Patently-O Tidbits

A few updates while I wait for my airplane:

  • Director John Love at the PTO has released a new set of “relaxed” guidlines for implementing the rules. These address some of the fears of major corporate patent holders. This is important to read prior to November 1. [Patent Docs explain]
  • The PTO has published its new obviousness examination guidelines. The guidance on obviousness focuses solely on the Supreme Court precedent in KSR, John Deere, and other Supreme Court cases. Perhaps going beyond the requirements of the law, the PTO will require examiners to provide a full written record. A major focus is on finding the “problem” before determining whether the solution is obvious.  Predictability is the another key. [Link]
  • I’ll be in Dallas this weekend. (near Alliance Airport) Shoot me a note if you’d like to meet-up on Friday . dcrouch@patentlyo.com.
  • GlaxoSmithKline has now joined the fray — reportedly suing the PTO to stop the new rules from becoming effective.  Mike Strickland of GSK was one of the leaders of the lobbying campaign againt the new rules. [Complaint][Quinn]

55 thoughts on “Patently-O Tidbits

  1. Soemthing like that – it really goes something like this – why not try out KSR and see what effect it has on the backlog before you take way rights that have been around since ancient Greece? Patent systems work because they reward innovation and to not reward it will prove a huge issue.

    Why not a slow and steady hand in dealing with this-

    1) Let’s see how KSR plays out
    2) Let’s then see if dropping software and /or biz methods patents really helps (I think it will, and why it isn’t proposed is beyond me).
    3) Then lets looks at step-wise, ane reform and not try to do it all at once.
    4) Only the truly insane would propose patent reform (changes to law) in this environment. But hey, Dudas is insane, as the insane know not what they do or say.

  2. Action for “damages”. What damages, other than prospective ones that are conjectural in nature?

    Class action? Were I GSK’s counsel probably the last thing I would want is a slew of other attorneys trying to second gess everything I was doing to move the matter forward.

    Re the complaint, I think it would be more effective focusing on the law, and not just on the untoward effects it might have on GSK. A lot of eggs have been placed in the ultra vires basket. While it is certainly a valid argument and has strong support in the legislative history and caselaw governing the power of the PTO to engage in rulemaking, the possiblity its argument will prevail is not a certainty by any means.

    If anything, I hope that consideration is given to amending the complaint to cover broader ground such as, for example, conformity with rulemaking requirements under the APA, perhaps the the E.O. specifying substantive requirements for agency rulemaking and OMB participation, etc.

    There are many various issues that can serve as grist for the mill. My concern is that the preoccupation with one issue, ultra vires, may prove to be insufficient grist for the desired outcome.

  3. Perry Saidman, good idea, but I don’t know much about damage calculations, particularly here where the defendant would be a government entity, right? Even if they were acting ultra vires, are we all going to be able to recover from Dudas, as a “rogue Deputy Commissioner for Patents”? (or whatever the title is–I hope I got it right). Also, what damages do you think might be recoverable, if a class were formed? To date (if the Glaxo PI succeeds), I can think of only several–payroll for the hours spent parsing and re-parsing the rules, including additional time spent on the FAQ lists after each new version? The extra fees we’re going to have to pay in EP prosecution for the case where we decided not to file a demand, based on the PTO’s Aug.21-Oct.10 IPER rule precluding DIVs? I would love that, and I think those things are relatively easy to prove, but if the rules do go into effect, I think you’d have a very hard time proving lost income based on patents–wouldn’t you have to prove what claims you would have gotten, and then go into a market assessment based on the product you assert you would have made? That just seems like it would be impossible to prove to anyone’s satisfaction.

  4. Old bargain:
    In exchange for disclosing your invention to the world, you will receive a limited monopoly.

    New bargain:
    Given enough time, all of the Supreme Court Justices typing on typewriters would eventually come up with your invention. Therefore, it is obvious.
    But we will still publish your crisp blueprints, with the cogs and the planes …

  5. “if Congress would amend 35 USC 101 to exclude software and business methods, we could get back to patenting what the Constitution intended, scientific and techical innovations”

    So what exactly is a “technical innovation”? I believe the Constitution said “science and useful arts” and to me, software can be pretty useful. Is it my understanding that your position is that our drafters of the Constituion contemplated, but then declined protection for software? Under your reasoning, then I guess there is nothing within the new iPhone that is technically innovative, as really, it is merely a compilation of known parts (touchscreen, phone, processor(s), etc.) held together by new software. As we are all aware, “only God truly invents” and all patented inventions are, at their core, just different combinations of known elements, so why should software be excluded? Is it merely because you do not have to have millions of dollars worth of an R&D budget in order to create new innovations within software, which makes it easy to file patents on? Or is it because you cannot actually see/touch the novel component, which creates a disconnetct for people that have spent many years in this profession? Either way, at the end of the day, software can be the only “new” element in a cobmination of elements that provides significant benefits in many fields – again, seems pretty useful to me.

    Sorry, I will get down off my soapbox now – I guess I have been spending too much time lately arguing with EPO officals.

  6. “And not a moment too soon, because as soon as the liberal whack-jobs get into the White House we will have the EPA outlawing automobiles or burping or some other ridiculous thing in order to address the fiction of human caused global warming.”

    Congratulations! You have achieved the maximum strawman/word ratio. Thanks for playing.

  7. Well I feel better about using medications. I mean the FDA has execeed its authority in prevent products liability sutis against big pharam; however, here we see big pharma taking on another executive agency for exceeding it authority. It appears that the innovation is more important to big pharma than the number of bad drugs they produce. Clearly should GSK win this will be the most imporant case concerning regulatory agency law in the history of the United States. And not a moment too soon, because as soon as the liberal whack-jobs get into the White House we will have the EPA outlawing automobiles or burping or some other ridiculous thing in order to address the fiction of human caused global warming.

  8. “If they don’t, someone else will”

    I’m sorry but the argument is vapid. Under any scenario, “someone else” can ALWAYS file before our Hypothetical Company has the data it needs to obtain its patent.

    Unless, of course, we create special rules to favor our Hypothetical Company and its position in the marketplace.

    But that would never happen. Not in America.

    Right.

  9. “Actually, in my example, the company did not file “too early” as you suggest. They filed as soon as they new how to make and use the invention.”

    No, that’s false. They did not know how to use any of the compounds to achieve a practical therapeutic result in vivo. They found that 3 years later, according to your hypo.

    But if the company is happy with some claims for practicing the invention in vitro, then good for them. They deserve those claims.

    But if someone else (e.g., Company B) shows that one of those disclosed compounds is surprisingly better for in vivo use, then that someone else deserves a patent.

    The solution for Company A is to keep their compounds secret and hustle their butts to get the data they need.

    I know this will come as a shocking surprise but some entities actually proceed in this rigorous manner because they can not afford to prosecute in blunderbuss style like GSK. Can you imagine?

  10. “Yes, and why is that the case? Do you suppose it has anything do with everyone filing on 500 compounds at once before they have proven a non-trivial therapeutic use for any of them?”

    But what’s forcing them to file like that? It’s harmonization, pure and simple. If they don’t, someone else will, and they’ll be out in the cold wrt the compounds themselves.

  11. “There’s no longer time to really “complete” an invention and rely on your lab notebooks for priority.”

    Yes, and why is that the case? Do you suppose it has anything do with everyone filing on 500 compounds at once before they have proven a non-trivial therapeutic use for any of them?

  12. “GSK’s real problem, in your hypo, is that they filed too early. The reason that they filed too early is that (drum roll) they really didn’t have a clue as to what their invention was when they filed but they wanted to make sure that they weren’t scooped by some other company.”

    Or, did they file too early because of harmonization? First to file is a whole new world in patent law, and we in the big companies tend to treat our US applications in the same way we would if we were in Japan…rush the new idea to the PTO. There’s no longer time to really “complete” an invention and rely on your lab notebooks for priority.

  13. Thank you Hecky’s. That is precisely the reason that biotech/pharma needs more continuations. Many further innovations for a compound family (compound with best tox profile, treatment of additional cancers, better formulations, polymorphic forms) are obvious over the original disclosure, but the data may be had years later. This is particularly acute where the original discovery was in an academic laboratory and there were no resources to uncover the full range of potential for the invention.

  14. “3) What we (PTO management, examiners, patent bar, applicants, congress, courts(?)) all need to do it completely blow up the system and start from scratch. I think we all agree that the system as it currently stands does not work very well.”

    I disagree. I think the system worked pretty darned well up until the time of State Street Bank. It started to break down with the filing of all the software and business method patents. IMO, instead of all this “patent reform”, if Congress would amend 35 USC 101 to exclude software and business methods, we could get back to patenting what the Constitution intended, scientific and techical innovations.

    Funny, the whole focus on reducing pendency didn’t start until the software industry complained that the patent system was useless for them since (1) it took so long to get a patent, and (2) their technology progressed too fast to wait. Then the PTO bent over backwards to accomodate them…no one else was complaining about patent pendency. Now the software industry is moaning the loudest about how everything is broken. Take theirs and others’ software patents away and let them innovate to their hearts content without worrying about trolls.

  15. Malcolm:
    Yes, as you smugly enjoy your scotch (perhaps seated in a club chair with a green banker’s light) I will concede that the moment of invention of the compounds actually did not occur at the moment of invention of the screening method. Congratulations, you are right again.

    Of course, I was not implying such. Reach-through claims are a big no-no in biotech; we see them all the time.

    Yes, a proper restriction between all 500 compounds would have been appropriate. You are once again correct. However I chose my example to illustrate the proper role of CONs rather than DIVs. The latter are not limited by the new rules.

    Yes, the compounds are only patentable if they are novel and non-obvious. Thanks for reminding me. I forgot to mention that in my example.

    Actually, in my example, the company did not file “too early” as you suggest. They filed as soon as they new how to make and use the invention. Before they new which of the 500 compounds was the best to pursue? Yes. But if I were an atty. I would encourage clients to file when the invention was complete, not when they had later exhausted all possible research avenues. I know, I know, I am not an attorney just a dumb government bureaucrat.

    Enjoy the scotch. I prefer bourbon.

  16. Help! Separating these topics into separate items/blog threads is a job for super Dennis!

    I think he’s shopping downtown, looking for a Roger Staubach jersey that fits.

  17. This thread is fragmented beyond repair…

    Three important topics are each being diluted by the presence of the others.

    1) The review of the GSK challenge to the new continuation rules / what to do long term should the suit be succesful.

    2) The new USPTO obviousness guidelines that may or may not be according to the relevant legal precedent.

    3) The submarine raconian rules changes for appeals that are in progress, but that have no public notice/comment publication at all.

    Help! Separating these topics into separate items/blog threads is a job for super Dennis!

  18. “Yes, follow-on research was informative, but the moment of invention occurred before the follow-on research.”

    Let’s be clear, Examiner: the moment of invention of the compound occurred before the follow on research but not the moment of invention of the method.

    A proper restriction to each of the compounds initially would reserve the rights of the company to pursue the composition claims.

    Of course, this assumes the compounds are novel and non-obvious.

    GSK’s real problem, in your hypo, is that they filed too early. The reason that they filed too early is that (drum roll) they really didn’t have a clue as to what their invention was when they filed but they wanted to make sure that they weren’t scooped by some other company. If GSK is scooped by another company, that is bad for America because ….

    [this is where I sit back and pour myself a nice glass of Scotch]

  19. First:
    I am a biotech examiner. I have a PhD, know my art well, and have been at the PTO a few years. More than that I won’t say – I don’t want to totally blow my anonymity! I am not a lawyer, so obviously there are some things in the complaint that were beyond me, but on the whole I found it quite convincing, particularly with respect to 132(b) and the PTO exceeding its authority. I’d like to make a couple of comments about the issues that have come up here, particularly with respect to whether GSK (or any applicant) knows what they have when they invent it.

    Say applicant discovers a new receptor on cancer cells. They might apply for a patent on that protein and might also, in a CON or DIV, apply for a screening assay to discover inhibitors of that receptor. Assume that they know at the time of filing that agonists of the receptor make the cells grow and divide in a dish (indicative of more cancer), and antagonists of the receptor make the cells shrivel and die.

    At this point, it seems there are no 101 or 112 issues with the protein (spec tells how to make and how to use) or the screening assay. If the protein is novel and non-obvious it is patentable (yes I am simplifying but this is a hypothetical example so don’t jump down my throat).

    Two years go by (applications are still pending) and applicant finishes screening every molecule in their library. They get 1000 hits: 500 agonists (which would be expected to induce cell growth) and 500 antagonists. They know the structure of each of these and can write down the formulas. At this point, they have no idea which of the 500 antagonists are the best anti-cancer drugs. Even doing the mouse work to figure out which to persue (efficacy, toxicity) can take a long time, maybe years. The company doesn’t have the money to pay Dewey Cheethan and Howe to prosecute all 500 simultaneosuly.

    So they file an application with 500 independent and distinct chemicals. They all meet 112 first par. requirements, since they tell you how to make the chemicals (provide the structures) and how to use (all inhibit growth of cancer cells in a dish and therefore all are expected to be anti-cancer drugs. Courts have ruled that in vitro data can be considered enabling of in vivo results, I get that cited to me all the time but can’t recall the case).

    Applicant presents claims to all 500 compounds, then in a preliminary amendment cancels claims to all but 1, which is the only one he has so far tried on mice. It seems good, because all the tumors shrivel up but half the mice drop dead. Might not be the best one, but it is the one with the most data so they pay Dewey Cheetham upteen gasquillion dollars in fees to prosecute the case. Meanwhile, they continue more mouse tests to find out if any compounds are better than compound #1

    Three years later (and say three CONS and six RCEs for the hell of it), applicant has done more work and found that compound #327 is the best. All the mice live, and run around as happy tumor-free cheese-eating vermin. So applicant files a CON, claims only #327, because they have now discovered that #327 is the only one that is economically viable, since all others kill the mice.

    In the case I described, which is what I think GSK is getting at, the compounds were all discovered before the application was filed. Given the enablement standards as the office currently applies them, all would meet it. But due to later research, conducted after the application was filed, certain business decisions result in a decision to change the invention being prosecuted.

    Yes, follow-on research was informative, but the moment of invention occurred before the follow-on research. The invention was complete (how to make, how to use both satisfied, particularly in light of in vitro data) but because the co. didn’t know which was the best of their 500 compounds they couldn’t prosecute the right one. Thus they prosecuted #1, and when it turned out that #327 was better they decided to prosecute that one. Without a large number of CONs this might not be possible or practical.

    With respect to LL’s point about whether or not RCEs are important:
    I don’t think different sections of the office should have different rules/procedures. So what if biotech uses lots of RCEs and golf clubs doesn’t. Limiting RCEs is no problem for Mr. Big Bertha, but a problem for Mr. Big Pharma. GSK may well be right when they say it affects lots of their cases. I don’t think they are trying to present a balanced picture of why certain parties might be hurt more than others; they are trying to present arguments as to why they would be hurt.

  20. “Perhaps some biotech people, like Mr. Mooney, could explain why it’s not practical or possible to claim every possible aspect in a pharmaceutical/biotech patent application.”

    It’s certainly possible. The “practicality” comes in when a client has discovered, say, that 5-10 biomarkers by themselves or in combination with each other are useful for diagnosing disease X. If the biomarkers are novel, then you want to claim all the combinations. My math stinks but I think writing claims to all the combinations gets you above the 5/25 limits pretty quickly. Maybe this is petitionable? Maybe you get a restriction requirement? Maybe you need to file an SRR?

    In any event, not the end of the world. Just more expense. And we’re already used to it because restriction practice in the field has been super strict for years.

    As others have noted here and elsewhere, the real beneficiaries of these rules in the long term are the big companies. They can afford to roll with it. My guess is GSKs major concern is not the limits on what they can do but the new requirements for disclosing various aspects of their prosecution strategy to the PTO, e.g., relationships between applications, etc. It definitely does smell like a set-up of sorts for inequitable conduct accusations down the road and it is a burden that is larger for companies like GSK with larger portfolios. It’s also sucks bigtime for institutional clients, however.

    I think another source of the angst is simply that parties have gotten used to parading around applications with massive claim sets that cover the entire world (i.e., markers, drugs, kits, research tools, methods of using same, software for using same, methods for licensing the technology (!), etc. etc.). Somehow, somewhere, somebody with money was apparently impressed by all that crap. Now it will be a little more difficult to impress that silly person and get that person’s money out of their wallet.

  21. Gee, and here I was thinking that most of these problems could be solved by changing the system by which examiners are evaluated, and giving them the freedom to actually examine patents properly the first time around.

    I do remember a time when I got rejections that were clear and understandable, and we just dealt with them with amendments and few arguments and got the case allowed. It was great. I could go to clients and say, “Sorry, you can’t get that. You just didn’t have support for it.” Then examiners started playing coy, making us guess at what the rejection really was about, to make us file RCEs and get more counts.

    I mean, I understand that examiners have been under unreasonable pressure, what with evaluation quotas that haven’t changed since the 70′s (from what I’ve been told), but really, the PTO brought this on itself. WE react to the PTO’s rules. No lawyer ever files an RCE for the money, since it’s all PTO fees, not lawyer fees. Since there’s no benefit to us, we wouldn’t file them if we didn’t have to.

  22. “We’re going to need a bigger boat -

    link to uspto.gov

    Scroll down. The comments are linked below the rule.”

    The appeals rules are not on this page – nor are the comments to the rules. There also does not appear to be any link to either the proposed rules or any comments on the BPAI part of the PTO website. Maybe I’m just paranoid (and have reason to be?) but it seems like the PTO is hiding the ball on this one

  23. Fron the USPTO web site:

    “Reminder: Claims and Continuations Rules Effective Nov. 1
    On November 1, 2007, the new claims and continuations rules will go into effect. These new rules were two years in the making and are based on extensive research, outreach to thousands of applicants, and comments from over 500 patent stakeholders in response to the original Notices of Proposed Rule Making which were published in the Federal Register in January 2006.”

    Now they’re trying to imply that they actually listened to the comments instead of stonewalling. Amazing that this was posted AFTER the GSK suit was filed?

  24. LL makes a somewhat persuasive point about GSK complaining about having to wait to figure out what to claim. I wasn’t impressed by GSK’s argument there either.

    The knee-jerk reaction is to tell GSK to claim everything it thinks is an invention and, if it doesn’t know what that is, then it’s likely that its application hasn’t lived up to the patent system’s quid-pro-quo bargain. Also, if GSK is going to spend 1 billion dollars bring a drug to market, it can afford the excess claim fees and the costs of preparing the ESD. (Putting aside the alleged vagueness of the ESD requirements.)

    Perhaps some biotech people, like Mr. Mooney, could explain why it’s not practical or possible to claim every possible aspect in a pharmaceutical/biotech patent application.

  25. I’ve read the linked complaint, and not being a lawyer, as well as simply speaking for myself, it seems that while some of the issues raised has some merit (e.g., whether the Office has the authority to make & institute the rules; rules/guidelines as to what would be grounds for a 3rd CON/CIP; etc.).

    However, the complaint also raises issues that highlight what are some of the problems with the system that we have had for the last few decades. This is what I want to address.

    1) The complaint cited the stat that about 2.7% of the cases filed last year were 3rd or subsequent CON/CIP (or RCE, I believe) (in the reasons to justify an injunction & why it would have little/no effect on the PTO). The brief also said that since so few cases get to this point it would have little to no impact on the backlog. However, the hew & cry here, and on similar sites, make it seem like limiting the # of CONs would have a major impact on nearly every case. While it will apparently have an impact in a few tech areas (e.g., bio-med), most areas will have little impact. Seems like trying to argue both sides.

    Either it is a big deal for most everybody or it is really only a big deal for very select areas and maybe something should be done just for those areas. Just a thought. Since we have different rules/patent terms/etc. for utility, design, and plant patents, maybe we should make a new “type” of patent for the bio-med patents like GSK, and maybe another one for “business methods” patents. If these types have “special needs”, they should be treated differently. The issues that GSK argue in their complaint do not usually (never?) arise in electrical & mechanical arts.

    2) Following from the last thought, it always seemed to me that when an applicant files for a patent, they should know what they invented. What GSK argues seems to say they have a general idea & file for that & keep developing & maybe want to radically change what they claim as their invention, maybe even drastically changing what they disclose in the process. Seems like a CIP is what should be filed, rather than a CON. (Yes, CIPs are also limited in the rules. Maybe “legitimate” CIPs should not be? Another idea.)

    Again, if we had a separate designation for these bio-med cases that need to do this, it would solve the problem. (Personally, I don’t like the idea of an applicant filing on one thing and then drastically changing the invention because they realize what they filed for initially really isn’t what they want a patent for and they decide that they “invented” something different from what they initially filed for. Maybe it’s just that I don’t work in the bio-med classes & don’t have applicants doing this kind of thing. Just my opinion on things.)

    3) What we (PTO management, examiners, patent bar, applicants, congress, courts(?)) all need to do it completely blow up the system and start from scratch. I think we all agree that the system as it currently stands does not work very well. The whole system from counts, prosecution, patentable subject matter, patent terms, etc. needs to be rethought and redone. And I am NOT talking about harmonization! Until all sides can get together and create a new, workable system for the 21st & following century, all we will be doing to rearranging deck chairs. In the last 2 decades I have seen quality on responses, as well as specs and claims, go down. I have seen the quality for office actions go down due to the increase requirements. I have seen the requirements for making rejections go thru the roof (the “short form” was before my time, but at least years ago the lawyer/applicant needed to read the references and actually do some thinking; now it all has to be spoon fed to them and if the examiner makes a minor error in citation the lawyer somehow seems unable to read the reference as a whole and understand the point being made). I have seen more and more people filing for the sole purpose of “gaming the system” and not actually inventing anything (e.g., “patent trolls” and “bulk filers”), and of course the lawyers that support these types.

    It seems that too many people outside the office (and many inside as well) just want to leave the status quo unless the change will not effect what they do. The new rules “might” help a little, and are far from perfect. But at least it is an attempt to change things some, tho not nearly enough. But, what we really need are drastic changes. Is anyone willing to make or accept these changes???

    thanks for reading all this :)

    LL

  26. You may not like what “Something Like That” said upthread. But you might as well complain about the rain.

    It’s gonna come anyway.

    And in the case of KSR, it’s a done deal and a welcome change. Get over it.

  27. JD, Once again, you are not reading the whole statement. The examiner said he did “maybe 15 NEW cases the entire fiscal year 2007 which just ended. First actions on RCEs, express disposals on RCEs, tons of abandonments and PCTs, and a few allowances” (ephasis added). NOT that he “got paid your entire salary to examine all of 15 new cases over the course of a year”. Big difference. You guys keep feeding examiners the easy RCE counts. And since they show up as amendments they need to be done in 2 months. In other words, they take precedance over new cases.

    Then again, I guess it is a lot easier for you lawyers to file an RCE & continue the prosecution than to have to write up an appeal brief and hope that you can write it well enouhg to convince the Board. Big gamble on your (and the applicant’s) part. A lot easier, cheaper and safer to file the RCE. So, since we all play the same “game”, don’t complain.

    thanks,

    LL

  28. “The CAFC and the patent bar have had a party for about 25 years, and now the Supreme Court, Congress, and the PTO are pushing back.”

    And you got paid your entire salary to examine all of 15 new cases over the course of a year? Who’s having the party?

  29. Does anyone know where to find the public comments on the Appeals rules on the PTO website? I’ll be darned if I can find them -

  30. Kudos to GSK.

    I started reading PatentDoc’s summary of the “relaxed” guidelines, and I have to say, I’m more confused than ever. It seems to me that GSK has a decent additional argument that the rules are unworkable — the USPTO doesn’t even understand their consequences!!!

  31. “Patent reform is coming whether you guys like it or not.”

    Something Like That, we all know Patent Reform is necessary, but if reform doesn’t deal with the snowballing problems at the top of the US[A-P}TO first, and if it isn't written by people who understand patents and the effects/roles (both bad and good) they are having/playing in industry, then such "reform" will just make the matters worse. (Please consider history here, and e.g. Rogan's Strategic Plan of 2003 which simply left all the problems to intensify in an unimpeded fashion, though it kicked up a lot of dust and cost a lot of money).

    The problem with the Rules package (to me) isn't even so much in its aims - I know the US[A-P]TO is now incapable of dealing with the backlog, and a system other than “business as usual” at the US[A-P]TO needs to be set up. (And I’m all for a well thought out “optional registration” system which bypasses the US[A-P]TO entirely… that’ll help the US[A-P]TO’s backlog as well as the patent applicants who won’t have to deal with the US[A-P]TO’s foolishness, ineffectiveness, and delays, and it will also boost the efficiency of government operations).

    The problem with the Rules is that they are vague (they are a tangled mess for which there is almost never a clear cut interpretation), they are unfair (the “little guys” will find the new costs of the patent process prohibitive), they have not been through proper comment as required by the APA, they show a disdain for the creative people who file for patents to keep America competitive (rather than seeking to reward them properly which, I might add, is a much harder thing to do), they do not deal with the heart of the US[A-P]TO’s problem (which is not externally inflicted, though the US[A-P]TO screams, “Victim!”), they are not in accordance with law, and they attempt to correct small abuses of the patent system through a larger abuse of the patent system and thus may lead to its ultimate collapse (which could be the US[A-P]TO’s goal though).

    The US[A-P]TO’s track record over the last 15 years has been very consistent. We the people of America need qualified leadership at this agency now! Ill-conceived “reform” by people who neither understand patents nor care for the incentives they create will just perpetuate the downward spiral at the US[A-P]TO.

    link to nipra.org

  32. …by the way, the smartest, most polite, and most pragmatic people on the planet (and collectively by far the biggest customers of the PTO) are calling these rules “stup1d” out in the open.

  33. I just got word of the GSK complaint over here on the other side of the world. This is the kind of thing that makes the iron mask melt. We are all cheering this on.

    Incidentally, TSM just forced Examiners to do their job which was not to sit in front of a computer, type in claim terms, and put the top three results in a rejection. They should actually read the references and come up with a plausible reason for combining them. Now however it almost seems like TSM lives on in a more subtle but powerful form, from a sword to a scapel. I just argue that insufficient reasons have been provided vis a vis KSR.

  34. “This manifests itself in the form of expanded 101 matter like software and business methods and a ridculously low strict TSM test which was not really any better than novelty before the Supreme Court knocked some sense back into the system with KSR.”

    Boy examiner, your true colors are showing. Put your eyeshades back on and get back to work. You could have examined a new application in the time it took for you to put that together :)

  35. somethinglikethat said, “They could hire a thousand examiners a year for 10 years and little would change if the system were otherwise left the same–guaranteed.”

    This is a lie the USPTO has been promulgating for years. Completely illogical. If the examining corps were doubled, the pendency would surely reduce. Why not raise filing fees by $200 (instead of $10), with 300,000 applications/year that would be $60,000,000 for new personnel. We would not complain about an increase in filing fees.

    Further, eliminating RCE’s and appeals really cuts into small entities (most of my clients). They can’t afford $8k for the appeal. So when an examiner issues a bad final action (which happens ALL the time), the client now has to ABANDON the application? Is that fair??? Since the rules are retroactive, this scenario is real since many cases I have already used up their RCE/cons.

    Moreover, with the new rules in place, getting an appeal will soon take years. You’re just shifting the pendency around internally. In fact, if the rules aren’t overturned, the queue to get an appeal will eventually be 4-5 years. You do the math. All of my colleagues are now appealing everything in fear of the new rules.

    Also, somethinglikethat sounds too knowledgeable/concerned to be an examiner. I think he might be someone bigger.

  36. The problem with the PTO’s new guidelines for obviousness is that it does not tell the examiners when an invention is NOT obvious. The cases/examples cited in this set of guidelines all result in the finding of obviousness. Thus, unlike the previous enablement and written description guidelines, these are not at all helpful to those of us who prosecute in front of the PTO and presumably would like to argue nonobviousness for our claims!

  37. Something Like That

    Maybe.

    Most of the issues raised against patent litigation are issues relating to US litigation in general. Thus an overall litigation reform is the way to go. Perhaps if courts would bring up Rule 11 questions earlier on their own much of trolling would be curtailed. The courts are failing the gate keeping duties in all aspects of litigation.

    The problems with patent quality can be dealt with by tweaks to the current system. For example, why can’t we have no fault reissue or claim amendments like they have in Japan? Why can’t we allow for consideration of alternate claims like we can in the EU? Why can’t we deal with 112 issues in reexamination? Fixes like these would eliminate many of the patent quality issues, because patents could be more easily fixed.

    Regarding pendency,

    We can treat the hard hit areas such as business methods and software separately, perhaps in a sui generis way, instead of the unity patent system we have now.

    However, to throw a highly complex trap-ridden, and expensive to comply with rules package like this is not the way to go. It is clear to me that the USPTO knew it was the wrong way to go because they did it in secrecy.

    Also regarding pendency,

    The pendencies in the EU and Japan are much greater. The USPTO is reacting to some other pressure than the patent applicants. Dudas himself said he was reacting to Congressional pressue.

    In my view, this is similar to the imposition of business metrics on the legal profession. At some point, it doesn’t make sense, and actually may be harmful.

  38. If you don’t believe something needs to be done, I did maybe 15 new cases the entire fiscal year 2007 which just ended. First actions on RCEs, express disposals on RCEs, tons of abandonments and PCTs, and a few allowances. How on earth are we supposed to cut through the docket. Losing RCEs as many of the lawyers threaten because they will be filing lots of appeals won’t hurt my production, though, because I get a count for an examiner’s answer and I also get a count if I allow the case. My actions are good, though, so I will be sending most appeals up to the Board. And if I don’t have RCEs, I will be actually able to work off some new cases for a change.

  39. Patent reform is coming whether you guys like it or not. The rules package is meant to solve backlog and attrition in one package because they are both intertwined. They could hire a thousand examiners a year for 10 years and little would change if the system were otherwise left the same–guaranteed. If the rules are thrown out in court, something very similar to them will almost certainly be legislated in my opinion. That means (not 6th para.) the rules will be in 35 U.S.C. instead of in 37 CFR. Congress wants the PTO to do something and the rule package is what they came up with. Failing that, the Substantive Patent Law Treaty is coming up dealing with prior art, novelty, non-obivousness, etc. Corporate America is pushing hard for international harmonization (NAFTA, WIPO, GATT, etc.), so globalization and harmonization are coming in one form or another. KCB probably won’t like that, but that’s how the power brokers run this country. That means we ***WILL*** end up with something like EPO D1-style practice with a limited number of claims. There is no way the rest of the world will change over to U.S. practice. Get over it folks. Search your invention before you send in the application. The CAFC and the patent bar have had a party for about 25 years, and now the Supreme Court, Congress, and the PTO are pushing back. Patent law is an area of law in which applicants and their lawyers are petitioning the government for a benefit, in this case a patent monopoly. So basically everybody in the business is advocating in one direction. This manifests itself in the form of expanded 101 matter like software and business methods and a ridculously low strict TSM test which was not really any better than novelty before the Supreme Court knocked some sense back into the system with KSR. It also manifests itself in unlimited claims, RCEs, and continuations. You guys have had a free ride for a long time and now the rest of society is starting to push back. Hangovers, sure are a bummer, though. You guys curse the pendency and quality, but you refuse to consent to any changes. You rail against the rules, KSR, and the patent reform legislation. Whatever. If you aren’t complaining about the rules today, you will be complaining about pendency in several years when the backlog is 1.5 million applications, first actions take five years, and allowance takes seven to eight years. If something isn’t done, it will get that bad. I’ve worked in other industries with similar dynamics and I have seen this kind of thing before.

  40. GSK’s argument about the petition having to state, “could not have been submitted during prosecution of the prior application” being impossible to state without violating the ethical rules is outstanding. Of course it would have almost always been POSSIBLE (in theory) to have submitted such matter previously. I hadn’t thought of this argument (I guess there is a reason why I am a prosecutor not a litigator!) Thus, as argued in the complaint, the new rules basically prohibit any such petition being filed without violating the ethical rules. Thus, the petitions cannot be filed and thus the PTO’s attempt to skirt the holding in Henrickson or 120 is void.

    I’m convinced now that the continuation rules will have to be overturned at some point.

  41. “GlaxoSmithKline has now joined the fray”

    “Three cheers for GSK!”

    Rightious!

    GSK, we owe you. Very well done. I thank you from the bottom of Mr. T’s heart.

  42. Patent Leather – no recourse for lost rights. Read the complaint again. It explains the reasons why and I don’t want to reiterate them here.
    It is a very well written complaint.

  43. I just read the GSK complaint in full. Excellent work, better than Dr. Tafas. Kirkland & Ellis is certainly a fine choice to litigate this.

    This is going to be a giant mess when some or all of the rules are overturned. If an application is no longer entitled to a continuation under the new rules, and then the rules are overturned, will there be recourse against the USPTO for lost rights? Imagine if a class action were filed against the USPTO. The USPTO should suspend implementation of the new rules until the litigation is resolved (or Congress has acted) to avoid this quagmire. Doll & Dudas, are you listening?

  44. Dennis, can you give the GSK suit a new page? As with Dr. Tafas, I’m sure all of the bloggers here would love to discuss it.

  45. … of course, the recent KSR examination guidelines allow the examiner to compare the invention to prior art to assess whether the claimed invention has advantages. So talking about advantages probably isn’t that much better! sigh.

  46. opampaman:

    Of course, avoiding admissions that knowledge of the problem was in the prior art is good. But the Supremes said that the problem that the inventor recognized and attempted to solve may be used in the obviousness analysis. (They also said other problems could be used too.) In any event, you can bet that, if the applicants say they recognized the problem, that the examiner will say that one of ordinary skill in the art would have recognized that same problem. And good luck trying to argue that the examiner is using hindsight!

    You’re much better off pointing to how the invention has “advantages” (or, in your example, “cool”) rather than talking about how the invention has solutions to problems in the prior art. It’s a fine line between discussing the advantages of the invention as opposed to the problems in the prior art, but talking about problems in any context is sure to increase the risk of a KSR analysis that presumes (albiet unfairly) that the problem would have been recognized.

    That said, your suggestion of avoiding admitting prior art knowledge is certainly an improvement over setting forth problems explicitly in the background section.

  47. “In the past, some practitioners would characterize the prior art as having problems and then would point to how the invention solved those problems. Going forward, practitioners will be less inclined to discuss problems in the prior art and, instead, may merely talk about how the invention is better. To do otherwise, risks such “problem” comments being used as a motivation to make the invention.”

    I think there is still merit to describing the problems with the art in the application, but only in the right way. Recently, I interviewed a case where we were able to convince the examiner to allow it because he could clearly 1) see the problem and 2) see our cool solution.

    The way to disclose the problem correctly, in my opinion, is to discuss it in the detailed description–that way you’re not admitting that it is prior art. Going further, I have also recently been saying, “The inventors have discovered the following disadvantages with X … Accordingly, in certain embodiments they came up with Y.” I think this approach should reduce the impact of KSR on discussing problems in patents.

  48. OK – so now that I have identified all of the applications that have an inventor in common and either a file or priority date that are within 2 months of each other or of an issued patent, USPTO decides to waive the 2 month requirement if the file date is before Nov. 1. Thanks.
    Lesson learned – don’t comply with these rules until the day before an item required thereunder is due.

  49. Dennis observed, “A major focus is on finding the ‘problem’ before determining whether the solution is obvious.”

    In the past, some practitioners would characterize the prior art as having problems and then would point to how the invention solved those problems. Going forward, practitioners will be less inclined to discuss problems in the prior art and, instead, may merely talk about how the invention is better. To do otherwise, risks such “problem” comments being used as a motivation to make the invention.

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