 1 if the new rules are implemented:

    § 1.704 Reduction of period of adjustment of patent term.
    (c) Circumstances that constitute a failure of the applicant to engage in reasonable efforts to conclude processing or examination of an application also include the following circumstances, which will result in the following reduction of the period of adjustment set forth in § 1.703 to the extent that the periods are not overlapping:
    (11) Further prosecution via a continuing application, in which case the period of adjustment set forth in § 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.

    Seems like there may be no loss of patent term extension by filing a continuation – perhaps the extensions just keep accruing?? :-)

    As they’ve always done in Chicago….

  28. “However, in the Rules proposal of August 10, 2006 (Markush changes), section 142(c) mysteriously (or not?) disappears- the entire section 142(c) that created SRRs was overwritten and not re-inserted anywhere else.”

    Thank you, Tom.

  29. I really hate to stir the pot some more (truly I do!), but here’s another tidbit-

    One of the few positive aspects of the C & C Rules was section 142(c), which allowed for suggested restriction requirements, which on its face would at least appear to mitigate some of the damaging effects of the 5/25 rule.

    However, in the Rules proposal of August 10, 2006 (Markush changes), section 142(c) mysteriously (or not?) disappears- the entire section 142(c) that created SRRs was overwritten and not re-inserted anywhere else.

  30. Anonexaminer-

    Don’t know if you found a cite for my statement that PTO was pushing for Section 123, and don’t know if there is one.

    The PTO support for proposed 123 became known at a Town Hall meeting at the NAS in early June 2005- the day after Rep Smith introduced HR 2795 in the House.

    At that meeting, PTO reps and also a telecom company rep made arguments in favor of proposed Section 123- the PTO said it “was the only way to ease the backlog,” while the company rep statement was quite venomous, lashing out at the “evil patent trolls,” who “game the system to prevent products from coming to market.”

    123 was barely a footnote at this meeting, and the proposed section disappeared without even a comment at the second draft that went to the House Subcommittee a few months later.

  31. All of below is quoted from the article (Copyright PortfolioMedia, Inc.)

    “As mentioned above, according to Rule 78(f)(3), where two or more commonly owned applications contain patentably indistinct claims, the Office MAY, without citing any statutory or judicial authority to support the “rejection”, require elimination of all patentably indistinct claims from all but one of the applications. Moreover, under 75(b)(4), even if two or more such applications are permitted to remain pending, if a first application contains five independent claims and twenty five total claims, the Office WILL NOT issue a patent to a commonly-owned co-pending second application if it contains at least one claim that is patentably indistinct from at least one claim in the first application.

    Thus, Rules 78(f)(3) and 75(b)(4) can effectively act as an outright bar to obtaining a follow-on patent claiming an obvious variation of a previous discovery. This bar against obtaining such improvement patents is contrary to statute.

    On three different occasions Congress has enacted legislation specifying when an applicant may obtain a patent claiming obvious variations of previous discoveries. In 1984, Congress amended 103 to disqualify events falling exclusively within 102(f) or (g) from use as prior art under 103. This exemption from prior art, which can now be found in subsection (c) of 103, was enlarged by the American Inventors Protection Act of 1999 (AIPA), to include a disqualification of obviousness rejections based on 102(e). In particular, 103(c) was amended to provide

    (block quote) subject matter developed by another person, which qualifies as prior art only under one ore more of subsections (e), (f), or (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.
    In 2004, Congress once again broadened the 103(c) exemption via the Cooperative Research and Technology Enhancement Act (CREATE Act). Under the CREATE Act, the meaning of “owned by the same person or subject to an obligation of assignment to the same person” appearing in 103(c) was extended to include situations where the invention under consideration was made pursuant to a written joint research agreement that had been entered into with the party who developed the prior art. (end block quote)

    Thus, by the statutory authority provided by 103(c), a party can obviate an obviousness rejection based on subsections (e), (f), or (g) of 102 and obtain a patent to obvious variations of earlier discoveries provided, at the time the obvious variation was made, there was common ownership, an obligation of common ownership, or a written joint research agreement in place. Accordingly, based on the fact that the 103(c) exemption was not only enacted but also broadened twice by subsequent legislative enactments, it clearly follows that Congress envisioned that patent applicants are entitled by law to obtain issued patents directed to obvious variations of earlier discoveries where the conditions of 103(c) are met.

    As discussed above, however, under Rule 78(f)(3), the Office has provided itself with absolute discretion in deciding whether a party will be permitted to maintain commonly owned separate applications with patentably indistinct claims. Moreover, even if such separate applications are permitted, the Office’s limit on the number of independent and total claims under Rule 75(b)(4) means an applicant who maintains five independent and twenty five total claims in one application will be completely barred from pursuing a second application containing one or more claims encompassing obvious subject matter. Importantly, these bars under Rules 78(f)(3) and 75(b)(4) apply even if an applicant otherwise would have been permitted to obtain separate patents via the §103(c) statutory exemption. Accordingly, it follows that Rules 78(f)(3) and 75(b)(4) run contrary to statute and should be repealed.

  32. concerned practitioner,

    Any chance you could provide some quotes under the “fair use” doctrine to those of us that don’t subscribe?

  33. Check out this article on IP360 today “New Rules 75, 78 Unfairly Penalize Research Entities.” The article analyzes why the new rules are contrary to 103(c) and express Congressional intent.

    link to ip.law360.com

  34. anonexaminer,

    Continuing my thoughts from my previous post…

    Section 120 reads:

    1) a second continuation application seeking priority from :
    2) an original application, OR
    3) a first application in a chain seeking priority to another intermediate application in the chain or the original application.

  35. anonexaminer,

    I do not read the term “an” in a numerical context, i.e., one, two, etc…, or in the context of singular v. plural. Instead, I read “an” as being able to substitute the term with “a first” and “a second.”

  36. Edwin D. Schindler,

    I appreciate your brevity, and I will use your thoughts to summarize my previous thoughts and arguments:

    First, regarding

    Had the PTO promulgated rules that adopt the “unexplained and unreasonable delay” standard of recent CAFC case law, and asked that a showing be made to “explain” why a continuation was being filed and that the filing was not “unreasonably delayed,” then the PTO would be within its statutory right, as defined by case law.

    I agree. This is the point that I have been unsuccessful in articulating. I view this standard as a permissible “condition” on continuations practice which does not exceed Chevron-deference. I view the “could not have” standard (i.e., condition) imposed by the PTO — and as argued by GSK in its motion for PI — to be impermissible and exceeding Chevron-deference for the reasons stated by GSK.

    Regarding,

    Had the PTO indicated that it would grant a petition to file a third continuation under such circumstances, and sought to limit its denials to situations evidencing “prosection laches,” as the recent CAFC case law discusses, then there would likely be little in the way of complaint or judicial challenge to the PTO’s conduct.

    I agree.

    Regarding,

    The rule in statutory construction – much to the disappointment of bureaucrats everywhere – is that a statute must affirmatively provide for such rule-making authority; silence on the issue does not vest such authority because a bar is absent.

    I realize that the rule-making authority is granted in 35 USC § 2 (there may be others), and I agree that silence per se is not a grant or authority. In exercising the grant of such authority, the PTO may promulgate rules so as not to conflict with both statutory and case law. From above, the PTO may promulgate rules to condition continuations practice with standards developed by case law — but not these set of rules.

    Edwin D. Schindler, I compliment you and your well-articulated reasoning.

  37. “as Richard Feynman once said, ‘No one truly understands quantum mechanics,’”

    Well, what a way to win an argument… by quoting Richard Feyman.

    Didn’t he also say there’s plenty of room at the bottom? (Might be apropos here, though not in the way he intended it.)

    link to zyvex.com

  38. BTW, Dennis, when you first reported the GSK case you pondered why K&E, your former firm, brought this case when they don’t do prosecution. Due to the potential for conflicting out major prosecution clients, isn’t it rare for a prosecution shop to do litigation? To wit, the firm formerly known as Burns Doane…

  39. Mr. Schindler, regarding:

    “The absence of a bar to the excercise of agency rule-making authority in the plain meaning of statutary language does NOT mean that such rule-making is permissible because the statute is silent. The rule in statutory construction – much to the disappointment of bureaucrats everywhere – is that a statute must affirmatively provide for such rule-making authority; silence on the issue does not vest such authority because a bar is absent.”

    I was just thinking about this. For example, what would prevent the PTO from requiring something like running a marathon first before filing, or that a person filing the papers must wear their underwear on the outside of their clothes? I know these examples are silly, but silence presents an infinite number of possible “requirements” by rule-making.

    Also, what in God’s name is the PTO’s reasoning for preventing introduction copied claims in a continuation to provoke an interference?

  40. AIPLA filed a splendid Reply Memorandum this evening in support of it being permitted to file and have considered its amicus brief.

    The PTO, represented by the Department of Justice, complained that it was overwhelmed with GSK’s filings and those of the AIPLA. Tough!

    If the PTO thinks it’s overwhelmed, it should try reading its own Rules!!

  41. “Does this mean that the PTO is prohibited under 120 from promulgating future rules placing conditions on more than two continuations? In my opinion, no. The language on the face of 120 makes no such prohibition.”

    I disagree! Had the PTO promulgated rules that adopt the “unexplained and unreasonable delay” standard of recent CAFC case law, and asked that a showing be made to “explain” why a continuation was being filed and that the filing was not “unreasonably delayed,” then the PTO would be within its statutory right, as defined by case law.

    One perfectly valid reason for filing a continuation application would be to “copy” claims for provoking an interference. 35 U.S.C. §135(b)(1) and (2) provide a one-year statutory bar for copying claims, with a limited exception discussed most recently by the CAFC in In re Berger (2003).

    Copying claims for provoking an inference is permitted by statute, which would seem to be a perfectly valid “explanation” for filing a continuation application. If filed within the statutory period of “repose” under §135(b), it would seem that no “unreasonable delay” would be possible, since an “unreasonable delay” is statutorily barred.

    The PTO has indicated that it would NOT grant a petition for a third (or more) continuation application where the specific purpose was to copy claims for provoking an interference.

    The PTO has also indicated that it would NOT grant a petition for a third (or more) continuation application in situations where a final Office Action indicates both allowed/allowable claims and rejected claims. The option of cancelling out the rejected claims and receiving a Notice of Allowance on the allowed/allowable claims, while continuing to prosecute the finally rejected claims in a continuation, would NOT be a basis for granting a petition for a third (or more) continuation. Presumably, it would also not be a basis for the granting of a petition for a second (or more) RCE. A statutory six-month period for response set by the final Office Action would prevent “unreasonable delay” and, the fact that the PTO did not allow all claims and issue a Notice of Allowance, rather than a final Office Action, certainly was not the choice, or preference, of the patent attorney or his client.

    Had the PTO indicated that it would grant a petition to file a third continuation under such circumstances, and sought to limit its denials to situations evidencing “prosection laches,” as the recent CAFC case law discusses, then there would likely be little in the way of complaint or judicial challenge to the PTO’s conduct.

    Then there are the incomprehensible rules regarding “patentably indistinct” claims: Inasmuch as case law establishes the law of obviousness-type double patenting and the use of a terminal disclaimer for claims that are patentably indistinct, but not identical in scope, the PTO acts contrary to case law by effective limiting, if not repealing, the doctrine of obviousness-type double patenting.

    The 5/25 claim rule is also ridiculous: Since the statutory fee scheme contemplates “excess” claims and charges an additional fee for their pendency, but does not place an absolute number on either the number of independent claims or total claims, the PTO should not be permited to read any “number” limitation into the statute where one does not exist.

    Asking whether §120, for example, contains language that prevents the PTO from imposing limits on continuation practice is an incorrect analysis, framed in the negative. The absence of a bar to the excercise of agency rule-making authority in the plain meaning of statutary language does NOT mean that such rule-making is permissible because the statute is silent. The rule in statutory construction – much to the disappointment of bureaucrats everywhere – is that a statute must affirmatively provide for such rule-making authority; silence on the issue does not vest such authority because a bar is absent.

    The PTO will lose on Wednesday, because it could have properly taken an inch, but, instead, went for several thousand miles. Rather than propose “tweaking” the system in a manner clearly consistent with the case law, it “proposed” Rule changes that are so complicated, complex and convoluted that, as Richard Feynman once said, “No one truly understands quantum mechanics,” the repeated clarifications and explanations by the PTO evidence that: “No one, including the PTO, truly understands the PTO’s proposed Rule changes!”

  42. Re Harm to the Public for an Injunction:

    Granted I don’t understand OMB requirements in Rule Making, but the PTO statistics in the Final Rule notice seem to establish a substantial burden on the public (a low estimate?):

    “reviewing the collection of information. OMB Number: 0651–0031.
    Title: Patent Processing (Updating). Form Numbers: PTO/SB/08, PTO/SB/
    17i, . . . .
    Type of Review: Approved through September of 2007. Affected Public: Individuals or households, business or other for-profit institutions, not-for-profit institutions, farms, Federal Government and State, Local and Tribal Governments.
    Estimated Number of Respondents: 2,508,139.
    Estimated Time Per Response: 1 minute and 48 seconds to 24 hours.
    Estimated Total Annual Burden Hours: 3,724,791 hours.”

  43. Here is another gem of legislation previously proposed by the PTO regarding continuations and patentably indistinct applications:

    United States Patent and Trademark Office Reauthorization Act, Fiscal Year 2003 (June 2002), available at
    link to twiki.org

    The mechanism here was extreme fees. The proposed fees would increase geometrically for applications with more than three independent claims, more than 20 claims in total, or more than two continuations (3rd continuation = $1000, 2nd = $2000, 3rd = $4000, etc). Crippling fees, starting at $10,680 per “offending” application, were proposed where applications contained claims that were not “patentably distinct” from those in a copending application. These fee increases were described by the USPTO as a solution to “discourage behavior that is crippling [the USPTO’s] ability to provide a quality and timely patent.” The fees were criticized by industry groups as “punitive” and “penaliz[ing] legitimate practices.”

    Related legislative hearings at:
    link to commdocs.house.gov

    In retrospect, the proposed legislation appears to have been geared towards encouraging industry to pressure Congress to halt fee diversion from the USPTO. It was frankly acknowledged by the USPTO that the fees were designed to make up for $162M being diverted annually from the USPTO (one of the major causes of the backlog problem).

  44. Jim H,

    Lets consider a couple things. You are right about the 1) “an application”, 2) “the first application” and 3) “an application” sequence. It seems to refer to

    1) the instant continuation application seeking priority from :
    2) an original application, OR
    3) an intermediate application in a chain seeking priority to another intermediate application in the chain or the original application.

    Now, under the new rules, the second “an application” could only be construed (as a possible intermediary in a chain of continuation applications) to read as “one application” because no more than one application can continue from it (i.e. two cons total). BUT, the first “an application” (i.e. the present con seeking priority) could be read to be plural because two cons can seek priority to one original app.

    Contrast this with Henriksen which would have had unlimited cons that could depended upon an original or a continuation of an original but no cases permitted to receive priority on a con of a con of an original.

    See how the USPTO can’t make up their minds??? The proposed rules were also different than the final ones and the one suggested in Henriksen. I think, in Hogan, there was even maybe another interpretation of 120 by the USPTO. Now, plant this lack of consistency into the agency’s “reasonableness” with respect to promulgating the rule under Skidmore.

  45. The rules are not fair to us older practitioners. We should be grandfathered in. Has anyone called ARRP about this?

  46. AnotherDisgustedPatentAttorney,

    My comments have been directed to the language of section 120 and whether the PTO is entitled to Chevron-deference in a general sense.

    If you believe the conditions imposed by the PTO in the rules are NOT entitled to Chevron-deference, I agree. I strongly favor a court’s injunction.

    Does this mean that the PTO is prohibited under 120 from promulgating future rules placing conditions on more than two continuations? In my opinion, no. The language on the face of 120 makes no such prohibition.

  47. “AnotherDisgustedPatentAttorney,

    If you believe that the language on the face of section 120 prohibits conditional continuation practice, then we disagree.”

    Jim H.,

    Where did I say that?

    I’ll try one more time. My contention is that, in fact, the “condition” imposed on filing additional (i.e., more than two) continuations is a prohibition, given that, according to the PTO’s commentary on the subject, it will be virtually impossible to make a showing that results in a granted petition to allow an additional continuation.

  48. anonexaminer,

    Enter 2795 in the search provided in the following link:

    link to thomas.loc.gov

    It should give you the information you seek.

    Section 120 begins with “an” application. Then, in the same sentence towards the end, it references the “first” application or on “an” application. I count three (a first and two “an”s) separate applications using the “an” scenario.

    However, how is placing a condition on more than two applications prohibited under 120? I do not see a prohibition on the face of section 120 that prohibits conditional continuation practice.

    Now, I am aware of the case law stating that an application can not be restricted to the number of continuations, but in my opinion, restrictions are not the same as conditions.

    I want to read the language of section 120 to give the applicant the right to an unfettered amount of continuations, but I do not see the language. Assuming that section 123 was not presented before the House, I would accept the PTO’s argument with respect to the interpretation of section 120 and Chevron-deference.

    However, the PTO is not entitled to Chevron-deference to the current continuations practice rules that it has promulgated.

  49. 1 USC 1 includes

    words importing the singular include and apply to several persons, parties, or things;

    words importing the plural include the singular;

    I’ll have more on this subject later. You know the USPTO wants the first “an application” to read either one or two, but the second “an application” can ONLY read as “one application” under the new rules.

  50. Right, I see the comments from Dodd above. But, I’m working on a review article and need a real “cite” for this information. I’m not quite sure where I would find proof that the suggested the proposed statute.

  51. Hey Jim, Thanks – I see the proposed 123 in HR 2795, but how do we know that the agency lobbied for the redacted statute?

  52. AnotherDisgustedPatentAttorney,

    If you believe that the language on the face of section 120 prohibits conditional continuation practice, then we disagree.

  53. YOURMOMMASAY,

    First, my comments have been about continuations practice rules that have been promulgated. As for ESD, it cannot be allowed. Section 111 defines what an application is (specification, drawing, oath) and ESD is NOT defined to comprise an application. To agree with the ESD is to enlarge the scope of the definition of a patent application. Congress has expressly stated what conprises an application, and the PTO does not have Chevron-deference to enlarge it with an ESD.

    I agree with what you have said with regards to the 101, 102, and 103 (and I would add 112). Now work that in with continuations. How do your arguments apply?

  54. YOURMOMMASAY,

    First, my comments have been about continuations practice rules that have been promulgated. As for ESD, it cannot be allowed. Section 111 defines what an application is (specification, drawing, oath) and ESD is defined to comprise an application. To agree with the ESD is to enlarge the scope of the defintion of a patent application.

    I agree with what you have said with regards to the 101, 102, and 103 (and I would add 112). Now work that in with continuations. How do your arguments apply?

  55. Jim H.,

    You missed my point. My point was that the “condition” here (read the PTO’s discussion of what might be a satisfactory showing) is a de facto prohibition.

  56. Can someone provide me a reference with respect to the suggestion that the PTO suggested the section 123 amendment?

  57. Jim H. You got it all wrong. The USPTO has to issue a patent on any patent application filed, unless one of the stipulations set forth in 35 USC 102 arises, as modified by 103 and the claimed subject matter is statutory 35 USC 101. They can’t say we aren’t gonna examine it because you didn’t provide an ESD or you have too many claims or we don’t like your claim to priority. Christ man. Don’t you get it either. A patent application SHALL issue as a patent unless very limited circumstances occur.

  58. AnotherDisgustedPatentAttorney,

    The language of section 120 does not prevent the PTO from conditioning continuation practice. An applicant has the right to continuation practice, but this doesn’t mean that the PTO cannot request a justification for more than two. The PTO is entitled to Chevron-deference in developing procedures with respect to continuations practice on the face of 120.

    However, these rules as promulgated deserve no deference. The PTO missed the target. Furthermore, the PTO should now be estopped due to the Congressional actions regarding the previously-proposed section 123.

  59. To Jim H and others:

    Here is my analysis of the USPTO’s authority. Congress can give the USPTO either implicit or explicit authority to fill interpretive “gaps” of statutes. See Chevron. This authority can be either explicit (i.e. such as, in the proposed legislation giving EXPLICIT authority to interpret 120), or perhaps, implicit.

    Furthermore, the type of authority (implicit/explicit) given by Congress is specific per statute. See Mead. So, the courts will need to look at if Congress has given either implicit, explicit, or no authority to interpret 120.

    Arguments proceed as follows:

    First – I would argue that the authority is certainly NOT EXPLICIT because the statutes simply don’t provide for it AND the proposed legislation is a good peek at what such authority WOULD look like. It does not exist, however. Hence, the arbitrary and capricious standard is out the window.

    Second – 120 is “lock tight” (i.e. totally unambiguous); under Chevron, no deference is due to the USPTO. Furthermore, Congress has provided no explicit authority to interpret 120. The USPTO decided (ad hoc) to interpret the second “an application” in 120 as “ONE application”. However, this interpretation is NOT merited. For instance, as suggested in Henriksen, 1 USC 1 suggests that, in the USC, the word “an” can mean both the singular and the plural. That is, the pre-rule interpretation was appropriate. 35 USC 120 is not ambiguous on any level and Congress did not want the USPTO to “regulate” it is any terms.

    Third – One can ask if Congress intended to IMPLY a “gap” for the USPTO to fill via regulations, but the legislative history behind 120 does not support this. If the courts think that the authority to interpret 120 was implicitly provided by Congress, a Skidmore “reasonable” type test applies. This is a less deferential test. One factor under Skidmore is the agency’s consistency in their interpretation of the statute it is interpreting. Now, think about it, how many times has the USPTO changed it’s position with respect to the number of continuations permitted under 120. 1) The argument set forth in Henriksen (i.e. grandparent, but not greatgrandparent, etc., 2) The proposed rules, and 3) The final rules. I think we could brainstorm some others, too.

    I don’t really think that the substantive/procedural questions have any merit here folks.

  60. “The PTO is not `preventing’ applicants from asserting late-presented claims — merely putting a condition on them by means of a petition.”

    Yes, a condition that can almost never be satisfied. In fact, they are preventing filing of more than two continuations. To contend otherwise is disingenuous.

  61. To NL, I’m deleting priority claims as I can, I’m hoping it’s retroactive. I don’t know for sure. With respect to deleting priority claims after allowance, that I believe would raise a substantial new question of patentability (since it changes the date of the search for prior art). If a prior patent to a child/grandchild etc. has issued, I don’t think that you can remove priority to the prior patent’s parents from the child/grandchild(or, you can, for term purposes, but it won’t change the family analysis from the standpoint of # of continuations)

  62. Hey Jim H. I have this to say to you BAAAAAAA BAAAAAAA. Now please go back to your regularly scheduled programming. Sheeple phew!

  63. SMACK DOWN

    I no longer want just an injunction. I want a reprimand. Something embarassing for the record. A “smack down”. The guy who mentioed Gitmo and other scandals, this is not all that different. Sure, there is no torture etc. but we are seeing the effects of a government that acts unilaterally and with stated intent that is not the true intent.

  64. SMACK DOWN

    I no longer want just an injunction. I want a reprimand. Something embarassing for the record. A “smack down”. The guy who mentioed Gitmo and other scandals, this is not all that different. Sure, there is no torture etc. but we are seeing the effects of a government that acts unilaterally and with stated intent that is not the true intent.

  65. SMACK DOWN

    I no longer want just an injunction. I want a reprimand. Something embarassing for the record. A “smack down”. The guy who mentioed Gitmo and other scandals, this is not all that different. Sure, there is no torture etc. but we are seeing the effects of a government that acts unilaterally and with stated intent that is not the true intent.

  66. Couple of questions re. deletion of priority claims (I hope this is the right place to post them):

    o Does the deletion of a priority claim have a retroactive effect? In other words, is it as if the priority claim were never made? Consider the following scenario – Application “A” is filed and then application “B” is filed, claiming priority from application A. Applications A and B are taken up for prosecution. The Examiner finds very close art for Application B and the applicant decides he wants to abandon the application. The USPTO has already said that abandoning the CON (i.e. application “B”) will not allow the applicant to file 2 more CONs from application A, whether or not B is abandoned prior to or after examination. However, what if the applicant were to delete the priority claim prior to abandoning application B? Would application A then be entitled to two more CONs?

    o Related question – can the priority claim be deleted at any point before/during/after prosecution (e.g. after allowance)?

  67. Couple of questions re. deletion of priority claims (I hope this is the right place to post them):

    o Does the deletion of a priority claim have a retroactive effect? In other words, is it as if the priority claim were never made? Consider the following scenario – Application “A” is filed and then application “B” is filed, claiming priority from application A. Applications A and B are taken up for prosecution. The Examiner finds very close art for Application B and the applicant decides he wants to abandon the application. The USPTO has already said that abandoning the CON (i.e. application “B”) will not allow the applicant to file 2 more CONs from application A, whether or not B is abandoned prior to or after examination. However, what if the applicant were to delete the priority claim prior to abandoning application B? Would application A then be entitled to two more CONs?

    o Related question – can the priority claim be deleted at any point before/during/after prosecution (e.g. after allowance)?

  68. Concerned Patent Citizen,

    I am having difficulty agreeing with GSK’s position that the changes to § 120 are substantive. In fact, they being their argument assuming the changes are substantive without making the case that they are. The PTO is not “preventing” applicants from asserting late-presented claims — merely putting a condition on them by means of a petition.

    Given that, I believe the rules should be permanently enjoined for other reasons, and one of these reasons is that the PTO — by presenting a proposed § 123 — two years ago — thought then that a law was needed to place any restriction or condition on continuation practice. Now that I’ve learned about § 123, it sure seems that the PTO thought then that 121 was substantive even though I am of the opinion that, on the face of 121, placing conditions on further continuations was permissible under Chevron.

  69. Also, if you file an additional continuation beyond those that the new PTO rule allows, so that they do not recognized your priority claim and reject you on the basis of your own earlier publication of the subject matter of your application, why is that not substantive?

  70. In the substantive vs procedural debate, the purpose of the rulemaking may have some role. If the purpose really is to cut down the backlog, that may sound like procedural.

    If it is to prevent applicants from presenting claims late in the prosecution (like Whealan told the ABA.IPL section in Boston) how can that be anything but substantive?

  71. I found the post regarding the former proposed §123 to be quite interesting and have passed it onto GSK’s attorneys.

  72. “My sources at the PTO say that they are running scared over there about the prospects of the GSK injunction, and that if GSK prevails and the rules go down, ‘people are going to be fired.’”

    Let’s see. Katrina. Abu Ghraib. Iraq debacle. Plame-Gate. Accountability and firing in THIS administration?? I’ll believe it when I see it.

  73. Tom Dodd,

    POC information should be on the complaint or motion for PI.

    This information would work well if it found its way into a footnote in GSK’s reply.

  74. I’m not going to try to condense an administrative law primer or casebook here, so my statements my be overly simplistic (and truely, there is intentional ambiguity in the interpretation of what is substantive and what is “interpretive” or procedural rulemaking).

    Substantive rules have the force and effect of law. Interpretive or procedural rules are guidelines (like the MPEP) which do not have the force and effect of law.

    Although there are no clear cut tests as to what constitutes a substantive versus procedural/interpretive rulemaking, there are inferences that a rule is interpretive/procedural if it does not effect a change in existing law or policy, individual rights, or obligations (see i.e., Powderly v. Schweiker, 704 F.2d 1092 (9th Cir. 1983)).

    Three elements must be satisfied before a rule can be deemed substantive and have the force and effect of law: (1) the rule “effects a change in existing law or policy” which “affects individual rights and obligations;” (2) the agency has been delegated statutory legislative authority, and that the rule was promulgated pursuant to that authority; and (3) the agency must have given notice by publishing the proposed rule in the Federal Register for comment pursuant to section 553 of the APA (see, Chrysler Corp. v. Brown, 441 U.S. 281, 302- 303 (1979), and Cubanski v. Heckler, 781 F.2d 1421, 1426 (9th Cir.1986)).

    An agency that has congressional authority for substantive rulemaking receives deference in lawsuits for its rulemakings, under Chevron (Chevron, U.S.A., Inc. v. Natural Resources Defense Council, 467 U.S. 837 (1984)). Hence, the phrase “Chevron deference.”

    A case more on point with the PTO’s rulemaking authority (or lack therof) is Animal Legal Defense Fund v. Quigg, 18 USPQ2d 1677 (Fed.Cir.1991). The Federal Circuit heard arguments regarding the PTO’s 101 guidelines regarding non-naturally occurring organisms as being patentable subject matter. The Federal Circuit said that the 101 guidelines were merely interpretative of previously valid administrative actions, and therefore, represented no change in the law by the Commissioner. Thus, the rules promulgated by the PTO setting forth the 101 guidelines amount to “interpretive” rulemaking.
    The Federal Circuit also concluded that the delegated legislative power of the Commissioner is only directed to the “conduct of proceedings” before the PTO, and does not extend to the interpretation of substantive criteria under which a patent may be granted. As a result, the PTO’s notice of rulemaking in the case, failed as legislation since it was not promulgated pursuant to delegated authority.

    In the current rules, the PTO is seeking to change the substantive criteria under which a patent may be granted, by seeking to limit the number of claims and continuations available, among other things.

  75. Another thought- If anyone can remember as far back as the 2005 Patent Reform Bill (HR2795, first submitted on 6/27/05), this first draft bill contained a proposed new section 123…I’m really quite amazed that so far no one has so much as mentioned this fact in their briefs in favor of the TRO. Perhaps they are saving it for oral argument- I hope so.

    ‘‘§ 123. Limitations on continuation applications

    The Director may by regulation limit the circumstances under which an application for patent, other
    than a divisional application that meets the requirements for filing under section 121, may be entitled to the benefit under section 120 of the filing date of a prior-filed application. No such regulation may deny applicants an adequate opportunity to obtain claims for any invention disclosed in an application for patent.’’

    This section was proposed by the PTO (SURPRISE!)- almost all of the patent user organizations (independents, foundations, corporations, coalitions, bar associations, etc.) were opposed to this section, and it was dumped from the second draft and never reappeared- until PTO decided in January ’06 that it did not need Congress to change the law- PTO would simply rewrite the regs- and ignore the 500+ negative comments it received from the same parties who opposed the change in law.

    The whole process that has taken place from inception to implementation has been a sham and a disgrace- again, what a surprise from an administration that gives new meaning to the term “scofflaw”.

  76. patentguy,

    Good insight, but . . .

    looks like the CAFC would be the proper appellate court.

    28 USC § 1295(a) states theat the “United States Court of Appeals for the Federal Circuit shall have exclusive jurisdiction. . . of an appeal from a final decision of a district court of the United States. . .if the jurisdiction of that court was based, in whole or in part, on section 1338 of this title. . . .”

    28 USC § 1338(a) states that the “district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks. Such jurisdiction shall be exclusive of the courts of the states in patent, plant variety protection and copyright cases.”

    The rules promulgated seem to “aris[e]under any Act of Congress relating to patents[.]”

    However, if not the CAFC, wouldn’t the 4th Circuit be proper appellate court from the ED of Va and not the DC Circuit?

  77. Shouldn’t the DC Circuit, rather than the Federal Circuit, have appellate jurisdiction over what is, in essence, an issue of agency empowerment under the relevant statute?

  78. The USA who filed the PI opposition brief has an attitude problem in characterizing the AIPLA and others as a “putative amici”. This is the sort of legal namecalling used when you’re outnumbered and outgunned by real IP lawyers. Class action defendants routinely do this before certification by referring to the claims as a “putative” class action. Come sunset Wednesday, it may be more appropriate to speak of the “putative” new rules.

  79. notedwin,

    Is this truly an issue of substantive rulemaking? GSK states it is, but the PTO states in procedural. What makes a rule substantive v. procedural, and what of the PTO rules makes it an issue. Always have had difficulty determining the difference. Wondering….

  80. Smallfry – the PTO does not have the same substantive rulemaking authority as other agencies. It is in the minority of agencies in that regard. The question of the application of Chevron deference is incredibly dicey with the PTO because it has not been given a clear mandate for substantive rulemaking by Congress.
    The case is on enough of the appropriate radar screens for now. I haven’t seen much in the mainstream media, but they may be waiting for some outcome on Wednesday before they find it newsworthy.

    Weregoingtoneedabiggerboat – no quarter for Dudas, Peterlin, or anyone in league with them. Since when is ignorance of the law an excuse in a federal setting?

  81. Edwin D. Schindler,

    Only one federal circuit judge has such power? The appellate rules allow for direct appeal of a denial of an injuntion without a final judgement of the DJ? Some form of review for issues in equity?

    Jim

  82. My shop is all patent prosecutors (biotech and pharma, mostly) but as much as we agree with most everyone’s comments here, we’ve heard that the injunction/TRO is not going to happen, at least based on straight case law and the burdens for stopping administrative agency rules from going into action. It seems it would take either legislative attention or Fed. Cir. really taking a hand in this case for it to work out in our favor. But, is this truly on the appropriate radar screens?

  83. Edwin – thanks for clarifying that. I think someone last week posted here (patentlyo) that the Manbeck declaration had been stricken. At the time, I found it very odd because it seemed to happen way too quickly (at least based on my experience).

  84. One argument I haven’t seen discussed anywhere is the sly manner in which New id1ot Patent Rule 78(a) short-circuits 35 USC 121, which clearly, but implicitly, allows new material in a divisional because the statute requires an additional declaration iff there is new material.

    NiPR 78(a) now annuls that provision of 121 by restricting divisionals to claimed subject-matter left over from a restriction.

    I would also note that Dudas & Co. obviously gamed the system by publishing a bunch of straw-dog rules they never intended to implement just so they could publish those rules for comment and then hold the real rules, ostensibly “improvements” of the originals, in secret to shorten the litigation fuse prior to the effective date.

    PeeU, these Dudas dudes have a Karl Rove smell to them.

  85. Jim H.,

    I think that the Federal Circuit knows the case law and knows the problems and issues, particularly as they pertain to §120 and continuations.

    I’d be surprised if the CAFC simply allowed the continuation rules, most particularly, to take effect on Thursday, yet still believe that any damage can readiy be undone if the CAFC later decides otherwise.

    Stated differently, only one circuit judge need grant an order on Wednesday for issuance of an injunction pending appeal. To deny such an order to GSK, if necessary, and allow the continuation rules to take effect, where irreparable damage might occur before a full consideration by the CAFC on the appeal (which could conceivably be en banc consideration), could come close to deciding the issues by a single judge for the entire CAFC.

    Maintenance of the stauts quo seems the path of least resistance for now.

  86. My sources at the PTO say that they are running scared over there about the prospects of the GSK injunction, and that if GSK prevails and the rules go down, “people are going to be fired.” My vote goes for Doll going first – Dudas & Peterlin are political hacks and can be forgiven for not understanding the rules or their consequences, but Doll is a PTO lifer, and should have known better.

  87. The irony in all this is that, with GATT and the “20-year from filing patent term,” the Lemelsons of the patent world have basically been shutdown!

    Even though the patent term now runs 20 years from filing (excluding extensions due to PTO delays, appeals, etc.), practically speaking, a continuation that is filed much after 10 or 12 years of the original filing date can, if allowed, look forward to a patent term of, perhaps, six years, more or less. (The upside would of course be that only a single maintenance fee would ever be due!)

    Thus, the “string” of continuations and CIPs can no longer run on for decades and the PTO is seeking to solve the “Lemelson problem” after both Lemelson and the “fixed 17-year from issuance patent term” have “passed on.”

  88. Edwin D. Schindler,

    What makes you think the CAFC will enter an emergency injunction for GSK? What will the CAFC look at to take such action? Interesting….

  89. metoo,

    The Manbeck Declaration has not been stricken by the Court!

    Edwin,

    Thanks for the clarification. What I saw may only have been a “proposed order” (as there was no signature from the judge per se on the version I saw). As you can gather, there is much information (and misinformation) on what is going on in the GSK and Tafas suits. Still makes for an interesting “show down” Wednesday.

  90. The GSK v. PTO case, in the practical sense, should be over by Wednesday, though the dust won’t settle until sometime in November or early December.

    The motion for preliminary injunction is effectively a summary judgment motion, since only issues of law are being raised. Arguably, Tafas should have brought a summary judgment motion 20 days after filing its Complaint, and never bothered with the preliminary injunction motion in that case. To a large extent, GSK (and the rest of us in patent-land) were waiting to see what would happen in Tafas.

    Once the PTO managed to “kick the can” in the Tafas case into November and December, GSK brought its action on October 9th. Because there was insufficient time to then file and brief a summary judgment motion, GSK was required to file a motion preliminary injunction to obtain expedited/timely review.

    Since the underlying legal issues concerning continuation practice, etc., are the same for a preliminary injunction motion, presenting strictly a legal question for decision, and a motion for summary judgment (notwithstanding that summary judgment motions don’t require discussion of “likelihood of success on the merits” and “irreparable harm”), a ruling on the motion for preliminary injunction, which is recognized as establishing the “law of the case,” will likely be decisive. At the very least, the loser would have the very difficult task of explaining why any later ruling should differ on the law.

    My betting remains that GSK will prevail in the District Court, but, if not, an emergency injunction pending appeal will be entered by the CAFC, which, no doubt, has the reasaonable expectation of finding this case landing on its doorstep for Halloween.

  91. “‘I claim everything in the spec that is not covered by prior art’. In fact, that is precisely what unlimited continuations allow”

    Really? I’ve never seen that claim in a continuation.

  92. I assume the post addressed to me was by SF. To rehash our debate, I would not assume anything in the spec that is not covered by prior art belongs to the patentee. To do so would obliviate the need for claims at all. All you need would be one omnibus claim: “I claim everything in the spec that is not covered by prior art”. In fact, that is precisely what unlimited continuations allow since they allow unlimited claim changing ex post. Whether you think omnibus claims are a good thing — versus claims that “particularly point out and distinctly claim” the patentee’s actual invention — will dictate whether you think limits on continuations are a good idea.

  93. What I simply can’t believe is the ARROGANCE of the USPTO. It is simply unfathomable that these people actually believe that we exist to provide to them jobs. Their assertion that GSK unabashadly files further continuations makes it sound like this is something GSK should be ashamed of. Then they have the audacity to state that it burdens the USPTO and this is the rationale for the new rules.
    I do believe that the uppoer management has completely lost all sense of purpose and reason. If for no other reason the court MUST enter a TRO as punishment by embarrassment and to make clear that Duda and the upper managment that they are here to serve us. You are SERVANTS. Your job is to do our bidding. Dudas serves at the pleasure of the PEOPLE. The fact that Dudas cannot facilitate the USPTO to function efficiently with time-tested and historically accepted prosecution practice is a testament to the incompetence of the management of the USPTO. You don’t kick the customer when they want to pay you for more services. When that happens the shareholders FIRE the managment team for failing to satisfy the demands of the custormers. Dudas has stated in this document why the present management policy of the USPTO is an abject failure. This only exemplifies the incompetence of the USPTO in its handling of its core function.
    This is not unlike the FEMA head who got canned in the wake of the Katrina debacle. Does anyone know whether Dudas was a president of a horse breeding association?

  94. EG,

    The property rights you discuss would be extinguished if a patent is not issued. Also, they would extinguish by a simultaneous creation of a patent right when a patent issues. If kept a trade secret and not pursued as a patent, the property right still exists.

  95. metoo,

    The Manbeck Declaration has not been stricken by the Court!

    On October 19th, the DOJ/PTO filed a Motion to Strike the Manbeck Declaration on three grounds, and on October 26th, GSK filed its Memorandum in Opposition to the PTO’s Motion to Strike.

    On October 26th, the Court granted the DOJ/PTO’s Motion, brought on consent, to allow the PTO to file an opposition memorandum of up to 40 pages (thereby increasing the page limitation on consent) in response to GSK’s motion for preliminary injunction.

    There has been no order entered by the Court pertaining to the Manbeck Declaration. The Order entered on Friday, October 26th concerned solely the page limitation of the PTO’s opposition to GSK’s Motion for Preliminary Injunction.

    P.S.: Thanks for the comment re: the pic on the website. Need time get the website up and running!

  96. Re: patent application as a “property right”

    What about the “right” to warn potential infringers of what is covered by a published patent application? Isn’t that a property right? Also, if the application is pending, what about the right to mark the product covered as “patent pending”? Isn’t that a property right?

  97. “Regardless of feelings about the new rules, I’m surprised by predictions that Sec. 120 clearly and obviously invalidates limits on continuations. The statute specifies priority dates, etc. based on the “first application”.”

    Even a PTO friendly interpretation would be that Section 120 does not authorize infinite chaining of priority but says nothing about how many future applications can claim priority to a “first application.” The PTO rules go way beyond limiting that.

  98. Concerned – Agreed.
    I was merely pointing out other possible arguments that GSK could use in their reply. The trade secret argument is good, but it doesn’t directly address the property rights issues raised in the DOJ response unless you also couple it to the AIPA argument. If there is no property right in a filed application, then a trade secret would be the most secure way to protect the technology.
    Pre-AIPA filings were confidential and there was no property right that attached at filing. That meant that a property right (for exclusion) only existed once the patent was issued. It was good for 17 years from the date of ISSUE.
    The 20 years from FILING was added BY CONGRESS in the AIPA in 1999 in exchange for publication in 18 months unless otherwise requested by the applicant with a statement that foreign applications were not going to be filed, or someother petitionable reason. Thus, one could argue that CONGRESS (through the AIPA) granted applicants an express property right in pending (filed) applications from the date of filing. The express property right could be fulfilled though either the “bargained for” publication, the 20 years from filing term, or from term extension rights.

  99. After skimming the USPTO’s brief, I am confident that GSK will be able to lay the smack down in reply. (“You just got knocked the **** out!!” — Chris Tucker in “Friday” standing over Zeus.)

  100. How is the PTO hurt by having to wait to turn on the light switch for the new rules for another month or so while the court hears the merits of the case on summary judgment? It also seems somewhat disingenuous for the PTO to argue that Glaxo should be denied an injunction because there is an expedited summary judgment schedule and yet in the same sentence suggest that Glaxo should not be able to participate in the summary judgment briefing. One would think the presence of an expedited vehicle to obtain a hearing on the merits would counsel in favor of a short delay in implementing the rules, not the other way around!

  101. Merely a few “non-legal” observations:

    GSK is castigated for waiting until the very last minute. Of course, the opposition glosses over the fact the Final Rule was promulgated just two months ago.

    Using the word “dilatory” repeatedly is a “fighting” word, suggesting those practicing before the office routinely push continuation practice to the limits. I find this professionally offensive. What makes it worse, however, is then attempting in part to justify the new rules under the USPTO’s power to control how members of the bar practice before the office. Last time I looked 37 CFR addressed this issue via specific enumerated rules concerning professional responsibility modeled after the ABA model rules.

    Suggesting that trade secrets lose their force once an application is filed makes me wonder if perhaps the office has forgotten that applications can always be withdrawn if it is later determined that trade secret retention is in the long run the better course of action.

    As a federal taxpayer I am perplexed by the discussion on page 19 of the opposition that the office has expended $1.6M over the past four (4) months recoding its tracking software to reflect the new rule. It seems strange to me that the office would start this endeavor a full two (2) months before the rules were even approved and promulgated.

    Numreous other examples abound, but the above struck an immediate responsive chord when I perused the opposition.

    To its credit, the opposition does offer thought provoking arguments concerning “substantive” rulemaking and “retroactivity”. Unfortunately for it, the force of these arguments seems to get lost in the rhetoric that permeates the majority of its other arguments. Make no mistake, the threshhold issue here is whether or not Section 2 confers the authority to promulgate rules such as this. Secondarily, have the due process constraints contained in the APA been adhered to? Why the opposition did not lead off with these two, and then hammer them home repeatedly throughout its arguments, elludes me.

  102. Whoever said that Judge Cacheris had decided anything in the GSK case other than the hearing dates and admissions pro hac vice, was simply wrong. The motions to strike and motions for leave to file amicus briefs have been set for the hearing on Wednesday morning. The docket and all of the filed documents are available electronically on PACER. If you don’t have PACER, get it or find an attorney friend who does.

    The PTO’s Chevron argument mixes apples and oranges. They argue the need for Chevron deference in light of authority affecting proceedings by the office and in doing so they cite a case where a foreign national was denied registration (Lacavera v. Dudas). The authority affecting proceedings is completely different than the authority affecting practice before the office. The latter is more to the point, and is addressed in Merck v. Kessler, which GSK discusses in its motion. I just hope the court doesn’t get confused by the distinction.

    The issue about their being no property rights in pending applications is also interesting, but it is a red herring. This would have been an intersting argument 10 years ago if the 1999 AIPA had not set the patent term at 20 years from the date of filing. Because of the attachment of the 20 year term limit upon the filing of an application there is some property right that amounts to more than just a mere expectation thereof, which when coupled with the positive language of the statute’s “a patent shall be granted unless…” language, at least provides a minimal basis for the establishment of a property right upon the filing of an application. If there were no property right for filed (pending) applications how could the agency add term extension? What would the public policy basis for term extention be?
    The DOJ uses the Landgraf case to try to get around the retroactive effect of the rules. This is simply a bogus argument for the reasons I just stated. The DOJ argues that the filing of an application does not create any property rights, such that they could be retroactively affected, but in doing so, they use only FTC and Treasury cases. The cases aren’t analogous and they don’t consider the effects of the term limits or the AIPA of 1999. Instead, the DOJ sites Marsh v. Nichols, Shepard & Co. (1888).
    Someone PLEASE tell GSK to rebut this nonsense with the AIPA and term limits.

  103. Patent Medicine – I’ve read some of the cases, and agree that one can say that there is no explicit bar, though it is hardly a slam dunk.

    That said, the cases don’t specifically relate to PTO rulemaking, especially where the PTO isn’t limiting the number that can be filed, but instead interpreting when priority shall be allowed and conditions for filing.

  104. The PTO has made the following argument in opposition to GSK’s PI Motion which is wrong:

    “As explained above, the USPTO derives its authority to issue Final Rules 75 and 265 from
    35 U.S.C. § 2(b)(2). Under Chevron, the correct question is whether the statute unambiguously
    speaks to the precise question at issue. See Chevron 467 U.S. at 842-43. Sections 111 and 112
    do not address whether the USPTO may require applicants who submit large numbers of claims to aid the USPTO in examining their application by submitting an examination support document. In the absence of language in §§ 111 and 112 prohibiting Final Rules 75 and 265, and in view of the USPTO’s authority to issue regulations that “govern the conduct of proceedings in the Office” and “facilitate and expedite the processing of patent applications,” 35 U.S.C. §§ 2(b)(2)(A), (C), the USPTO’s reasonable attempt to assist examiners is entitled to the Court’s deference.”

    The problem with the PTO’s argument, in my opinion, is they have enlarged the scope of the definition of application. Section 111 defines what an application is, i.e., a specification (which includes claims under 112), drawing, and oath. If an applicant exceeds 5/25, the PTO will reject unless accompanied by an ESD. Sorry, but this action by the PTO and the mandatory ESD requirement makes it a required part of the application, thus enlarging the definition of an application and making it contrary to the plain language of § 111 defining the scope of the application. The PTO is simply wrong because there is no “absence of language in §§ 111 and 112[.]” See also the language is present in Section 111 (and all of Chapter 11 of the Patent Law “Application for Patent” (35 USC §§ 111-122) which discusses the application. Chevron does not permit them to change the language of a statute.

  105. Edwin,

    Thanks for your follow up comments. I went back to GSK’s complaint, and paragraphs 104-105 anticipate the Chevron deference argument. GSK will need to expand on this argument (I realize they couldn’t realistically do so in the complaint) and likely have anticipated such a response from the PTO.

    I also hope you’re right that the PTO brief is weaker then might have been expected. I’m going on the initial “surface view” of this brief which at least gets the PTO’s main arguments out. Kirkland & Ellis should definitely attack how “shallow” this PTO brief is, especially pointing out that the 500 comments considered were primarily adverse, the greatly changed nature of the finally issued Rules, the retroactivity of these Rules to pending applications (some which have been pending for 3-4 years or more), and the artificiality of the November 1 effective date which gave only a little over 2 months for the public to really digest a Rules package that is actually 129 pages in length when you include the comments.

    Regarding the Manbeck Declaration, what I saw last week says this Declaration was strickened by the district court judge’s order on 3 different grounds.

  106. Edwin – where did you read that it has not been stricken? it’s hard to keep track of all the information/rumors, and last I had heard the court did strike it. (by the way, love the picture on your website!)

  107. GSK explained in its opening memorandum why Chevon deference does not apply in this situation.

    The PTO’s opposition is weaker than I would have expected.

    I would expect GSK to file its Reply by Tuesday afternoon.

  108. As much as I would like to see GSK and Tafas prevail, the grant of a PI/TRO isn’t necessarily going to be the slam dunk that we hope. I’ve reviewed the PTO brief in opposition, and, at least on its surface, it provides what may be viewed as potentially persuasive arguments for upholding the Rules and the PTO’s authority to enact these Rules. Again, I’m not saying that PTO’s brief isn’t “offensive and petty” and that if you dive below the surface, this brief has problems. On glaring example these problems is the argument at page 36 the PTO brief that these Rules “specifically addressed the appropriate scope of the required preexamination search” but then cites not the Rules, but MPEP 904 et al. Another is the statements in the PTO brief, which taken on their face, suggest the cost to the PTO would be in the millions of dollars; private applicants would be likely out far more than that. I also find it interesting that one of the Declarations in support is from Lehman, a former head of the PTO; didn’t the PTO just have the district court judge strike the Declaration of Manbeck, also a former head of the PTO?

    That being said, much may depend on what deference the district court judge gives to the authority of the PTO to enact these Rules. We in the patent world are more familiar with the Federal Circuit giving little, if any deference, to the PTO when it comes to rule making that is or appears to be in conflict with the substantive law; but the district court is likely more familiar with 4th Circuit precedence which I suspect is more deferential to the agency. Accordingly, if the district court judge gives the PTO the requested Chevron deference, the hearing on Wednesday is likely not to come out in favor of GSK/Tafas.

    I expect that Kirkland & Ellis will respond promptly (and persuasively) to this PTO brief and will hopefully point out the “holes” in it if you dive below the surface. (I also find it interesting that the PTO brief complains about the tardiness of the GSK suit, yet files this brief on October 28, a Sunday). It’s going to be very interesting in 2 days to see what happens here. I suggest everyone in the patent bar pray and keep their fingers crossed on this one.

  109. “The PTO is not obviating anyone’s statutory right to file a CON or CIP, they are just putting conditions on that right.”

    Not so! If a petition to file a third or greater continuation or continuation-in-part is not granted by the PTO, then the PTO will give the “actual” filing date of the continuation or CIP, rather than the “effective” filing date to the application for which the petition is denied.

    Assuming that there has been a prior publication, either in the U.S., under the P.C.T. or elsewhere of the same application, that publication would become §102(b) prior art after one year following the publication date. If there has been a “parellel” foreign patent issued, the foreign patent would become §102(d) prior art, without any “grace” period, except for the theoretical possibility that foreign priority might still be available.

    Yes, the PTO will allow a patent applicant to continue prosecuting the continuation or CIP for which it denies a petition, the PTO would simply issue Office Actions rejecting the claims in the continuation or CIP under §102(b) or (d). An applicant is welcome to file all of the useless electronic paper desired, following such a rejection, for arguing that the claims of the continuation or CIP are not anticipated nor obvious over a publication or foreign patent having the identical disclosure.

    The PTO is, therefore, very much “obviating” the “statutory right” to file a continuation or CIP, to the extent that, yes, you can filed a continuation or CIP, you would simply have a zero chance of ever obtaining an allowance. But, yes, you are welcome to file and pay all filing fees!

  110. Maybe one of you can do something with the following additional argument.

    That is, the new rules place an unauthorized burden on rights under the PCT, and the US laws implementing the PCT. Specifically, under the new rules a US national application based on a PCT application has a greater right to file continuations/RCEs *if* a Demand under Chapter II *was not* filed. Thus the new rules both mess with the PCT, contrary to treaty and statute, and are ex post facto to boot.

    I hope one of you can make use of this argument or knows someone else who can.

  111. Does anyone have a link to the USPTO’s response? I heard it was filed Sunday evening, but I have found little information about what it contains.

  112. First, there is no TRO at issue. It is strictly a PI being sought. No time limit of 10 days like the TRO.

    Second, from the PTO’s viewpoint, they are not imposing a limitation per se on the number of continuations. They will allow many continuations as long as you petition for one and you meet their “could not have” presumption. GSK has argued that to show compliance with the “could not have” standard would cause the practitioner to violate an rule of professional conduct. Thus, the practitioner is placed into a catch-22 by submitting the petition.

    What I see the PTO doing with the new rules is creating conditional continuations instead of unlimited ones. On the face of section 120 and the above-statement from the 1863 USSC case of Godfrey, the PTO does not seem to violate the statute or Godfrey by making the applicant justify more than 2 continuations.

    That being said, the standard the PTO will apply when determining the merits of the petition will cause the practitioner to violate the PTO’s ethics rules as GSK has pointed out. Based on this argument, the continuations rules should be enjoined.

  113. Don’t understand why Dennis has only recognized this issue now. It was centerpiece of the original Tafas complaint, his preliminiary injunction motion, his second amended complaint, and subsequently Glaxo’s complaint. Dennis did you just get religion?????

  114. Don’t you just love the exhaustive list of why the backlog has occurred: “The growing number of continuing applications are attributable to a variety of factors, including: (1) applicants, such as Plaintiffs, using the availability of continuing applications to delay the conclusion of examination until they assess the commercial viability of inventions that may fall within the scope of yet-to-be-presented claims (2) applicants filing deficient initial applications and relying on the availability of an endless stream of continuing applications to work out issues of patentability; and (3) applicants filing literal or machine translated documents as patent applications and using continuing applications to correct avoidable mistakes. See Ex. 2 at 46719″.

    In other words, the backlog is completely driven by shifty applicants trying to game the system. If only applicants would file clear concise applications to begin with , then everyone’s problems would go away. There would never be another BS 112, 2nd rejection, nor would the PTO ever have to given a 112, 1st because they don’t have the time to actually try to understand the subject matter.

    And we don’t torture, and Saddam was 20 seconds away from having the H-bomb.

    Now I can believe.

  115. I read through the Office’s response to the TRO and found it offensive and petty. The act like every one who files a patent application does so for fraudualent reasons. What they are doing is the equivalent of drift net fishing, rather than going after the abuse in the system they are going to punish eveyone.

    If they had spent the “millions” it cost to develop and implement the new rules on hiring new examiners we would all be better off. Even if they had taken that money and burned it we would be better off. Argh!

  116. Michael R.: You need to read the line of cases that interprets section 120. Contrary to how the USPTO interprets them, these cases make it abundantly clear that there are NO limits on filing continuations under 120, except in the very narrow situations of the two laches cases.

    I strongly recommend reading them. There aren’t very many, and they’re quick reading.

  117. TJ
    Drafting claims isn’t easy. The English language doesn’t always allow for a clear and all encompassing claim. Inventors and practitioners are not familiar with all prior art.

    Surely, you would agree that the inventor is entitled to protection for his invention, even if he/she is not fully aware at the time of the invention (or ever) just where the boundaries of his neighbors property are. Heck, apparently the surveyor’s that mapped my home wont be pinned down any closer that plus or minus a half foot.
    Why would you deny an inventor the opportunity to better define his claim as time goes on, as long as he/she is claiming something that he disclosed, and there is no art indicating that he didn’t invent it.
    Have your competitor read the specification. If his/her product reads on something in the spec, and he/she can’t find prior art for that something, consider it belonging to the inventor.
    Problem solved.

  118. The USPTO is attempting to “work” Congress to have them clarify that 35 USC 120 *never* in fact meant what both Congress and the courts have said it meant. Perhaps the main battle this week will be on Capitol Hill, not in Alexandria. I’d bet the USPTO will try to pull out all stops to get the below “Clarification” language (from H.R. 1908) passed in S.1145 in an attempt to torpedo GSK’s “ultra vires” argument:

    SEC. 14. REGULATORY AUTHORITY.

    (a) Regulatory Authority- Section 2(c) is amended by adding at the end the following:

    `(6) The powers granted under paragraph (2) of subsection (b) include the authority to promulgate regulations to ensure the quality and timeliness of applications and their examination, including specifying circumstances under which an application for patent may claim the benefit under sections 120, 121 and 365(c) of the filing date of a prior filed application for patent.’.

    (b) Clarification- The amendment made by subsection (a) clarifies the scope of power granted to the United States Patent and Trademark Office by paragraph (2) of section 2(b) of title 35, United States Code, as in effect since the enactment of Public Law 106-113.

  119. Regardless of feelings about the new rules, I’m surprised by predictions that Sec. 120 clearly and obviously invalidates limits on continuations. The statute specifies priority dates, etc. based on the “first application”.

    Under a plain and simple reading, one can easily argue that the statute authorizes only one continuation – the newly filed application and the “first” application, and that any rules that allow more are just a bonus.

    I’m not saying that’s the way it should or will be decided, but 120 cuts in favor of limits, not against them in my view.

  120. Dear Gideon,

    You say, “And if the ‘you’ in the above quote is a majority of judges, then the ‘legal’ answer is ‘yes.’”

    I agree with you insofar as the “judges” to whom you refer abide the Constitution, whether they be the majority or not makes no matter; if judges abide the Constitution, then, and only then, the legal answer is as you say.

    Here, of course, is the only controlling legal answer:

    “The United States Constitution, Article. VI. …

    “Clause 2: This Constitution, and the Laws of the United States which shall be made in Pursuance thereof; and all Treaties made, or which shall be made, under the Authority of the United States, shall be the supreme Law of the Land; and the Judges in every State shall be bound thereby, any Thing in the Constitution or Laws of any State to the Contrary notwithstanding.

    “Clause 3: The Senators and Representatives before mentioned, and the Members of the several State Legislatures, and all executive and judicial Officers, both of the United States and of the several States, shall be bound by Oath or Affirmation, to support this Constitution; but no religious Test shall ever be required as a Qualification to any Office or public Trust under the United States.”

    I suggest caution: Beware, be afraid, be very afraid, of slipping into a state of anarchy. We are not lemmings. We must regain our Constitutional footing.

  121. With all due respect to this great blog, this article is about 4 to 6 months too late… A Patently-O dialog on this issue when the proposed new rules were first revealed might have stopped this new rule nonsense long ago and established Patently-O as more of a pioneer in the realm of patent law than it already is.

    I have sat with some great minds in an attempt to analyze the detailed application of the rules, and its nearly impossible to fix a stable family big picture scenario since each “non-provisional application” must be analyzed in view of the proposed Rule 78 independently based on the state of the family at the time of filing making it nearly impossible to develop a filing strategy. (see, e.g. the nefarious “C12″ in the new rules FAQ) If certain conditions become true, the Rules simply fail (e.g. if initial application I in C12 issues or becomes abandoned, then must Q claim priorty to P (subject matter B) even though it claims subject matter A??? The Rules clearly break down in this scenario creating what we former state machine geeks would call an undefined condition…

    There seemed to be a well established 35 USC 120 theme in many of the negative public comments about the new rules (a great many of the comments were negative if one takes the time to read them).

    Hindsight is 20/20.

  122. Back to the original topic — Section 120.

    This section is just another absolute gem of legislative clarity. It says the second application is not entitled to the filing date of the first unless the second is AMENDED to contain a specific reference to the first. Can’t remember the last time I had to amend a CON or CIP to refer to the parent.

    But Rule 78(2)(i)modifies 120 by saying the later filed application contains or is amended to contain the reference.

    So the question is not whether the Rules can modify the statutes, it’s how far can Dudas & Co push the envelope.

    The PTO is not obviating anyone’s statutory right to file a CON or CIP, they are just putting conditions on that right.

    BTW, there is nothing in Section 120 that requires you to announce in the reference whether you think you’re filing a CON or a CIP — all it requires is a reference to the parent and you are due the parent’s filing date. So there is more than one point of departure between 120 and the NiPRs.

    BTW, I can’t believe you guys sit around on Sundays reading PatObv. Can’t you get the comics away from the kids?

    BTW, that PTO opposition moan about dumping all the resources into the NiPRs, on which they never even got public comment, sounds to me like the preamble to Dudas’ letter of resignation if he loses this case. Given the way the Rocket Docket moves, he should be gone by Christmas.

    BYW, what does BTW mean anyway?

  123. “the only irreparable damage . . . would be ‘bruised egos’ in the upper management levels of the PTO”

    um, what about the competitors who have to deal with the patent that issues out of the Xth continuation that otherwise wouldn’t exist? (I realize that your response may be that it is not “legitimate” harm, but can we agree at least that it is “irreparable” harm?)

  124. What? No training?

    On page 1 of the opposition, the PTO states

    “Since then, the Office has spent millions of dollars gearing up to implement the rules by training more than 6,300 employees, restructuring its information technology systems, and preparing the public for compliance.”

    On page 18 of the opposition, the PTO summarizes the extent of training:

    “First, the USPTO has spent more than 25,000 hours preparing its employees for implementation of the Final Rules on November 1, 2007.13 Young Decl. (Ex. 6) at ¶ 13. It has developed extensive written training materials about the Final Rules. Id. at ¶¶ 6, 7 & 8. It has also offered live and computer-based classes to teach patent examiners and patent management about the Final Rules. Id. at ¶¶ 9,10. Specifically, for each of the USPTO’s 5477 patent examiners, 432 managers, and 24 directors, the USPTO has provided an Overview Training class (1 hour with accompanying slides) and a Detailed Training class (3 hours with accompanying handouts). Id. at ¶ 13. Additionally, the USPTO offered training on the Final Rules to technical
    support staff (3 hours with accompanying slides), id. at ¶ 11, and offered specialized training on ESDs to select USPTO managers (2 hours with accompanying slides and handouts), id. at ¶ 12. Thus, by November 1, the USPTO will have trained 6,300 USPTO employees for a total of 25,280 hours, translating to a loss of revenue of more than $3.1 million. Id. at ¶¶ 14, 15, 16 &17.”

    It looks like the Office only intends to offer a total of 4 hours of examiner training. If any practioner were to only spend 4 hours on the new rules we would be calling it malpractice!

  125. Thanks X, Y and Z :). Good to see there is consistency in the training, LOL! (one hour, 75 minutes, 8 hours) The more you look at it, the more confusing it is. Me thinks the PTO is only realizing this now.

  126. So far, I’ve gotten one hour of a “high-level briefing” on the new rules, at which no questions were taken. We were told that more serious training would follow, but nothing has been scheduled yet.

  127. I had an interview with a SPE two weeks ago in 1600 who conceded that they are not currently training and do not know when they will (this still seems to be true from interactions with junior examiners last week). He stated that the full extent of what was shared with the examiners at that time was that “applicants can file as many divisionals as they would like and that each one gets 2 continuations” and that applicants can file up to “5/25″ in each case. Not sure which is better… no information or bad information.

  128. The amount of training we’re getting on the rules is abysmal. The computer-based training is 75 minutes and simply directs us to use new “flowcharts” and other reference materials. Then, we’re apparently on our own to figure everything out. It’s really unbelievable. I have too many thoughts on the rules to post here–I’m just hoping that the injunction is granted. The Rules are contrary to the public interest and are making life hell for everybody right now. PTO management has gone way too far this time. I hope they get smacked down in court.

  129. You know what kills me about the new continuation / RCE limits? The filing of the petition for an extra RCE / Cont. does NOT toll the due date to respond to the outstanding action.

    Sweet. Now we have to file a petition arguing an ambiguous / undefined standard set by the PTO, and if the Petitions examiner is just as clueless as everyone else and doesn’t really know what standard should be applied, there will be a LOT of petititons to revive being filed.

    Oh wait, I think I just uncovered how the PTO plans to make up the decrease in RCE fees!

    -M

  130. I went to a three hour information session last summer, before the proposed rules were published for comments from the public. Then, I went to a two hour information session a few weeks ago. I’m expected to complete a 3 hour computer bases training by Wednesday, which I will probably do tomorrow since it’s count monday and I worked all weekend to get my counts done ahead of time (I have a grad class Monday afternoons). So, in-house training = 8 hours = not nearly enough.

  131. Just so some on the outside know, there are examiners freaking out about the rule changes going into effect too and worried about how they will impact our ability to make production under goals that are outdated and while using a classification system that is also, outdated. I feel very rushed, unprepared, not fully trained on the changes and their execution and all the while, a ton of questions regarding how to deal with certain situations that are going to come up are still left unanswered — and dooms day is less than a week away. Yet, I’ll still be trying to make my production and I’ll still be held accountable for production without so much smidge of sympathy from managment. I feel like trying to examine under these conditions will be like I’ve been blindfolded, thrown into the middle of a labyrinth and told if I don’t find my way out fast enough then that’s it — I’m fired.

  132. “the irreparable harm that would almost certainly transpire, should the Rule changes take effect, would be significant and, at the very least, would likely require some form of emergency legislation to repair. A quick “fix” would not be likely.”

    This goes to my other question I posted on the related topic. If the rules go into effect, and then an application goes abandoned because there are no RCEs or CONs left, and then the rules are overturned, I wonder if the applicant petition to revive the application? Is this really unintentional or unavoidable?

  133. I’m not Dennis – and I would find his thoughts interesting – but my prediction is that there will be a TRO, which is supposedly effective for only 10 days, or a preliminary injunction, entered, most likely by the District Court, though there is an outside chance that, if the District Court denies the motion for a TRO or preliminary injunction, the Federal Circuit will issue an “emergency” injunction pending appeal.

    The PTO’s proposed rules, particularly as to continuation restrictions, are contrary to statute and case law. The restriction on patentably “indistinct” claims is contrary to the case law concerning obviousness-type double patenting and the use of a terminal disclaimer to overcome such a rejection, which is, in effect, a rejection based upon patentably indistinct claims in more than one application or patent.

    There is absolutely no significance to the PTO’s selection of November 1, 2007, as the effective date of the newly proposed Rules, and the only irreparable damage that will afflict the PTO if the Rule changes are enjoined, at least pending final review by the District Court, the Federal Circuit and, perhaps, even the Supreme Court, would be “bruised egos” in the upper management levels of the PTO. Conversely, the irreparable harm that would almost certainly transpire, should the Rule changes take effect, would be significant and, at the very least, would likely require some form of emergency legislation to repair. A quick “fix” would not be likely.

    Given the damage that would follow if the Rules actually went into effect, an injunction of some duration on Wednesday would seem likely. Dudas & Co. will have their egos dented, but that would be the extent of damage the PTO is likely to suffer, along with having to modify its Home Page to concede that the “new” Rules concerning continuations and claims will “not” take effect on November 1, 2007, afterall.

  134. Well, this is just another, “does the 5th amendment contain a right to abortion?”

    The answer to the above question, as well as to the question posed in the topic of this thread is . . .

    “It does if you want it to.”

    And if the “you” in the above quote is a majority of judges, then the “legal” answer is “yes.”

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