Feeling some pressure from its members, the AIPLA has now filed an amici brief in support of GSK’s motion for a preliminary injunction to stop enforcement of the PTO’s new rules on continuations and claim count.
A preliminary injunction requires the moving party to satisfy a four factor test of equitable relief:
- Likelihood of success on the merits of the case;
- Irreparable harm that will persist without relief;
- Balance of hardships weights in favor of relief; and
- The public interest supports relief.
In its brief, the AIPLA focused on how the new rules work to destroy established interests. The brief focuses on a tradeoff between patents and trade-secrets — indicating that the inventions embodied by many currently pending applications would have been kept as trade-secrets but for the longstanding “guarantee of a full and fair opportunity to seek a spectrum of patent protection.” According to the AIPLA, the limitations on claims and and continuations severely inhibit that guarantee and thus create an irreparable harm to current applicants.
David Kappos, Chief of IP at IBM, filed a declaration in support of the AIPLA brief. Kappos noted the incredible cost that it will incur to review its 25,000+ pending patent applications to ensure compliance. Writing on behalf of SanDisk, two attorneys noted that the technology company will lose at least $200,000 in filing fees due to required consolidation. Writing as a paid expert for SKB, former PTO Director Harry Manbeck has filed a declaration explaining why, in his view, the new rules are illegal.
Files:
- File Attachment: AIPLA.PI.Motion.pdf (158 KB)
- File Attachment: Kappos.pdf (76 KB)
- File Attachment: Sandisk.pdf (376 KB)
Links:
The court granted the preliminary injunction.
Elan Pharmaceuticals also filed amicus brief today 10-29-07.
“”Just as a heads up, the court ORDERED that all references to Mr. Manbeck’s declaration be removed from GSK’s exhibits.”
Does anyone have further information on this?”
Actually, what was likely seen by me and the rest is “draft order” by the PTO to strike Manbeck’s Declaration. Edwin Schindler correctly pointed out that the district court judge hasn’t signed this order (at least there are no posts showing this “proposed order” to be signed). So for the moment, the Manbeck Declaration appears still to be in the GSK suit. If so and that remains the case, the PTO will have an interesting time trying to explain that Declaration away on Wednesday.
Wednesday is shaping up to be a rather interesting day!
I see that from the Docket Sheet that the PTO filed a massive opposition memo, along with 35 exhibits, Sunday evening.
It was my understanding that the PTO had 11 days to file its opposition, though I could be mistaken. If so, then wasn’t its opposition due on Friday, October 26th, and, if so, it would appear that the PTO (DOJ) sharply cut into GSK’s period for filing a reply?
My “best guess” is that either the District Court will grant the preliminary injunction or, if necessary, call it a “TRO,” and if not, GSK will have a Notice of Appeal ready to file in the District Court and a Motion for Injunction Pending Appeal ready to be filed in the CAFC, which would only require one circuit judge to grant.
It is all summed up by my PTO credo – this is the patent office that hates patents!
10-20% in my day would have been grounds for Sister Mary Dolaretta to call your parents and strongly suggest an immediate transfer from the school. It is less than an F minus (if there is such a grade). Usually, the boys would be sent to a military school (similar to a reform school). I don’t remember where they sent the problem girls. I believe some of them ended up at the Kennedy Institute for slow learners.
The reason there is animosity and confrontation between the two groups is that the PTO will not allow most applications after failing to present proper rejections. It hides bad work by reopening prosecution at an alarming rate and accepting RCEs based on false promises or applicant’s hopes that giving examiners extra counts will save costs and time in the long run. I have been told the PTO currently has the lowest allowance rate ever, and it is proud of that statistic. What a clusterf even without the new rules.
I agree with what’s said above, just wanted to point out that it is all about sampling. We see 10-20% decent OAs; they see 10-20% decent applications, responses to OAs. The effect – neither side particularly respects or trusts the other to do the right thing. For each side, there’s quite a sizeable population that thrives on confrontation rather than negotiation.
“If you manage to burn up all your bonus bites, most likely that’s not the PTO’s fault. Rather, it’s likely because the applicant is insisting on excess claim breadth and refusing to compromise.”
Wow, that’s not even remotely close to true. Maybe 10% or 20% of the Office Actions I receive are even competent, let alone good. Why should I compromise when it’s not required by the crap produced by the Patent Office? The reason for extended prosecution is not the nefarious actions of applicants or their representatives, it’s the gross incompetence of Patent Office examining personnel. Requiring an adequate mastery of the English language would be a good place to start.
If the rules go into effect, and then they are ultimately overturned, if a case was let go abandoned (because an RCE or CONT is no longer available), do you think this will be able to be revived via a petition to revive? What a mess!
Does anyone know the last time any court anywhere denied a bona file amici the opportunity to file a thoughtful brief on a case pending before the court?<<<< I don't know... but what would be the harm for the court to understand AIPLA's position?
Dear Senator,
I am a patent lawyer, and I am contacting you again to declare my opposition to key provisions in the Patent Reform Act of 2007 (S.1145 and H.1908).
Specifically, I am strongly opposed to the new 35 USC 3(a)(5) and to the new 35 USC 123.
The Senate Bill, in “Sec. 11 Regulatory Authority”, would amend 35 USC 3 to provide the USPTO Director with substantive rule making authority to promulgate any rules he deems “necessary” to the operation of the Office. I believe that conveying such authority onto the Director is unwise and dangerous, and would allow the Director to circumvent the safeguards of congressional legislation and the APA while catering to the whims of political lobbying forces, as we see happening even today.
Before coming to the USPTO, Director Dudas had no patent experience. Since coming to the USPTO, Director Dudas has shown anti-patent and pro-big-business sentiments. He is a politician, not a patent attorney, and so he is motivated much more by lobbying forces than by an innate desire to “promote the progress of science and the useful arts.” To grant such a man substantive regulatory authority would merely mean strengthening large corporations who donate monetarily to a party’s political causes at the expense of protecting the rights of individual inventors, start-ups, small businesses, and universities who represent and enrich America at-large.
Please let me remind you Senator that the Googles, Intels, IBMs, and Boeings of today were all at one time the “start-ups” of yesterday, sometimes blossoming in a garage with an idea that satisfied a market need. Each of these “giants” availed themselves of patent and trade protections which were made available to them by the government. As a consequence, each was able to succeed to the benefit of America against the established industrial powerhouses of their day.
By stifling start-ups today, you would merely ensure that America will have no more new Googles and IBMs in the future. That can’t be good for the country, and such a policy (as advanced, for example, by the Coalition for Patent Fairness, which is led in part by the Canadian conglomerate Research in Motion) seems very short-sighted to me.
I have worked for major U.S. corporations against so-called patent “trolls”. In no case has a troll *ever* changed a market strategy or dealt a fatal blow to a developing technology. In the few times that we could not invalidate or design around the troll’s patent (the USPTO’s quality is often horrible; the invalidity rates of asserted patents can be as high as 75% in some fields), there was simply a monetary transfer from the company to the troll – for a large company this is merely one of the “costs of doing business” in an imperfect world, and it is a relatively rare problem. These monetary transfers, affecting perhaps 2% to 5% of companies in America today, cannot warrant the evisceration of patent protection for 98% of the (non-trolling) innovating and patenting companies in America.
The House Bill, H.1908, in “Sec. 12 Additional Information”, would permit the Director, who is not an expert in patent law and (as stated previously) has displayed marked anti-patent and pro-big-business sentiments, to require patent applicants to “submit a search report and other information and analysis relevant to patentability”. The amount of detail that the Director is proposing by regulation (new 37 CFR 1.265) should be required for such a “search report and other information and analysis” is staggering! It basically makes the patent applicants (who may have no broad patent expertise in their respective fields) do the Examiner’s work, and requires the applicants’ representatives to take positions and make admissions that are against the interests of his/her applicant. This “transfer” of examination responsibility from the USPTO to the applicant runs diametrally opposite to the very reason that we have Patent Examiners in the first place. Patent Examiners are charged with becoming experts in a single technology and examining the claims of all patent applicants who may have no knowledge of what is happening in their industry a half a world away. The Patent Examiner, who is sworn to secrecy and should know what *every* company in the world is doing publicly (and sometimes even secretly), is the one who is charged with being the “gate keeper” to make sure only valid patents issue. A patent applicant simply cannot become aware of what every other company in the world is doing (some of which is *only* known by Patent Examiners), without incurring an extraordinary expense (thus making such an endeavor prohibitive for most individual inventors, small companies, start-ups, and even universities). Moreover, there is no government need which is critical enough to justify by legislation allowing the USPTO to place a wedge a patent applicant and his/her representative, which 35 USC 123 would precisely permit a regulation like 37 CFR 1.265 to do.
Thank you for your time, and for your representation of the interests of all Americans in the U.S. Senate.
Sincerely,
link to nipra.org
PTO’s new motto: “You can’t have too much innovation.”
[modeled after the SNL skit, “Remember, you can’t add too much water to a nuclear reactor”]
Whats next — a USPTO imposed lifetime cap on the number of patent applicants any given inventor is permitted to file? Lets set the number at 5 shall we. Seems real efficient to me.
To just venting’s remark about patent examiners needing more time to decide whether something’s patentably distinct:
They’ll do what they’ve been doing for years – find the answer that suits them and craft bogus arguments in suppoprt. Have you ever tried to contest a restriction requirement by petition? Have much hope your traversals will turn things around? And now traversal has more consequences during prosecution.
On a different note, is it just me, or did we not get a true notice and comment opportunity for these new rules? It seems to me the final form of the new rules morphed into something very different from what was initially proposed.
Although I am not a litigator nor a judge, I agree with Mr. Schindler and Mr. Ballwinder. My impression, and I believe it to be a common one, is that a court will decide who is “right” and then find a way to rule in favor of them. It may be that parties often do not want an amicus brief filed in their case, but I suspect that this is because the parties are private parties and are worried that their case may be hijacked by a public interest concern, possibly driving the case to a different and (for them) nasty conclusion. Here, of course, the PTO is a public agency which is allegedly acting in the public interest; what public interest are they serving in seeking to disqualify amicus briefs and declarations submitted by experts in the field, especially when they are seeking disqualification for technical reasons? I’m probably missing something, but I can’t think of a “good” reason. And I would think (and hope) that that will ultimately lead a judge to wonder what the PTO’s real motivation is for all of this.
To me the USPTO’s desperate efforts to invoke legal technicalities to somehow try and stave off a preliminary injunction order will be unavailing at the end of the day — win or lose on the preliminary injunction, the bottom line is that the PTO simply lacks the power to pass these rules and they will be invalidated one way or another. With respect to the rules, the PTO is like a guy tied to the end of the post on the railroad tracks and the train is barreling down the tracks — it is only a question of how quickly the train arrives — choo choo. Goodbye rules.
metoo,
WOW! That’s particularly cogent logic, never considered the issue from that point of view before . . . it’s not surprising that you choose to use a pseudonym!
Sorry Edwin, but you don’t know what you are talking about.
it happens quite frequently, Edwin
PhRMA has just filed a motion to file an amicus brief and, no doubt, will be filing its amicus brief imminently!
The DOJ/PTO can “hack away” all they want on whether the Manbeck Declaration and the AIPLA (and, no doubt, PhRMA’s) amicus brief should be stricken, however, the case, I am confident, will be decided on something closer to the merits.
“Dumb and Dumber” is that party that does not simply “consent” to all amici filings!
Opposing the filing of an amicus brief is like opposing a first request for a short extension of time or a modest increase in a page limitation.
While not able to get into the head of anyone, it would seem that if the DOJ/PTO have decided to use “long shot” procedural devices to in an attempt to defeat GSK, then substantive legal arguments opposing GSK on the merits are essentially non-existent!
The PTO is getting (even more) desperate . . . The DOJ has filed an opposition brief seeking to have the AIPLA brief stricken. If the district court was not otherwise inclined to read and consider the AIPLA brief, it will certainly do so now!
Does anyone know the last time any court anywhere denied a bona file amici the opportunity to file a thoughtful brief on a case pending before the court?
Anonymous:
“aren’t you paying attention?” Gee…
You actually believe the words of a politian? You don’t think it is possible that the guy who makes the statement just to be in line with the policy so that he can keep his job? You believe the genearls in Iraq actually believe Bush’s strategy will work? You don’t see the possibility that even if a general doesn’t believe the strategy would work, he will say the strategy can work so that he can keep his stars.
Hey sdfsdf, aren’t you paying attention? They don’t even have anything to do with eliminating the backlog. Note the quote from above:
“At the ABA/IPL section meeting in Boston in 2006, Solicitor Whealan said plainly that the purpose of the new rules was NOT to try to reduce the backlog, but to try to prevent applicants from broadening the claims years after their initial filing to snare competitors. He pointed to Micron Technology as being a victim of this practice.”
And I’ve heard this privately from PTO management many times before, and it’s written all over the rules.
And they will get rid of the backlog because no inventors will want to go through the expensive hassle of filing and prosecuting applications, the patent attorneys will all throw in the towel (or maybe pick up the towel and be Starbucks baristas with their good medical plan) and all of the examiners will have moved on to big and better things in rural Mississippi where the cost of living is low.
On the bright side, there will be plenty of manufacturing jobs as the Chinese outsource their manufacturing to the low-paid Americans
“These new rules are supposed to make examiner’s job’s easier….”
Don’t kid yourself. These new rules aren’t meant to make the examiners’ job easier. They’re meant for one purpose only, and that’s to get rid of the backlog.
Thanks for the correction: A substantive amendment after final requires a showing why it is necessary and why it was not earlier presented (not the new could not have been standard).
Setting appeals and RCE aside, I do not believe it is possible to amend after final (i.e., continue normal prosecution) in response to a new ground of rejection first presented in a final action. The mere presentation of such amendment and pointing out that it was not presented earlier because the issue was not of record earlier would not be acceptable for the showing under 1.116. If you are aware of a publically available file wrapper showing otherwise, I’d be very interested in the application number.
“That’s not what the rule says. The 1.116(b)(3) says ‘An amendment touching the merits of the application or patent under reexamination may be admitted upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.'”
Yeah Malcolm, how often were you ever successful in getting an amendment entered after final using an argument based on 1.116(b)(3)? There is usually not much time left at this point, after receiving the advisory, to petition and receive a decision (without buying a $500 NOA plus an EOT to keep it alive). Plus, it would piss the examiner off. Let’s be parctical here, it’s RCE time.
Okay patent leather, you made my day with that last comment!
[reaches for scotch bottle]
They are already making a movie about the current rule fiasco. Possible titles they are considering: The CFR Titanic, Patently Blonde, 2 Angry Men, Dumb and Dumber, Honey I Shrunk the Backlog, There’s Something About John, a Commissioner and a Gentlemen
“37 CFR 1.116 allows for substantive amendments only with a showing they could not have been earlier presented.”
That’s not what the rule says. The 1.116(b)(3) says “An amendment touching the merits of the application or patent under reexamination may be admitted upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.”
If the art represents a “new” ground of rejection, then you will be able to amend.
Also, you can file an appeal and amend your claims during that process as well.
And let’s be clear: you can still file an RCE under the new rules. If you manage to burn up all your bonus bites, most likely that’s not the PTO’s fault. Rather, it’s likely because the applicant is insisting on excess claim breadth and refusing to compromise.
” strong and commercially valuable patents”
LOL. “Strong” and “commercially valuable” are meaningless in the abstract.
I respectfully submit that the real angst behind the continutation rules is driven by the fact that owning a lot of weak, broad patents is far more valuable than a so-called “strong” patent that “merely” protects the company’s commercial products and R&D (assuming the company has such products).
37 CFR 1.113: after final amendment can only be under 37CFR 1.114 or 1.116
37CFR 1.114 is RCE
37 CFR 1.116 allows for substantive amendments only with a showing they could not have been earlier presented.
“If the Examiner uses a new reference in a final rejection then you would have to file an RCE or continuation to get your amendments in.”
Show me the rule that says that.
Malcolm quoted and said,
“”Manbeck lists the following reasons why an applicant would file a continuation application: To differentiate claims over art cited in prosecution”
Don’t follow that one at all. That’s what Office Actions and amendments are for.”
If the Examiner uses a new reference in a final rejection then you would have to file an RCE or continuation to get your amendments in.
“So it’s important to remember that though people may not like these new rules, they were caused by applicant’s actions.”
I agree in the sense that they were caused by applicants taking actions to get strong and commercially valuable patents. As indicated above, these rules aren’t about backlog, they are about limiting the ability of applicants to get strong patent protection.
“So it’s important to remember that though people may not like these new rules, they were caused by applicant’s actions. I see a lot of complaining and few alternate suggestions.”
I guess PTO (mis)management has been passing the Kool-Aid around.
“It takes added time to review related applications to see if they have patently indistinct claims”
No doubt. In fact, I’d say that this is one of the most difficult feats in patent law to do “right” except in the extreme cases where a five year old could tell you the answer. As soon as the claims are not plainly distinct, any “analysis” quickly devolves into the stuff of nightmares.
Please allow me to vent, it’s cheaper than therapy.
These new rules are supposed to make examiner’s job’s easier, but it will take examiner’s added time to determine if applicant’s are adhering to the new rules. They have to send out notices without a rejection for cases that do not adhere to the rules and they probably will not receive any extra time for this.
Then the office is going to say, look, we gave examiner’s this, now you examiner’s should be doing cases faster. Did you see their skewed interpretation of the GAO survey? GAO said give them more time, they interpreted it their own way.
But these rules only make it harder for production. It takes added time to review related applications to see if they have patently indistinct claims, it takes extra time to see if the rules are adhered to. Oh, and let me tell you, ESD’s are useless. For the AE applications, a lot of examiner’s didn’t even read the prior art descriptions because they are so off, often claims were rejected using the same references found in the ESD because you can’t ask an attorney to be an examiner, they can’t interpret claims broadly. Then they take away extra RCE’s and make applicant’s more likely to file appeals. RCEs mean more time to examine those harder applications. The rules will create more appeals. Examiner’s hate writing examiner’s answers, they take too much time.
Then they added this patent academy, but examiner’s have to be retrained once they enter their art unit. Notice I said RETRAINED, not trained. The patent accademy actually hurts production in the long run because examiner’s are not properly trained on how to be efficient. They are best trained in their art unit by a primary, not some trainer with a bunch of other people they have to train at the same time, all doing different technologies.
A subclass I am familiar with had a few hundred references in it, now it has 2,000. The office refuses to update the classification system and it is now useless. Patent references and applications are more complicated, and examiner’s have to write more detailed rejections and worry about too many rules, yet added time is not given. Other groups that have easier technologies actually get more time to do their cases than related groups. The standards were established in 1978 when rejections consisted of a single paper with some boxes checked, and subclasses had 200 references at most.
But the pto is not the only one to blame for the problems we have right now, these are all problems caused by applicants. Some applicant’s file 10 applications with virtually identical claims, submit silly amendments that do not add anything, file RCE after RCE, continuations, huge numbers of claims, IDS’s with tons of references.
So it’s important to remember that though people may not like these new rules, they were caused by applicant’s actions. I see a lot of complaining and few alternate suggestions.
thanks for reading.
metoo —
The Petitions Branch will be swamped too.
Budge – the backlog is nowhere near 5 years in many arts.
I think it would have to be Guam, bierbelly. The sad part about all of this is that the examiners are going to be screwed by the new rules too. And let’s not forget the BPAI – they will be swamped and I doubt PTO management has any plans to significantly expand the Board. And let’s not forget that the PTO will surely take in significantly less fees because of the new rules. They’ll get a bump for the last month or so, but over time they will be losing out too. Perhaps even the CAFC will see an increase in workload as a result of the new rules.
“Move the PTO out of the DC area to a place where people can live in attractve housing convenient to their place of work with easy commutes, within the range of salaries that the PTO can pay.”
India?
“Move the PTO out of the DC area to a place where people can live in attractve housing convenient to their place of work with easy commutes, within the range of salaries that the PTO can pay.”
WVA?
Budge:
Don’t many products have a short commercial life, e.g, less than 10 years?
The issue with backlog also prevents backlog. Basically, you tell the client that their patent won’t issue for 4-5 years, will the invention be useful then? You filter out many inventions that way. Lose the filter, and there will be more to file.
I personally see nothing wrong with a 5 year backlog. Patents that issue after long pendency are better, because I see more prior art, I can draft claims that are more pertinent to the lifetime of the patent, and I have to file less crap. And many new companies fold after a few years, and take their patent applications with them (further reducing backlog).
I have 3 huge non-prov. utility applications pending – none have received a FAOM, one recently received a restriction req. (earlier this week), and I am in the process of filing SRR’s in the other 2. In the SRR, I have to elect one of the inventions/species I identify. I am concerned that amongst all 3 applications, I will have some claims that will be subject to double patenting rejections of the obviousness-type (all have the same inventor), which I ordinarly wouldn’t care about in this case, except now I am concerned about claims amongst the 3 applications being lumped together toward the 5/25 calculation. Would it be advisable to elect claims amongst the 3 applications that I am sure will not have this problem, even though they are not the most important inventions, and wait and see what happens with the rules over the next several months – I will be able to file the divisionals and subsequent continuations later on per the old and new rules.
“Just as a heads up, the court ORDERED that all references to Mr. Manbeck’s declaration be removed from GSK’s exhibits.”
Does anyone have further information on this?
Manbeck’s Declaration was stricken by a 2 page order on the following 3 grounds: (1) improper expert testimony under Federal Rule of Evidence 702; (2) wrongfully introduced evidence outside the administrative record; and (3) caused GSK to exceed Local Rule 7(F) by 18 pages.
At this point, I would be careful reading to much into this order. This striking may be more a technicality, especially if the one of the clerks wrote the order and simply presented it to the judge to sign.
Move the PTO out of the DC area to a place where people can live in attractve housing convenient to their place of work with easy commutes, within the range of salaries that the PTO can pay.
Then you may get a professional examinng corps that makes a career out of examining instead of using it as a stepping stone to private practice.
Solutions:
1) Get rid of hoteling. Primaries should be required to be on hand for “hands-on training of examiners by competent primaries.”
2) Go here: link to just-n-examiner.livejournal.com, wade through the BS, and you’ll see some excellent ideas that are guaranteed to reduce the backlog.
3) Eliminate the Director and Comissioner positions, except as figureheads like the Queen. Hire program analysts at less than half the SPE salary and make the SPEs examine at GS-15 production.
4) Make me lifetime Patent Czar and the backlog will disappear and never return.
I competely agree that the new rules are not the answer to the PTO’s problems.
But no one is proposing solutions that will work to solve the great backlog in the examination process.
So let me get that process started.
First, we need to recognize that part of the PTO problem was caused by the drain of user fees from the PTO throughout the 1990’s and early in this decade. More than a billion dollars was drained from the PTO which could have been used to hire more examiners and better train examiners.
Second, there is not enough hands-on training of examiners by competent primaries.
Third, examiners are not given appropriate time to read the applications, prior art etc to do a good job. This often results in junk on the first office actions which leads down a wrong path. What about having good first office actions and requiring an interview before or after the first office action to move cases along and get to the heart of the matters.
Fourth, patent attorney’s need to work to write valid claims and not pursue claims which are clearly too broad.
Ok, thats a start of proposing solutions. Lets get the ball rolling in the right direction.
“Sorry Malcolm. The Office has apparently said quite the opposite (“[t]he Office will likely not grant such a petition for submitting an information disclosure statement (IDS) or an amendment necessitated by (or in view of) newly discovered prior art.”) in the response to comment 85 on page 46773 of the FR notice.”
Well, that’s obnoxious. But they plainly left themselves (and us) some wiggle room.
“Another thing about reexam, you will be forced to characterize the reference, or decide not to file the reexam, both of which have obvious potential problems.”
Again: if the references that were “newly discovered” are material, then you clearly have an ACTUAL (not a potential) BIG PROBLEM. Whining about a re-exam and its potential problems doesn’t really help your argument.
My point, again, is that most of Manbeck’s reasons for the “necessity” of continuations are irrelevant baloney.
“One more thing – 25 claims, 3 indpendent claims, second action final office action, one continuation, 103 rejections not requiring motivation to combine, etc., etc, etc.”
Dudas for President! No one’s to blame. Dudas for President! Not Insane!
I just saw this over at Patent Docs:
“Just as a heads up, the court ORDERED that all references to Mr. Manbeck’s declaration be removed from GSK’s exhibits.”
Does anyone have further information on this?
One more thing – 25 claims, 3 indpendent claims, second action final office action, one continuation, 103 rejections not requiring motivation to combine, etc., etc, etc. Inventions do not sit in some sort of predefined box. If the patent office needs more money to provide the services require by the patent clause in the U.S. constitution, then charge more.
25 claims, 3 indpendent claims, second action final office action, one continuation. Inventions do not sit in some sort of predefined box. If the patent office needs more money to provide the services require by the patent clause in the U.S. constitution, then charge more.
O.K, I’ll start doing penance for 2004 and defend Malcolm. He actually said in another post (on Oct. 17), “I think the new rules stink and I hope that GSK’s suit manages to delay their implementation for a long time, if not indefinitely.”
Would that Director Dudas had Malcolm’s understanding in this regard.
Is it true that this is on the docket for 10/31 in E.D. Va.?
“Mr. Mooney? You’re really Jon Dudas, aren’t you?”
LOL, I was thinking the same thing. The PTO could use the likes of Malcolm for their “cause.”
MM, that seems logical about reexam, but a year or two ago the PTO formed separate reexam units. The reexam examiners are somewhat better than the rest and will be swamped with requests (they are relatively small units). A reexam examiner will not have seen the allowed application until it falls into his/her lap, so wouln’t it be a good business decision to have the original examiner consider the reference?
Another thing about reexam, you will be forced to characterize the reference, or decide not to file the reexam, both of which have obvious potential problems.
Also, until the PTO stops searching, which is the primary function of an examiner, you shouldn’t pick on an applicant for obtaining a bad search.
“First, under the new rules this sounds like the perfect situation for a petition, e.g., to file an “extra” RCE and get the refs examined.”
Sorry Malcolm. The Office has apparently said quite the opposite (“[t]he Office will likely not grant such a petition for submitting an information disclosure statement (IDS) or an amendment necessitated by (or in view of) newly discovered prior art.”) in the response to comment 85 on page 46773 of the FR notice.
Mr. Mooney? You’re really Jon Dudas, aren’t you?
Maybe we should organise a mass protest outside the court with placards and banners. Didn’t the lawyers in Pakistan stage a street demonstration recently?
“First, under the new rules this sounds like the perfect situation for a petition, e.g., to file an “extra” RCE and get the refs examined.”
Except that the PTO has already said that such petitions won’t be granted.
“let it go unenforceable”
By the way, this is effectively meaningless. You are the person who enforces your patent. Judges are only called in when, for whatever reason, you are incapable of doing the job yourself.
“If I get a case allowed, and am all out of rce’s/cont’s, and have new ref’s cited in a foreign patent office, I have a duty to submit them, but can’t. Let it go abandoned, or let it go unenforceable?”
First, under the new rules this sounds like the perfect situation for a petition, e.g., to file an “extra” RCE and get the refs examined.
Second, I fail to see the problem in getting your patent and then filing a reexam under these circumstances.
Lastly, I note that if those refs are really “bad” for you, then you’re sorta screwed anyway, aren’t you? I mean, your real problem is not with the “new rules” in this case but with the fact that you apparently can’d do a decent search yourself and your invention is not really an invention. Oops.
Once again, I’m a bit devoid of pity.
The more folks whine and cry about these new rules the more it becomes clear that this patent business is just that: a business. It’s not about inventing and protecting one’s invention, is it? It’s about gaming the system and extracting tools from the government so you can threaten competitors.
That’s not necessarily a bad thing. But it’s unethical not to admit it.
LGB, it’s a dilemma… we just don’t know what the USPTO will try to do… but I’m just against enriching the USPTO (rewarding them with unnecessary filing fees $$$) more than necessary for these shenanigans.
P.S. I doubt the court would let them parse the prospective and retrospective parts of the rule to salvage it. That would unfairly penalize the folks who have relied on the USPTO assertion of retroactivity.
“I am not an attorney, just an individual inventor. I praise Tafas for having the fortune to take on this endevour. KDW should also be given some gratitude for doing their part. (I can’t imagine they are sticking him with the entire bill.) What have the rest of you done other than b—ch. I bet you talk politics but don’t vote either. I know just the type, talk the talk but can’t walk the walk. Get off your butts and put your client’s interests were they belong, file an argument to stop this nonsense.”
Bozo, have you got any idea how many hours (non-billable) we’ve collectively spent on these issues? As in the case of GSK, if there were “clients” willing to spend the money, the suits would be filed. The arguments have been made…your government, the PTO, has ignored them.
I know, let’s all get together outside the District court in Alex and picket…Unfair to Patentees!
How about the AIPLA filing an amicus brief (along with everyone else posting on this list) for our lawsuit to fight the illegal appointment of Margaret Peterlin? Remember, when you are fighting cancer, you just don’t attack one cancer site at a time, but all of them simultaneously.
“2b) if the rules become effective, then prior to abandonment of the provisional applications at the one-year anniversary, request ($130) conversion of the provisional applications to non-provisional applications under 37 CFR 1.53(c)(3), and then add the required rule 78(d)(3) “reference” to the now-converted non-provisional application.”
I guess my concern with this approach (i.e. filing the con’s as provisionals) is if the PTO decides not to apply the rules retroactively, such that any con’s or regular applications filed prior to Nov. 1 are not subject to any of the new rules (for sake of argument), then when the conversion is made post Nov. 1 to a non-prov, with the proper references to pending parent case (filed pre Nov. 1, and of course, assuming the parent is still pending), will the PTO deem the converted application as a pre Nov. 1 filing? The current rules allow the converted non-prov. application the benefit of the pre Nov. 1 filing date for priority purposes, but the conversion, and thus the existence of the con app, occurred after Nov. 1, and thus could be subject to all of the rules related to the number of RCE’s, max. no. of claims, no. of con’s, etc. Would it not be better to file the con as a non-prov appl pre Nov. 1 (you could even wait up to 4 months to make the required ref), and then if the rules do go into effect and are deemed retroactive, such that the filing of the con pre Nov. 1 might hurt you, you could expressly abandon the con. If the rules do not go into effect or are not retroactive, you can make the required reference within 4 months and are good to go. My concern about making the required reference to the parent case in the con filed pre Nov. 1 (and post Aug. 21)at the time of filing is that even if you let it go abandoned, would the PTO still deem it the “one more continuing app” – I don’t think it goes away just b/c you abandoned it. I don’t think Sec. 1.78(d)(1)(v) really addresses this (deals with the right to file con’s when the parent case is abandoned).
“If you read the Fed Reg Notice, they justify the retroactivity based on a case which allowed license requirements to change while license applications were pending. But as argued by GSK, patent applications are property (in contrast to a license). The USPTO is going to have to do much better than that.”
The cases they cited on 46826 and 46827 are Landgraf and Chadmoore Communications:
link to law.cornell.edu
link to fcc.gov
Do you think Landgraf really stands for what they cited it for? Here are quotes:
“However, retroactivity is a matter on which judges tend to have “sound . . . instinct[s],” see Danforth v. Groton WaterCo., 178 Mass. 472, 476, 59 N. E. 1033, 1034 (1901) (Holmes, J.), and familiar considerations of fair notice, reasonable reliance, and settled expectations offer sound guidance.”
“every statute, which takes away or impairs vested rights acquired under existing laws, or creates a new obligation, imposes a new duty, or attaches a new disability, in respect to transactions or considerations already past, must be deemed retrospective . . . .”
“Since the early days of this Court, we have declined to give retroactive effect to statutes burdening private rights unless Congress had made clear its intent.”
“When, however, the statute contains no such express command, the court must determine whether the new statute would have retroactive effect, i.e., whether it would impair rights a party possessed when he acted, increase a party’s liability for past conduct, or impose new duties with respect to transactions already completed. If the statute would operate retroactively, our traditional presumption teaches that it does not govern absent clear congressional intent favoring such a result.”
It seems to me that the Supreme Court’s phraseology “impose new duties with respect to transactions already completed” would cover having the new requirements of Rules 75 and 78 (and 265) applied to cases which were properly filed and which received a filing receipt indicating the fulfillment of all statutory and regulatory requirements (that is the application was accepted as “complete”).
“Dudas actually made it out of this meeting unscathed?!
Yeah, what else happened at this meeting? Did Dudas at least seem apologetic about the new rules, or defiant? I’m curious.”
All he was doing was sitting at the head table at the luncheon. He did not speak during the conference. See my comments above regarding Love and the new rules.
“If I get a case allowed, and am all out of rce’s/cont’s, and have new ref’s cited in a foreign patent office, I have a duty to submit them, but can’t.
Let it go abandoned, or let it go unenforceable?”
meanontoo,
Can’t you still get another RCE/Cont after you’re “all out” if you can justify why it wasn’t submitted in an earlier RCE/cont? Won’t newly cited art be such a justification?
I am not an attorney, just an individual inventor. I praise Tafas for having the fortune to take on this endevour. KDW should also be given some gratitude for doing their part. (I can’t imagine they are sticking him with the entire bill.) What have the rest of you done other than b—ch. I bet you talk politics but don’t vote either. I know just the type, talk the talk but can’t walk the walk. Get off your butts and put your client’s interests were they belong, file an argument to stop this nonsense.
I checked the PACER record for the latest in the GSK case, and interestingly enough, the USPTO filed a motion to exceed the 30 page limit for a brief by 10 pages. Funny how they moved to strike GSK’s Manbeck declaration as essentially a mechanism by GSK to increase the page limit. But it says the atty for GSK consented to a 40 page USPTO brief. What a nice guy. I wouldn’t have been so nice.
I can’t wait to read the USPTO substantive arguments. If you read the Fed Reg Notice, they justify the retroactivity based on a case which allowed license requirements to change while license applications were pending. But as argued by GSK, patent applications are property (in contrast to a license). The USPTO is going to have to do much better than that.
Just so it is clear, I cetainly meant no disrespect with regard to any of the parties with my recollection about the drunk at the Senators game. It was just a fact about that particular incident I threw in because makes me laugh when I recall that event. I was a kid at the time. I wanted first base.
“Dudas actually made it out of this meeting unscathed?!”
Yeah, what else happened at this meeting? Did Dudas at least seem apologetic about the new rules, or defiant? I’m curious.
“I was also at AIPLA and applauded loudly when the new president gave his comments on the new rules with Dudas sitting next to him”
Dudas actually made it out of this meeting unscathed?!
Just remember, Tafas v. Dudas is the lead case in this effort, not GSK v Dudas. Tafas was the “drunk falling onto the field” at the last Senators game, while others waited in the stands. He and everyone eles were scared sober on August 22! Tafas stood alone on the field for almost 2 months. GSK was in the stands. Hopefully now the gates are open, this is not the last game, and the flood will overwhelm the poorly considered actions of the USPTO. Congratulations to Tafas, GSK, AIPLA, NAPP, IBM and all others who stepped forward to try to head off this disaster!
“2b) if the rules become effective, then prior to abandonment of the provisional applications at the one-year anniversary, request ($130) conversion of the provisional applications to non-provisional applications under 37 CFR 1.53(c)(3), and then add the required rule 78(d)(3) “reference” to the now-converted non-provisional application.”
Why not just add the reference now? The reference is not effective in a provisional application, but so what? Having a bad priority claim doesn’t make a provisional invalid.