Materials from Tafas/GSK v. Dudas: Challenging the PTO’s new Rules

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121 thoughts on “Materials from Tafas/GSK v. Dudas: Challenging the PTO’s new Rules

  1. Jeff:

    I think the folks over at FEMA might be up to the challege. I can predict their strategy: Instead of having a real press conference – oops, I meant hearing – they can recruit PTO lackeys to act out the parts of PTO and GSK attorneys, and the judge. The arguments will be scripted and the opinion pre-drafted to ensure that no one makes a mistake. Sound like a plan?

  2. This case seems to reinforce why the PTO should be led by registered and experienced patent practitioners like Todd Dickinson, not copyright guys like Lehman or Hill staffers like Dudas. The Bushies and the career hacks had their heads handed to them today, and need another dose with the IDS rules. Who will step up to that challenge?

  3. John-

    I agree for folks on the outside, but don’t all these folks inside get a number for just showing up for a few years? Are not the folks like Rolla and Doll inside career folks? It might explain the idiocy, and first year arguments, made today.

  4. I attended the talk that the Whelan clips are taken from. During the talk he unashamedly stated he had never prosecuted a patent before the PTO himself. Yet another example of folks in high level positions within the PTO without patent prosecution experience.

  5. Me,

    I was there too. The PTO has very few people with outside experience. I think I know just about all of them. And they’re all too smart to argue for the legality of the new rules.

    A lot has been made of the PTO not getting a “patent attorney” to argue on its behalf. Why? Who could they have possibly gotten to argue that case? There isn’t a single person with a registration number, or one who used to have one and gave it up for the easy life at the PTO, who could have turned that dog case into a winner.

    JD

  6. I certainly would agree that she was given dog poo. Short of that, she was not prepared! If I am asked to argue an area of law I do not know in an incredibly visible case, I view it as an opportunity. She seemed to view it as burden. And she said that over and over agsin.

    The bigger question is how to get the gov to admit there whole scheme is illegal, and requires a real review by good outside attorneys. How they did not know they were screwed before they entered court says something….

    I was there! How did the PTO send the DOJ to the lions? What were they thinking? Do they have ANYONE with outside expereience?

  7. Take it easy on Ms. Wetzler from DOJ. She had a pile of dog poo dumped on her desk and was told to convince the judge it was a rose bush.

  8. Not very detail oriented are you old man? I am in house and didn’t like the competitive nature of the battle. You sure can’t handle it, but you sure can dish out. That is a true sign of a partner who has been there too long – you get used to your BS being taken as meaningful truth.

    I also never lied about anything, but you can go research it. I am sure an old guy like you has little else to do.

    Have fun with that notepad – today the true intelligents are into computers.

  9. “all Associates today need to bill 2000 plus if at a good firm, and 2200 or more to make non-equity.”

    Please don’t stop sharing your fascinating secrets for becoming one of the exalted members of the “non-equity” elite at a “good firm.” I mean, that’s the meaning of existence for many young associates.

    Are you sure there are no other techniques for succeeding? What about endless ingratiating or brown-nosing or outright treachery? Have you ever known any associate to successfully employ such methods on his/her way to “the top”?

    [reaches for notepad]

    I’m all ears, friend. Spill.

  10. Not a jerk or a liar myself, but I think you get alot of readers to agree that you are, both.

    You are old then Malcolm, all Associates today need to bill 2000 plus if at a good firm, and 2200 or more to make non-equity. Is this good for the prfession? I think not, but…

    Note, I did hope to sit next to you today – your ascerbic wit would have been hilarious in real time.

  11. “Ever been an Associate who wants to bill 2200?”

    No. In fact. I’ve never met a prosecution associate who billed that much that wasn’t a jerk or a liar or both.

  12. Real Anon-

    There was also a long talk from the PTO about how these August 21, 07 were a logical extension of the Jan. 06 rules. GSK dealt with it by saying that that was wrong, and they would detail it to the court in their winning summary judgement argument.

  13. Malcolm-

    Wish you could have been there. She was a litigator from the school that argues every point, no matter how weak, and it really hurt her credibility.

  14. “Actually, the Schumer letter does refer to the “representative claims” concept that was in the 06 rules but not in the Aug 21 rules in a later paragraph, so it is slighly inconsistent.”

    So perhaps Senator Schumer assumed the final rules would follow the proposed rules, because otherwise they would have needed an additional comment period (which they did not have). Yes Senator Schumer, that’s a good argument against the rules too, I think.

  15. Ummm, I guess it depends on how broadly you read “understanding”. Ever been an Associate who wants to bill 2200? It is read narrowly, very narrowly. Basically, you pick up a deep pocketed client family and then figue out how the rules apply to it while learning the rules. And then you bill it and your partner is very happy. Sorry Malcolm, quotes too complex for you tonight?

  16. “Actually, the Schumer letter does refer to the “representative claims” concept that was in the 06 rules but not in the Aug 21 rules in a later paragraph, so it is slighly inconsistent.”

    I noticed that as well. But it surely wasn’t worth raising in an attempt to discredit the Senator’s letter. Then again, when you ain’t got nothin’ ….

  17. “Yes, they got to bill all the hours beyond “understanding” the rules.”

    I think you meant to say, “No, let me take that back and qualify what I said. Of course they didn’t get to bill out all of their hours preparing for the new rules. They only got to bill out some of those hours.”

    That’s one way of reconciling your recent contradictory comments on attorney billing practices. There may be other ways but that’s the most graceful possibility that comes to mind.

  18. “2) The Schumer letter was aimed at the ’06 rules, not the August 21 rules. This, of course, was easily refuted by GSK as the letter points to August 21 in the first freakin’ paragraph!!!! That really made them look good and prepared before the judge.”

    Actually, the Schumer letter does refer to the “representative claims” concept that was in the 06 rules but not in the Aug 21 rules in a later paragraph, so it is slighly inconsistent.

    However, the version of the rule changes under consideration is irrelevant for the points made in this letter, so it is especially pleasing to see the PTO lose credibility as a result of its attempt to discredit the Schumer letter by reference to irrelevant dates.

  19. “Mr. Dudas: I don’t think so. If the District court didn’t buy our arguments, I doubt the CAFC will. I would think Judge Michel must have read 35 U.S.C. 120 at least once or twice.”

    ROFL.

  20. Malcolm-

    Yes, they got to bill all the hours beyond “understanding” the rules. When they made recommendations, or proporsed how to deal with patent families – yes, they billed it.

    I am in-house now, but doubt things have changed.

  21. Quote here from Ender: “…why should an Applicant believe that the USPTO will be a fair dealer when it comes to approving SRRs?”

    Have you guys taken a look at the new rules on Markush Claiming published 8/10/07? In these rules they have taken out SRR in 1.142. This means basically that we get 6 – 9 months of SRRs and then they yank away SRR when the revised Markush rules come into effect. Can you spell S-U-C-K-E-R-S?

    The other issue too is that I get the sense from talking to examiners that since examiners won’t have RCEs to offset complexity in examination they would issue more restrictions. However, the rumour is that the SPEs are going to force the examiner to issue very strict by the book restriction on their own time (no other time credit) such that there would be very little increase in restrictions issued.

  22. “Partners all over the country are smiling – they got to bill all the hours preparing for the new rules to corporations”

    They got to bill all the hours? Is this the Lawyers’ Wildest Dreams website?

  23. The sky is not falling Mr. Practitioner. Why not just try delayed examination?

    As for mere incompetence and the hearing – I was there and it was a beautiful thing. My two favorite PTO arguments:

    1) Enjoining the rules would cause the loss of all the training of Examiners because the Examiner’s can’t remember the training on the rules for 6 weeks. Stunning.

    2) The Schumer letter was aimed at the ’06 rules, not the August 21 rules. This, of course, was easily refuted by GSK as the letter points to August 21 in the first freakin’ paragraph!!!! That really made them look good and prepared before the judge.

    Poor woman from DOJ was totally outclassed. Loved it when she said at the end that they needed a new scheduling order bacause they are now up against a multi-billion dollar corporation instead of an individual inventor. I was sitting next to PTO folks, and even they thought they had lost after the arguments (and they thought were going to win on the briefs).

    GREAT DAY! BREAK OUT THE BEER!

    As a final note – file Amici briefs in this case! They helped sway the judge. Can we get 50 of them? Come on, stand up and be counted…

  24. “I don’t see the update on the website as noted by anonymous – are you joking or has it been removed all of a sudden?”

    Try clearing your browser cache, or if you’re behind a firewall, the firewall may have a cache (reloading the page in your browser a few times should update it).

  25. Partners all over the country are smiling – they got to bill all the hours preparing for the new rules to corporations, but they don’t have the risk of any mistake in implementation. The PTO just made law firms, who they hate, ten of millions across the country. Talk about unintended consequences.

  26. Ender states: Okay, so you say, why not just file 20 individual cases with 25 claims each so you don’t need to file the SRR? Guess what? The rules say that if this cases are filed within 2 months of each other, the USPTO can decide that they are the same invention and should have been filed as one case. So now you are stuck begging the USPTO to approve your SRR or lose the 425 claims.

    __ __ __
    I think the rules say that even if you file the applications months apart, if the claims are not patentably distinct, you count them all together – so filing separate con’s doesn’t help (unless you file 2 con’s serially, if you are allowed that many, then you get up to 15/75, but still fewer than Ender’s hypo app).

  27. As of 6:30PM, the USPTO main page now indicates that the injunction has been issued and that the rules will NOT go into effect on November 1, 2007. The main page indicates that it was last modified: 10/31/2007 18:10:22

  28. I don’t see the update on the website as noted by anonymous – are you joking or has it been removed all of a sudden?

  29. Hey, an inside source at the USPTO overheard the following conversation today at the USPTO between Doll & Dudas:

    Mr. Dudas: John, the results are in from the hearing. Justice has prevailed.
    Mr. Doll: Darn, can we appeal?
    Mr. Dudas: I don’t think so. If the District court didn’t buy our arguments, I doubt the CAFC will. I would think Judge Michel must have read 35 U.S.C. 120 at least once or twice.
    Mr. Doll: So now what do we do?
    Mr. Dudas: We will still try to win the case. Maybe we should try to find a better lawyer though. Those lawyers for Glaxo that make $1,000,000/year are better than I thought.
    Mr. Doll: For God sakes, can’t you at least find us a lawyer that has a registration number?
    Mr. Dudas: I am working on it. By the way, am I going to lose my job?
    Mr. Doll: I don’t know. I’ll have to ask our contact at Intel.

  30. “I have never really understood all the furor over the change in patent rules. It is just like GSK argued, you all want the status quo. However, I have yet to see a coherent comment as to why you all believe you’re being so wronged by the changes.”

    sa2117

    One problem with the proposed rules you indirectly address below:

    “I will concede and share the complaint that the Office is really trying to shift the burden of examining applications. The examiners do a poor job of adequately explaining themselves as to why a rejection is being made such that the responding attorney can provide a considered and adequate response. The new rules do not address this issue; only paying more money to the overburdened examining corps can do that. I ask you, how many of you would take that job for what the G. pays?”

    The Patent Office Management has explicitly rejected that Examiner pay and working conditions are the root of most of the problems in the patent system:

    /media/docs/2008/08/d071102.pdf

    So any resources spent by the USPTO on the changes to the patent rules are just an attempt by the Patent Office management divert attention real problems, to divert blame for the problems from management to patent attorneys and patent applicants, and to divert resources that could be spent to fix the real problems at the USPTO.

    A second problem with the new rules is that it is not just the effects of any one rule, it is the effect of the combination of these rules.

    “There are many complaints that you will not be able to adequately cover your client’s inventions under the new rules. Really? What you’re actually complaining about, IMHO, is that you cannot file con after con waiting to see what some unknown or known competitor will do and then dream up some fantastical twisting of your originally filed specification to pull some claim out of your arse that covers your competitors current products. Whether people admit it or not, this is the primary complaint. Futher, and related, people complain about not being able to get all the “inventions” out of a single application. Really? I see that you can either file separate applications or file one application with a self restriction (although I will grant it is a unknown how the PTO may treat these).”

    Under the new claim and continuation rules rules, let’s say you try to claim 500 claims on initial and even pay the extra fees necessary for 500 claims to claim all of your inventions, say 500 different compounds. The Patent Office says that you can only have 25 claims in an application now and two continuations. So you can only claim 25 in the parent and 50 in the two continuations. So you can’t claim the remaining 75 without begging the USPTO to accept a suggested restriction requirement (SRR). However, there is no guaranteed that the USPTO will accept your SRR, so if they decide to cut their backlog by denying your SRR, you out of luck and have lost protection on 425 claims, over 4/5 of your potential compounds. And given that the USPTO has justified for years demanding that applicants pay extra money for filing more than 20 claims on the grounds that such applications take more time to examine despite the fact that the USPTO never giving an examiner a single extra hour to examine a patent application based on having more claims, why should an Applicant believe that the USPTO will be a fair dealer when it comes to approving SRRs?

    Okay, so you say, why not just file 20 individual cases with 25 claims each so you don’t need to file the SRR? Guess what? The rules say that if this cases are filed within 2 months of each other, the USPTO can decide that they are the same invention and should have been filed as one case. So now you are stuck begging the USPTO to approve your SRR or lose the 425 claims.

    “All of this seems much ado about nothing. I will concede and share the complaint that the Office is really trying to shift the burden of examining applications.”

    This is a non-trivial problem and if all of the new rules the USPTO is proposing, including the new IDS rules go into effect, the USPTO will have created a situation where patent applicants would be better served by just having a patent registration system instead of a patent examination system. For example, patent applicant must provide and Examination Support Document type search and opinion in order to have the applicant’s application examined, the main purpose of the Examination by the Examiner will be to provide evidence for a patent infringer to invalidate the applicant’s claims during an infringement suit and to provide evidence to the Office of Enrollment and Discipline at the USPTO to disbar the applicant’s attorney?

    Why would this be the case? As emphasized this fall by Harry Moatz, the USPTO Office of Enrollment and Discipline (OED), the USPTO will require under the new rules that the applicant’s attorney: (1) provide every reference that would be considered relevant by an Examiner, (2) not provide any reference that would not be considered relevant by an examiner, and (3) provide a complete and 100% accurate patentability analysis of the features of all claims compared to the relevant references. The USPTO, of course, provides little guidance as to how a patent attorney can guarantee that the attorney meets requirements (1), (2) and (3)

    So given that the applicant, through the work of the applicant’s attorney has already done (1), (2) and (3) above, what is left for the Examiner to do? Oh yes, determine if the attorney/applicant has failed in any way to meet the requirements of (1), (2) and (3).

    So, let’s assume the applicant gets the patent. What has the applicant gotten from the USPTO examination system: a presumption of patent validity. However, in litigation, what the patent applicant has given the infringer is a blueprint for how to find the patent invalid.

    First, the infringer can use the Examiner’s own analysis to argue inequitable conduct that should have caused the patent not to issue? Why? If the Examiner, presumably a “reasonable examiner” considered a reference the applicant did not provide or analyzed a reference in a different way from the applicant, clearly the attorney failed to meet requirements (1), (2) and (3).

    Second, the infringer, can spend several times what the applicant can spend on a search to try to find some reference missed by the Applicant and the Applicant’s attorney. Why? When the Applicant file the patent, the applicant didn’t know whether or not the patent application was commercially valuable technology. However, once the patent is in a lawsuit, it’s pretty clear what the patent is worth to the infringer, so the infringer can justify spending quite a bit more to try to do an invalidity search. Consider that the entire patent application process, even for a complex patent is usually less than $40,000, often less than $20,000 while most patent lawsuits start at $1 million dollars or more and you can see how many more resources can be brought to bear on the invalidity search during a lawsuit.

    And if the scenarios I have described above are not enough reason to justify patent attorneys disdain for the new rules, you should know that USPTO management has exhibited amazing arrogance towards the patent bar at every opportunity with respect to these rules. Every USPTO official over the past two years has basically said to the patent bar “We can shove these rules down your throat and there is nothing you can do about it.” And given what the GAO report I have cited above says about USPTO management, the Examiners have even been treated worse during this process than the patent attorneys have.

  31. The sky is not falling Mr. Practitioner. Why not just try delayed examination?

    As for mere incompetence and the hearing – I was there and it was a beautiful thing. My two favorite PTO arguments:

    1) Enjoining the rules would cause the loss of all the training of Examiners because they can’t remember the rules for 6 weeks. Stunning.

    2) The Schumer letter was aimed at the ’06 rules, not the August 21 rules. This, of course, was easily refuted by GSK as the letter points to August 21 in the first freakin’ paragraph!!!! That realy made them look good and prepared before the judge.

    Poor woman from DOJ was totally outclassed. Loved it when she said at the end that they needed a new scheduling order bacause they are now up against a multi-billion dollar corporation instead of an individual inventor. I was sitting next to PTO folks, and even they thought they had lost after the arguments (and they thought were going to win on the briefs.

    GREAT DAY! BREAK OUT THE BEER!

    As a final note – file Amici briefs in this case! They helped sway the judge. Can we get 50 of them? Come on, stand up and be counted…

  32. “My guess is USPTO is trying to get injunction lifted, and until it does, nothing is going on the website.”

    Never choose conspiracy over mere incompetence.

  33. USPTO website updated:

    NOTICE REGARDING CLAIMS AND CONTINUATIONS RULES

    The United States Patent and Trademark Office (USPTO) published a final rule notice in the Federal Register to revise the rules of practice in patent cases relating to continuing applications and requests for continued examination practices, and for the examination of claims in patent applications. See Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications, 72 Fed. Reg. 46716 (Aug. 21, 2007) (Claims and Continuations Final Rule). The final rule notice published in the Federal Register indicates that the effective date for the changes to the rules of practice in the Claims and Continuations Final Rule is November 1, 2007.

    On October 31, 2007, the United States District Court for the Eastern District Court of Virginia, however, issued a Preliminary Injunction enjoining the USPTO from implementing the changes in the Claims and Continuations Final Rule. Therefore, the changes to the rules of practice in the Claims and Continuations Final Rule will not go into effect on November 1, 2007.

    USPTO employees are to continue processing and examining patent applications under the rules and procedures in effect on October 31, 2007, until further notice.

    This Web site will be updated and USPTO employees will be notified with further information as it becomes available.

    Inquiries regarding this notice should be directed to the appropriate TC representative.

  34. I don’t think this is done yet for day. My guess is USPTO is trying to get injunction lifted, and until it does, nothing is going on the website. We may need those RCEs filed today afterall

  35. “All of this seems much ado about nothing.”

    When the rule of law is thought of as “much ado about nothing” by those in our government, then America will have finished its decline into the greatness of its past.

    Thankfully, some of us will fight with all that is in us to make sure the rule of law isn’t ignored by government officials without consequence. We still believe that this country is greater than the politics of the moment, knowing that if foundations are abandoned, the country will crumble.

    link to kelleydrye.com

  36. “However, I have yet to see a coherent comment as to why you all believe you’re being so wronged by the changes.”

    LOL. Which changes? The rule changes on Aug 21, or the changes to the rule changes on October 22?

    That’s a rhetorical question. We know you’re pulling our legs.

  37. I have never really understood all the furor over the change in patent rules. It is just like GSK argued, you all want the status quo. However, I have yet to see a coherent comment as to why you all believe you’re being so wronged by the changes. There are many complaints that you will not be able to adequately cover your client’s inventions under the new rules. Really? What you’re actually complaining about, IMHO, is that you cannot file con after con waiting to see what some unknown or known competitor will do and then dream up some fantastical twisting of your originally filed specification to pull some claim out of your arse that covers your competitors current products. Whether people admit it or not, this is the primary complaint. Futher, and related, people complain about not being able to get all the “inventions” out of a single application. Really? I see that you can either file separate applications or file one application with a self restriction (although I will grant it is a unknown how the PTO may treat these). All of this seems much ado about nothing. I will concede and share the complaint that the Office is really trying to shift the burden of examining applications. The examiners do a poor job of adequately explaining themselves as to why a rejection is being made such that the responding attorney can provide a considered and adequate response. The new rules do not address this issue; only paying more money to the overburdened examining corps can do that. I ask you, how many of you would take that job for what the G. pays?

    Cheers:)

  38. The USPTO has a real problem on its hands. Now that patent fees are no longer being diverted to the General Fund, the USPTO can’t blame its increasing patent application backlog on a simple lack of funding. Instead, the agency seems to be currently focussing its Sisyphean assault on changing customers’ behavoir, rather better-focussing their limited resources on the examinations that really matter — reexaminations, reissues, appeals, and those involved in infrigement litigation. Can we really afford a patent system where all inventions are treated equally, regardless of their (lack of) effect on commerce? The UKIPO no longer examines all trademark applications for relative grounds of refusal. The day may be coming for the patent system to stop automatically examining all patent applications for novelty and inventive step.

  39. USPTO updates its website. It has omitted the reference that the Rules go into effect tomorrow. However, as another example of executive arrogance, it has not mentioned getting CRUSHED in court this morning.

  40. As of 4:00 pm, no official word to the examiners either, apparently. Perhaps USPTO management is still fighting this, or will use some claim of [executive] authority to ignore the judge’s ruling.

  41. “The PTO’s negligence is now official – it’s 5PM EST, and the PTO has made no mention of the injunction.”

    It’s stunning, isn’t it? Beyond the pale. As they roast on the spit, their grease drips on the fire and helps with the browning.

  42. The PTO’s negligence is now official – it’s 5PM EST, and the PTO has made no mention of the injunction.

  43. Excerpt from the Forbes article:

    During a hearing in the U.S. District Court for the Eastern
    District of Virginia, Judge James Cacheris temporarily delayed implementation of the proposed rules, which reduce the number of times a patent applicant can contest or amend rejected or pending patent claims.

    Previously, applicants could file an unlimited number of amendments or challenges, known in industry parlance as “continuations.”

    - – -
    Huh? I can’t stand reading IP articles in non-IP publications – drives me crazy. Last time I read the rules, I didn’t see any restrictions on amendment practice.

  44. The fact it’s 4:30 EST and the USPTO has still not managed to update its website to reflect the injunction is beyond pathetic.

    <<<
    And here I am having to rely on a blog as to whether the rules will go into effect tomorrow….

  45. The fact it’s 4:30 EST and the USPTO has still not managed to update its website to reflect the injunction is beyond pathetic.

  46. “This calls for a celebratory beer, scotch, glass of wine, cigar, etc.”

    Conveniently, I dressed up as a bum for the office Halloween Party. The bottle of wine is a “useful prop.”

  47. I want to thank Dennis for providing such a useful forum by which to discuss these important issues. I suspect that many of GSK’s arguments can find their genesis in many of the posts here. I also thank Dennis for ensuring that the decorum of the posts are satisfactory. Without such serious control over the posting of material on this website we could not have the meaningful discussions that we have here.

  48. While waiting for the GSK argument, I was a little unnerved when Judge Cacheris was conducting a criminal guilty plea colloquy and struggled with the pronunciation of “methamphetamine”, deleting the “h”. The non-Registrant AUSA argued this case poorly, and was clearly outgunned. She was whiny and arrogant by telling the court that if GSK couldn’t find adequate guidance for the ESD search requirements, they “haven’t looked hard enough.” She described it “ironic” that what GSK was really looking for was “unlimited continuations”. She continued the Government’s silly and vigorous objection to AIPLA’s amicus brief, described as a “putative” amicus in her papers. The only thing that’s putative now is the new rules. The Bushies lose another one, deservedly so!

  49. “Also, what if the court finds no problem with the continuation or RCE limits? What if you filed a second RCE after November 1st or a continuation in addition to the “one more” after November 1st?”

    What do you think will happen under those circumstances? Here’s what I think: nothing worth worrying about.

    I’d focus on the fundamentals. You know, writing good applications, drafting good claims, knowing what art is out there, etc.

    If you do that, you will be serving your client (or yourself) very well.

  50. Just Visiting:

    Good question.

    Also, what if the court finds no problem with the continuation or RCE limits? What if you filed a second RCE after November 1st or a continuation in addition to the “one more” after November 1st?

  51. The PI normally remains in place until trial or until a decision is reached on a dispositive summary judgment motion – assuming that the CAFC does not overturn the PI. The PTO could also file a motion for reconsideration.

  52. Further, what if after a trial the district court decides that applying the rules retroactively rules is no big deal and restores the Nov. 1 effective date of the rules. If the PTO has yet to act on something you filed on November 2, are you still slammed?

    I need to see the order.

  53. Well, at the risk of harshing everyone’s buzz, we’ll still need a trial, won’t we? How long does the preliminary injunction last and what does its issuance typically mean, if anything, regarding the ultimate decision on the merits?

  54. Let’s say it again – three cheers for GSK, and for Tafas!

    Let’s hope a sane CAFC panel is assigned to hear the appeal (or that the PTO won’t appeal…but what’s the likelihood of that?)

    And write your senators to make sure this “reform” bill dies!

  55. The written order has probably not been filed with the clerk yet – the judge probably gave his ruling from the bench.

  56. Glaxo Wins; Injunction Issues.

    Good for the examiners as well as you lawyers. And, most importantly, the American public. Maybe next time they’ll come up with some rules that are good for everyone.

    thanks,

    LL

  57. The inarticulable frustration with Lemley is an example of how verbal language fails us.

    And this is exactly why a handful of claims (5/25) are all too often insufficient for truly protecting a true inventor and his constitutionally backed rights in his true innovation.

    (OK. So I overcooked it with too many pinches of the “truthiness” salt. Truly. :-)

  58. Enjoined! Go directly to the Fed. Cir. Do not pass Go and do not collect $ 200 (billion in billable time spent on following new rules).

  59. “Uhh – - yeah – - OK – - and the same thing can be said for most district court judges presiding over patent litigation trials and most of the judges currently sitting on the Federal Circuit.”

    Which may be one of the reasons that many of these decisions make the rules regarding patents more murky than less.

    A problem with many judges as well as justices is that they effectively “throw up their hands” when it comes to patent law instead of doing the work to understand the consequences of their decision. For example, whether you agree or disagree with the Supreme Court decision in KSR, the decision made the decision on patentability more subjective not less.

    Whether you agreed or disagreed with the Teaching, Suggestion, Motivation test, at least it was a relatively objective standard that, if followed by the USPTO, should have yielded relatively similar results for a patent applicant’s claims regardless of which examiner examined the application. That such was not the case was mainly due to the failure of the USPTO to enforce this standard.

    However, the KSR decision replaces the TSM test with guidelines which allow an Examiner to weigh any of a number of factors in a very subjective way. Therefore, under even the best of circumstances, patentability of a given claim may often have more to do with the Examiner examining the claim rather than the non-obviousness of the claim.

    Had the Supreme Court understood how patent prosecution works, when they replaced the TSM test, they would have provided another test that could be relatively objectively enforced.

  60. “At the very least, Lemley’s views offer a different and disinterested (i.e. non-biased) look at patent practice and procedure. I don’t see why his opinions are less valued than those on this board who are all obviously biased in favor of big business.”

    Right on, my brother! The same is true of my mom, who has the sum total of a high school education, a year of business/secretarial school and many, many years of taking care of a home and family. I wonder what she thinks about continuation practice and the number of claims in a patent application? Her opinion as a disinterested party would be invaluable.

  61. The “Certification Analysis Under the Regulatory Flexibility Act” is clearly flawed in that it does not consider the change in applicants’ behaviour in response to the new rules. Small entities are now going to me much more likely to file an appeal after a first initial rejection in order to preserve their rights, costing them much more than the study states.

    I have a number of small entity clients that can’t afford an appeal and eventually will be at a dead end with these new rules. Speaking of which, does anyone have any updates on the hearing?

  62. Regarding Mark Lemley, I had him as a law professor when I was at Boalt Hall. He is a very nice guy, and is very knowledgeable regarding internet and computer IP issues. Also, as people point out, he has absolutely ZERO experience in patent prosecution. He looks at these issues from the ivory tower perspective, and has no clue about the real world. I exchanged several e-mails with him on this subject a few weeks ago, and he still has no clue.

    Unfortunately, many academics and the USPTO leadership do not understand the difference between how the rules are written and how they are implemented by the examiners. One never gets two bites at the apple because the examiner will always make the second action final and then not enter an after final because is would bring up “new issues” – even when the amendment narrows the scope of the claim.

    This entire problem would be much less if the current administration did not believe it is above the law and had appointed people to lead the USPTO who had actual patent experience.

  63. Alternative views are great. But they should be taken for what they are worth based on that person’s actual knowledge and experience. And although I represent big business, I also represent many small entities who will also be adversely impacted by the new rules (and who have been adversely affected by inconsistent and shoddy examination practice within the PTO).

    For those non-patent attorneys out there, if you are not sure what I mean by small entity, you can look it up in the MPEP, if you know what that is.

  64. The lack of a registration number isn’t the issue. The lack of years of patent prosecution experience is the issue.

    Such a lack may cause a person to reach many erroneous conclusions, such as how many claims or applications are sufficient to protect an invention. (For instance, some people hold the incorrect view that anyone submitting more than 10 claims doesn’t know what their invention is. Watch your patent go through a Markman hearing and summary judgment motions and then tell me that 10 claims is generally fine.)

    Opinions not grounded in real-world experience are rightfully questioned on that basis. All the smarts in the world cannot reach true conclusions using false assumptions.

  65. “A.B. in Economics and Political Science. Based on his CV, the amount of patent prosecution and patent drafting experience: ZERO.”

    Uhh – - yeah – - OK – - and the same thing can be said for most district court judges presiding over patent litigation trials and most of the judges currently sitting on the Federal Circuit.

  66. At the very least, Lemley’s views offer a different and disinterested (i.e. non-biased) look at patent practice and procedure. I don’t see why his opinions are less valued than those on this board who are all obviously biased in favor of big business.

  67. “Some of the top patent litigators in this country don’t have registration numbers – - I guess that doesn’t make them patent attorneys right?”

    Yup. See link to des.uspto.gov

    If an attorney is not on the USPTO’s list, that attorney is not a patent attorney.

  68. Moreover, Lemley’s comment is both obviously untrue and pretty brain-dead if it were not, since it supports an argument that the rules aren’t needed (I find it impossible to believe that 10 – or even 50 – particular applications are the reason for the crushing burden under which the Patent Office supposedly operates).

  69. “The fact that people on this board are talking about him and his work means that his opinions are worth something – - do you have his credentials?? NOT!!”

    Really? People only talk about others (and their work) who are worth something? Of course not.

    Paper credentials may suggest ability, but they don’t guarantee it. I thought that was so obvious as to be banal, but apparently not for some people.

  70. Anon2 – the issue is that his credentials may qualify him to comment on patent case law, but when he gets into commenting on PTO rules and procedures without relevant experience prosecuting patents, there are practicing patent attorneys who are of the opinion that he is speaking out of his ass. IMHO he does a disservice to patent attorneys and their clients by opining in areas where he has no direct experience and where he seems to be merely latching onto whatever “hot topic” issue is causing ivory tower academics to fall over one another that week to offer up their own erudite and esoteric take on “normative benchmarks”, “tragedies” of commons or anti-commons, etc.

  71. “do you have his credentials??”

    “I do not. However, he does not have mine. Namely, a registration number.”

    Ooooh wow, a registration number???? Now that is impressive!!

    Are you freakin’ kidding me?? Some of the top patent litigators in this country don’t have registration numbers – - I guess that doesn’t make them patent attorneys right?

  72. These quotes are interesting to me:

    “The USPTO has explained both in its Proposed and Final Rules that the growing number of continuing applications, as well as the increasing number and complexity of claims in patent applications, is *crippling* the Office’s ability to examine newly-filed applications.” USPTO Opposition Brief (emphasis added).

    “The Final Rules promote innovation by *ensuring* an agency that runs efficiently and allows new inventions to be reviewed in a timely manner.” USPTO Opposition Brief (emphasis added).

    “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.” Mark Lemley.

    Wait a second … cutting off 50 out of 450,000 will solve the “crippling” effect and “ensure” efficient and timely examination????

  73. “Well we all know now what Professor Lemley’s opinions are worth.”

    The fact that people on this board are talking about him and his work means that his opinions are worth something – - do you have his credentials?? NOT!!

  74. I especially like the last paragraph quoted above by the second poster, pertaining to the undermining the efforts of those who “have been diligently preparing to comply with the new rules.”

    The PTO has tailored the rules so precisely so that there is practically nothing applicants can do prior to 11/1 that would have any reliable significant advantage. And how many of you have actually begun the related application identification statements that are due 2/1/08?

  75. I have limited knowledge regarding the procedures for amicus briefs. Are they normally opposed? Has a single organization or company filed an amicus brief in support of the PTO? What is the current tally?

  76. I strongly disagree with the USPTO position. I have personally been counciling clients to take a wait and see attitude. This, after inviting them to file their own suit or joining, back in the day, the Tafas suit. I doubt seriously that any of these rules will be enacted, at least by this management team. By Doll, By Dudas.

  77. By the way, Mark Lemley, a law professor at Stanford, who teaches patent law, is NOT a patent attorney

    Oh, that’s priceless.

  78. 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.”

    ——————-

    If this was true, why would the PTO even bother with the new rules. Doesn’t seem like backlog would be reduced much.

  79. By the way, Mark Lemley, a law professor at Stanford, who teaches patent law, is NOT a patent attorney, proving once again: “Those who can’t do, teach!” :-@

  80. No Problemo

    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.

    (Originally posted by “Patent Hawk” on Thursday, August 23, 2007 at 12:57 PM, on The Patent Prospector)

  81. Adam,

    The court hearing is at 10:00 am EDT today.

    My guess is that word should filter out by noon.

  82. I loved reading the USPTO’s brief, as it made me laugh. The best part is below (read the last paragraph why the rule changes are a good thing for the public).

    I V. THE PUBLIC WILL BE HARMED IF THE COURT ISSUES A PRELIMINARY INJUNCTION.

    The public has a strong interest in the Final Rules going into effect. As Plaintiffs concede, the public’s interest lies in “promoting innovation.” Pl. Mem. at 29. The Final Rules promote innovation by ensuring an agency that runs efficiently and allows new inventions to be reviewed in a timely manner. Moreover, the public includes not just industry giants like Plaintiffs, but also entrepreneurs who are considering starting and expanding businesses but who face difficulty determining what patents will issue to others under the current system. See id. at 46718 (explaining that “when the continued examination process fails to reach a final resolution . . . the public is left with an uncertainty as to what the set of patents resulting from the initial application will cover”). The Final Rules will further promote innovation by enabling this segment of the public to know what technology is and is not available for their use. See id.; see also Ex. 1, A01275-01285, A02668-02677 (comments of U.S. Department of Justice Antitrust Division andU.S. Federal Trade Commission, discussing how the Final Rules will promote innovation). By contrast, intentionally delaying the presentation of claims and endlessly injecting continuation applications into the system to recycle or rework material that has already been examined does not promote innovation. See generally Ex. 2 at 46716-20.

    Finally, during the seventy-one days between the publication of the Final Rules and the date of argument on the Plaintiffs’ preliminary injunction motion, other patent applicants have been diligently preparing to comply with the new rules. A preliminary injunction would undermine their efforts. Moreover, applicants who may not be aware of the preliminary injunction may begin to make filings based on the Final Rules. Such applicants will find themselves caught between regulatory regimes, uncertain about how to proceed with prosecution.

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