Patent Law News

  • PTO Battle over Rules: PTO Director Jon Dudas and Deputy Director John Doll have now been served with deposition notices from Mr. Tafas’ attorneys. The Dudas deposition is scheduled for Friday, December 7, 2007 at the law office of Kelley Drye in DC.  Deposition dates are rarely firm.
  • E.D.Texas Not Waning: Patent Troll Tracker provides more stats in response to my post suggesting that the “magnetism of the Eastern District of Texas may be beginning to wane.” (Of course, TT’s work looks to the past, and my post was primarily thinking about the future).
  • S.1145: As the Senate Judiciary committee gets rolling again. Now is the time to contact your Senator to discuss the pros and cons of various aspects of patent reform.  [Contact] Interestingly, the Senate has disbanded its Judiciary subcommittee on Intellectual Property [Link]
  • Tafas v. Dudas et al Documents: My friends at Justia have agreed to provide links to all the court documents for the Tafas case: Justia on Tafas.  On November 5, 2007, the PTO withdrew its motion for partial summary judgment under Rule 12(b)(6).
  • Be a Fellow at Princeton: Those of you ready to spend time thinking and writing about patent law might consider a Fellowship in Princeton’s Program in Law and Public Affairs. One of the six fellowships is slotted to be awarded to an IP scholar. (funded by Microsoft). “Outstanding faculty, independent scholars, lawyers, and judges” are all invited to apply. Info: http://lapa.princeton.edu. [Other patent law jobs]

89 thoughts on “Patent Law News

  1. Dear Attorneys, IP specialists, etc.

    Here we have discussion about Dudas et al. testifying, but many raising all the issues which pertain to the patent system as a whole. The patent system is destined for disaster as it is currently implemented. What happens in the year 2050 when it takes longer than the 20 years one would have a patent for to actually have your application examined? 2050 is not that far away in terms of the governments age. Times are changing, more rapidly than ever before. Lawmakers seem either unwilling or unable to keep the system in functioning order, perhaps in part due to partisan divisiveness. No matter the cause however, the system must be maintained to operate in a realizable and fully functional manner. The senate is considering voting what amounts to permanent emergency powers to the director, and the Office has initiated the first in what will probably be many new rules in order to help stem the tide threatening to complete the overwhelming of the Office. Are companies and Attorneys feigning ignorance of the current situation in asking for the director to justify the new rules? Yes. Would it be mere harassment for them to demand an explanation of the situation? Yes. Will these same companies likely lose out on money by the implementation of the new rules? Yes. Do they hope to find something in the reasoning of Dudas et al. that can be spun to help their position of stopping the rules from going into effect? Yes. These answers do not even require serious inquiry to come to and they lead inevitably to the fact that Dudas should bear no burden of having to present a deposition.

    Sincerly,
    A member of the public.

  2. “If anyone should be lobbied it should be your clients. They are the ones with the most at stake and the best ones to be standard bearers.”

    No doubt about it.

  3. Individual attorneys writing legal analyses of proposed legislation to members of Congress is a laudable act, but as is well known such members react to only two things:

    1. Campaign contributions
    2. Correspondence from groups representing large voting blocs.

    Get your clients to call/write/visit, and get them to have their industry associations call/write/visit. And while they are at it the point should be made that no matter what the legislation and rules eventually say, it is all too clear that the patent system is rapidly pricing itself (if it has not already done so) beyond the reach of all but the financially well heeled.

    Several years ago I was faced with a situation where under then existing statutory law one federal agency was actively engaged in direct foreign and domestic competition with the aerospace industry, one instance of which threatened the financial viability of helicopter manufacturers. Fortunately, the industry was able to use 1 and 2 above to voice its displeasure. Six months later the law was changed to incorporate my recommendation, in large measure because it was the manufacturers and their industry associations that led the charge. Importantly, I then made it a point to make sure that no one wrote an article mentioning the change. I tucked it in my back pocket for use at a propitious time. That time later arose and left the agency speechless when it was brought to its attention. Needless to say, the agency backed off to lick its wounds, all the while realizing there was not one darn thing it could do to change the statutory language.

    That experiece led me to the firm and definite conviction that letters from lawyers are, except in precious few circumstances, viewed as…well…letters from lawyers looking as if they are trying to protect their paychecks. Letters from voting blocs is an entirely different matter.

    If anyone should be lobbied it should be your clients. They are the ones with the most at stake and the best ones to be standard bearers.

    Think about it….

  4. Could Mr. Whealan’s comments be construed as an admission to overthrow the Constitution of the United States, at least with respect to the Separation of Powers Doctrine, by force?

  5. Dear Senator,

    I am a patent attorney and I am writing you again to express my strong opposition to any Patent Reform Act that would give substantive rulemaking authority (or would include a fake “clarification” which indicates such authority has already been granted by Public Law 106-113) to the USPTO. Such a provision has found its way into the House Bill (H.R. 1908) at “SEC. 14. REGULATORY AUTHORITY”, and threatens (under the current administration) to destroy the American patent system and American competitiveness in the world market-place.

    As you know, the USPTO is currently being directed by two political appointees with no professional background and experience in patent or trademark law, contrary to the express requirements of 35 USC 3. Director Jon W. Dudas has continually shown a disdain for patents and patent applicants (while at the same time catering to the big business lobby that no longer need patent protection to secure their market position), and also a desire to have the USPTO “abdicate” from its Constitutionally-mandated function of examining patent applications.

    Moreover, and more importantly, the USPTO is already showing that it desires to use regulatory authority to contravene statute and to unnecessarily burden patent corral into Catch-22 filing predicaments. Please see the two videos of Solicitor Whealan flagrantly flaunting the law and sarcastically taunting patent applicants which have been posted at the Kelley Drye law firm web site:

    link to kelleydrye.com

    Direct links to the videos on the above page are as follows:
    link to kelleydrye.com
    link to kelleydrye.com

    Whealan Making Policy Transcript:

    “…what we’ve realized is we’re an agency and we write rules and we can ummm actually change policy a lot quicker by making some new rules uh that might change the patent system, and that’s what I’m going to talk about. Brian did a nice job of referring to some of the patent legislation up on the Hill that is stalled, and ummm we don’t have that problem. We right rules, and they issue, and maybe they get overturned, but we can actually uh uh try to move forward, and I think it would be irresponsible not to do that.”

    ESD Inequitable Conduct Whealan Transcript:

    “If you want all your claims examined up front, you can have it done, but it’s going to cost you, you’re going to have to do some work, which in the current law of inequitable conduct, nobody’s going to want to do.”

    The entire video presentation by Solicitor Whealan is here (introduction starting at approximately 47:50):

    link to realserver.law.duke.edu

    Senator, this is a breach of justice which the non-elected partisan leaders at the USPTO are attempting to force on the American people at the behest of lobbyists. For the love of country, and for the domestic innovation which has been one of the driving forces in making America great, I humbly ask you to stop this madness!

    Sincerely,

    ___________________
    Registered Patent Attorney

  6. Please consider *contacting* your senator about the Senate bill S1145. Perhaps some of the worst parts of HR1908 can be kept out of S1145.

    Take a look at Section 14 of HR1908. The agency leads, and congress follows. This is a terrible way to make laws.

    Here is what I sent to my senators:

    Dear Senator X:

    HR1908, the Patent Reform Bill, recently passed in the House. HR1908 includes some dangerous provisions which will hurt technology-based companies that are a foundation of American competititiveness. These companies depend upon patents. Please make sure that these provisions are NOT included in S1145, the Senate bill.

    One terrible provision in HR 1908 is Section 14 Regulatory Authority.
    Section 14 was inserted at the request of the US Patent and Trademark Office (USPTO).

    Section 14 *reverses* the law-making process. Normally, Congress enacts a statute and an agency such as the USPTO then makes rules to implement the statute.

    Under Section 14 parts (a) and (c), the agency leads and Congress follows. First, the agency makes new rules with no basis in any statute. Congress then within 60 days must evaluate the new rules and pass a Joint Resolution of Disapproval, otherwise the new rules become effective.

    Section 14(a) is very broad. It gives the agency, the USPTO, general power to pass new rules: “…the authority to promulgate regulations to ensure the quality and timeliness of applications and their examination…”. As noted, any such new rule will become law unless Congress acts within 60 days.

    The impetus for Section 14 is the USPTO’s recently published Final Rule that severely limits the number of patent claims and the number of continuation patent applications that an inventor may file. Federal Register, Vol 72 pages 46716-46843 August 21, 2007.

    These limitations in the Final Rule have no basis in any statute and have been strongly opposed by companies such as GlaxoSmithKline, who sued the USPTO over this Final Rule.

    The more important point, however, is that Congress should lead and the agency should follow. Retrospective evaluation by Congress, with a 60-day deadline, is no way to make laws that are vital to the economy.

    Respectfully yours,

    Joyce Lauer, JD
    Patent Attorney

  7. “Since when was reading every word of an IDS reference part of the existing rules?”

    You keep moving the target. I asked, “Please cite to where the USPTO is requiring something other than reasonable, good faith compliance **with the new rules**.” I was focused on “the new rules” because you were complaining about failing to comply with the ESD would create the risk of increased inequitable-conduct crackdowns from OED. I said nothing about the reading of each reference that’s a different matter.

    Also, I stand by my first assertion, “I think there’s a real chance the USPTO will eventually successfully require applicants to file ESD documents.” Now “eventually” means just that. The current rules may be too vague as GSK argues. But, after guidance from this case, the USPTO will eventually get it right.

    No one is saying that the burden of ESD documents for over 5/25 (or the upcoming requirements for over 20 refs in an IDS) are not onerous. But they’ll be eventually upheld and we’ll have to deal with it.

  8. “With respect to number 3, if that is the case, then are you suggesting that Moatz is conspiring with the powers at the USPTO to undermine Congressional legislation through the disciplinary process? That is a very serious charge and I think if it were proven could land Moatz in company is some very serious legal trouble.”

    Almost, but not quite. I don’t see anything resembling a conspiracy to defeat Congessional legislation, becase the legislation in question is not sufficiently clear.

    Instead, the situation as I see it runs roughly as follows:

    1) Some applicants and practitioners employ IDS practices that can legitimately be regarded as abusive from the PTO’s point of view.

    2) The PTO is trying to do everything it can to deal with #1.

    3) An appropriate part of #2 is proposing new IDS rules (which may not survive legal challenge) and/or lobbying for suitable legislation.

    4) An inappropriate part of #2 is the new (as far as I know) interpretation of existing rules to require reading of all IDS references. Given where the PTO is coming from, it is impossible for me to view this new emphasis on reading the IDS references as motivated by anything other than the PTO’s response to the problem of #1.

    This is what I had in mind with the term “disciplinary policy making”, and I do regard it as serious malfeasance by Moatz/OED.

  9. I just received my brochure from the “Advanced Patent Law Institute” for it’s upcoming CLE program at the PTO January 10-11, 2008. One of the sessions is “Effective Appeals Practice” and will include a “discussion of the new board rules from both a PTO and practitioner perspective.”

    So it looks like the new Board rules are going to be implemented by PTO (mis)management. Never mind that almost all of the comments correctly pointed out that there’s insufficient justification from PTO (mis)management for increasing the formal requirements of the brief, and thus the expense, and that some of the new rules (e.g. requiring applicant to explain why the claim is patentable) are contrary to law.

    It’s full steam ahead at the PTO.

    JohnG is correct.

  10. With respect to number 3, if that is the case, then are you suggesting that Moatz is conspiring with the powers at the USPTO to undermine Congressional legislation through the disciplinary process? That is a very serious charge and I think if it were proven could land Moatz in company is some very serious legal trouble.

  11. I am sick to death of this administration. These lazy btards just don’t want to work. Christ it’s a modern welfare state where they sit on their a$$e$ and we pay them to do it. Just do your job Dudas . . . just do you freakin job and quit wasting my money.

  12. “I am looking this from a historical point of view. The PTO management hates the examination part of its duties. It hates examiners. It wants to simplify examination to the greatest extent possible and avoid as much responsibility as it can, but still collect fees.

    Now take another look at these rules as a whole. They have made it a point to put as much burden on the applicant as possible. The constant meddling by the likes of the CPF influenced the PTO to place even more burden and restrictions on the applicant. They viewed the backlog situation as the perfect storm, the perfect time to strike.”

    Increasing the size of the examining corps is antithetical to the stated purpose of the reigning party to reduce the size of government. In the long run, it will work out great, since we’ll all be saving taxes on that income we won’t be making.

  13. “The PTO’s drive to eliminate examination goes back at least a decade when there was no appreciable backlog.”

    Correct, Rogan continued Lehman’s drive in his 2003 Strategic Plan. Under that plan, once the USPTO has shifted the burden of the patent search to the applicants, its desire was to “shift the funds for maintaining and improving the automated search systems [to] other uses such as staffing, training, etc.” That meant he would have wanted to stop maintaining the Examiner’s EAST search system.

  14. “No. I’m saying you are assuming something that the USPTO hasn’t said. Please cite to where the USPTO is requiring something other than reasonable, good faith compliance with the new rules.”

    Harry Moatz, OED director, has made at least two presentations at which he expressed certain views on interpretation of the existing rules. For definiteness, I will concentrate on a single example — the idea that not reading every IDS reference in its entirety is grounds for disciplinary action.

    The responses to this notion can be classified as follows:

    1) Denial. Some people are of the opinion that a senior official like Moatz couldn’t possibly be serious about this interpretation of the rules, and therefore that the presentations are being twisted or taken out of context. Unfortunately, the available evidence is not consistent with this scenario.

    2) Acceptance. If one agrees with this interpretation of the rules then no problem is perceived.

    3) Outrage. Some people view this interpretation of the rules as an improper attempt to enforce policy changes by manufacturing new and dubious causes of action under the existing disciplinary rules.

    I’m firmly in camp #3, and I further believe this abuse of official power is sufficiently severe that OED should promptly issue an official retraction of the general idea of “disciplinary policy making” and all specific instances thereof to date.

    If such retraction is not forthcoming, then I see no good reason for the PTO to retain power over practitioner discipline. Instead, that could be handled by a national practitioner bar association.

  15. The PTO’s drive to eliminate examination goes back at least a decade when there was no appreciable backlog. At that time, under Lehman, they were floating the idea of outsourcing the search. At that time, they were attemping to influence Congress to eliminate the requirement that an examiner be a US citizen. At that time, the examiner union was fighting it because the newly proposed examiner position would have been merely a ministerial duty of reviewing what was submitted and feared that the work load would only increase per examiner in such a system.

    I am looking this from a historical point of view. The PTO management hates the examination part of its duties. It hates examiners. It wants to simplify examination to the greatest extent possible and avoid as much responsibility as it can, but still collect fees.

    Now take another look at these rules as a whole. They have made it a point to put as much burden on the applicant as possible. The constant meddling by the likes of the CPF influenced the PTO to place even more burden and restrictions on the applicant. They viewed the backlog situation as the perfect storm, the perfect time to strike.

    If you don’t think this is sinister, it is because you don’t see or know the big picture, or simply don’t care.

  16. No. I’m saying you are assuming something that the USPTO hasn’t said. Please cite to where the USPTO is requiring something other than reasonable, good faith compliance with the new rules.

    Once again, from OED.

    /media/docs/2007/10/MoatzHarry_presentation.pdf

    Since when was reading every word of an IDS reference part of the existing rules? If a reference was cited as part of an ISR, shouldn’t that be enough reason to provide the reference? Wouldn’t such a reference be of interest to a reasonable examiner, regardless of whether or not the applicant’s attorney read every word of the reference? Oh, an OED, at a presentation at the 2007 AIPLA Annual Meeting has also has indicated that an attorney is responsible for reading every word of every foreign language reference as well, even if the applicant must pay for a translation. Where is that requirement in the statute, rules or case law?

    And if the applicant is merely being required to “help out” the USPTO and not being required to do a complete examination, why has the USPTO stated that an International Search Report, even if done by the USPTO itself(!), would not meet the search requirements of the ESD rule? Also, the USPTO it understands the ESD rules to mean that the applicant must do a more thorough search than the USPTO itself even does.

    Why? Well, the USPTO in its arguments in GSK indicated that any requirements for the ESD that are not clear in the ESD rules could be found in the MPEP. And because there are requirements in the ESD rules that are not found in the MPEP, therefore, the ESD rules must require more of an applicant than the MPEP rules required of the USPTO

    This means the USPTO is on record as saying that it expects a US patent applicant to do a more comprehensive search than any other patent office in the world, including the USPTO itself, does. So the USPTO has not exactly being arguing in “good faith” that the ESD rules merely request for “Applicant Assistance”

    See slide 39ff: link to uspto.gov Proposed Rulemaking

  17. No. I’m saying you are assuming something that the USPTO hasn’t said. Please cite to where the USPTO is requiring something other than reasonable, good faith compliance with the new rules.

    Once again, from OED.

    /media/docs/2007/10/MoatzHarry_presentation.pdf

    Since when was reading every word of an IDS reference part of the existing rules? If a reference was cited as part of an ISR, shouldn’t that be enough reason to provide the reference? Wouldn’t such a reference be of interest to a reasonable examiner, regardless of whether or not the applicant’s attorney read every word of the reference? Oh, an OED, at a presentation at the 2007 AIPLA Annual Meeting has also has indicated that an attorney is responsible for reading every word of every foreign language reference as well, even if the applicant must pay for a translation. Where is that requirement in the statute, rules or case law?

    And if the applicant is merely being required to “help out” the USPTO and not being required to do a complete examination, why has the USPTO stated that an International Search Report, even if done by the USPTO itself(!), would not meet the search requirements of the ESD rule? Also, the USPTO it understands the ESD rules to mean that the applicant must do a more thorough search than the USPTO itself even does.

    Why? Well, the USPTO in its arguments in GSK indicated that any requirements for the ESD that are not clear in the ESD rules could be found in the MPEP. And because there are requirements in the ESD rules that are not found in the MPEP, therefore, the ESD rules must require more of an applicant than the MPEP rules required of the USPTO

    This means the USPTO is on record as saying that it expects a US patent applicant to do a more comprehensive search than any other patent office in the world, including the USPTO itself, does. So the USPTO has not exactly being arguing in “good faith” that the ESD rules merely request for “Applicant Assistance”

    See slide 39ff: link to uspto.gov Proposed Rulemaking

  18. surfer, I know nothing about OED expanding or contracting. I was trolling for information.

    The BPAI is getting bigger. Even if the jobs were for clerks, more clerks = more decisions that can be written in a given period of time. I believe they are up to 62 APJs now, but that information was given to me during conversation I had with a clerk there.

  19. Anon said “END OF STORY” several comments ago. Why are we still discussing it? I remain convinced that my legal writing instructor was wrong when she insisted that beginning a legal argument with “END OF STORY” was not particularly persuasive. I believe the technique is particularly effective when coupled with a gross oversimplification or mischaracterization of the underlying law.

    In any event, after reading these comments, it appears to me that those officials at the PTO are far more malevolent than I would have guessed. Do they have access to my tax records? Or, worse, to my “permanent record” from grade school?

    Maybe Dudas will be asked his opinion of waterboarding at his deposition.

  20. Obviously we are no longer laboring under the schedule stipulated to by Tafas. (These depos are scheduled for long after the parties’ SJ papers would have been due.)

    Any insight as to the new schedule–specifically when Plaintiff’s SJ brief is due and when we can thus suspect (a week later)to see the amicus briefs of PhRMA, BIO, and the others who are doubtless going to submit?

    The govt wanted more time (see note 1 of their Opposition to the TRO), and I can’t imagine Plaintiffs are in a hurry now that the rules have been enjoined until a final adjudication on the merits.

    Any thoughts?

  21. johng, you said “the BPAI is lawyering up now.”
    What do you mean by that? The patent lawyer positions the board was hiring for are positions that are more or less permanent clerks for the board. You didn’t hear Mike Flemming’s talk at AIPLA?
    Rumors have it that OED was just downsized.
    The solicitor’s office handles appeals issues and the DOJ handles litigation where the agency is a named party. I’m oversimplyfing things, but there are clear lines for who does what.
    If you know something we don’t know, spill.

  22. “I’m sure that originally the current IDS rules was billed by the USPTO as a rather easy to comply with requirement by applicants. Nevertheless, the USPTO has repeatedly attempted to try to make the IDS requirements more onerous for applicants. Why should the USPTO behavior be any different for the EDS requirements?”

    I didn’t say there were not onerous for either. What I said was that (1) they are perfectly fine under the statutes you cited and (2) the OED isn’t going to be enforcing inequitable conduct in the vast majority of the cases in which dumb arguments are made in ESDs. They don’t have the time to do so now where applicants make dumb arguments in responses. They won’t have the time to do so in the future with ESDs. They’ll just kick bad ESDs back to the applicants, as they now do with accelerated examination. Again, this is not a ethical risk at this point, it’s just a cost risk.

  23. “Why are these mere arguments in support of the rules?”

    Because that was the context in which they were made.

    “Are you calling the USPTO officials liars?”

    No. I’m saying you are assuming something that the USPTO hasn’t said. Please cite to where the USPTO is requiring something other than reasonable, good faith compliance with the new rules.

  24. “The USPTO officials can bluster all they want about bad faith, but those were mere arguments in support of the rules–not an indication of intent to change the way they refer cases to the OED.”

    Why are these mere arguments in support of the rules? Are you calling the USPTO officials liars?

    I’m sure that originally the current IDS rules was billed by the USPTO as a rather easy to comply with requirement by applicants. Nevertheless, the USPTO has repeatedly attempted to try to make the IDS requirements more onerous for applicants. Why should the USPTO behavior be any different for the EDS requirements?

  25. Amen Ender:
    According to 35 USC section 102 by virtue of filing a patent application an applicant is entitled to a patent. END OF STORY.
    No procedural versus substantive analysis or other BS. The fact is the rules in their entirety violate the “plain meaning” of 35 USC section 102. Even the new IDS rules violate 35 USC section 102.
    What happened is clear. The USPTO thought that the law would be definitely changed. However, someone (GSK maybe?) has an amendment attached to the house bill 1908 which authorized a legislative veto of any regulation Congress did not like. This was a poison pill, because the USPTO cannot now back the patent reform bill. Without the law, the rules are clearly improper. That is why the USPTO had no arguments.
    The back up position of the USPTO always was that they would destroy applicants one at a time “case-by-case”. They knew full well they could not prevail were concerted action undertaken to attack the rules, such as the court case. So you people can keep bantering about this and that. The fact is the USPTO cannot win the court case. Their only hope is that the Senate acts on the bill. Even that won’t help them, because then the joint committee must harmonize the senate bill with the house bill. We all know full well that the legislative veto provision in the house bill will not be removed. Therefore, the Senate bill must be modified to include that provision. The USPTO has already stated that it will not back a bill with the legislative veto provision. Therefore, this story is over. The USPTO lost. Dudas and Doll have egg on their face. The rest, depositions and such, that is simply payback . . . you know making the parties squirm a little.

  26. I was not there, but whether Mr. Whealan was discussing inequitable conduct litigation risks does not detract from a prosecutor having an eye on litigation with every move made.

    The BPAI is lawyering up now. Has anyone heard if OED is doing something similar?

    I believe the PTO has become sinister in their quest for reducing filings. I see absolutely no evidence they are operating from a perspective of good faith, as Ender pointed out.

  27. “Ender (and I in response) was discussing inequitable conduct risks stemming from the OED action. The OED has not, in the past, been policing the vast majority of poor patentability arguments and won’t start now. There’s no slimy or slippery slope here. None.”

    The patentability arguments were never a required part of a required submission in the past. The ESD requires an applicant to make proper patentability arguments. A failure to make such an argument would be a violation of the ESD requirements.

    This is different from the current situation. There is no requirement that the applicant and attorney have carried out a complete examination and make a complete analysis of patentability. Therefore, the failure of the applicant to know about a particular reference cannot be inferred to be bad faith, unless the applicant was the author or was made aware of the reference by a search in a related case. In contrast, if an applicant fails to cite such a reference in an ESD, the USPTO can presume such a failure to be bad faith.

    Also, under the current rules, when an Examiner makes a rejection, an applicant can just attack the rejection or why the cited part of the reference does not teach or suggest the invention. Although it is often wise to argue why a claim is patentable over the reference based on an analysis of the entire reference by the applicant, an applicant is not required to make such an analysis and point out where a reference does in fact teach various elements of the applicant’s claims.

    And this goes back to why the ESD requirements violate 35 USC 102: based on stated USPTO interpretations of the ESD rules and the duty of candor rules, the ESD requirements effectively shift the burden of examination from the USPTO and onto the applicant.

  28. “What is to prevent the USPTO from always assuming bad faith if an ESD does not meet its standards, whatever they may be?”

    Nothing. However, past history suggests that the USPTO will not. Crappy arguments are made all the time and, if such were sufficient to refer to OED, the OED would be flooded. It isn’t.

    The USPTO officials can bluster all they want about bad faith, but those were mere arguments in support of the rules–not an indication of intent to change the way they refer cases to the OED.

  29. “Good faith failures to do a proper analysis are, by definition, not done with the intent to deceive and therefore cannot be the basis of inequitable conduct. I recall the OED talking about bad faith failure to read each document submitted, but nothing about what you suggest. Please provide a cite.”

    How do you prove “good faith”? What’s the incentive for the USPTO to ever assume “good faith” if it disagrees with an ESD submission? What is to prevent the USPTO from always assuming bad faith if an ESD does not meet its standards, whatever they may be?

    Given recent pronouncements by USPTO officials that indicate that the USPTO believes that: (1) virtually all IDS’s with more than 21+ references are bad faith filings, (2) virtually all applications with 26+ claims are bad faith filings, (3) virtually any continuation beyond the 2nd continuation is a bad faith filing, it would seem that the USPTO is on record as presuming bad faith in a lot of circumstances.

  30. “Then why did Solicitor Whealan acknowledge that no one would want to submit an ESD due to inequitable conduct issues?”

    Whelan was discussing inequitable conduct litigation risks, which are always there and which are the reason why no one would file an ESD absent exceptional circumstances.

    Ender (and I in response) was discussing inequitable conduct risks stemming from the OED action. The OED has not, in the past, been policing the vast majority of poor patentability arguments and won’t start now. There’s no slimy or slippery slope here. None.

  31. The withdrawn motion was for lack of jurisdiction and a 12(b)(6). Yeah, I guess you might as well withdraw a motion for failure to state a claim after you show up in court acknowledging jurisdiction and an injunction has issued against you.

  32. As a final matter it must be borne in mind that the term regulatory, as in regulatory agency, presupposes action. Therefore prohibition is not regulation. It is simply inimical that the USPTO could prohibit anything. Therefore, Mr. Whealan’s contention that no one would want to file an ESD is evidence that the USPTO is attempting to prohibit an act. This is beyond the power of any reguglatory agency, becuase the concept of non-action is not regulatory in nature. Prohibitive acts MUST be by act of Congress only. The essence of the United States of America is that one may do what ever one wished unless prohibited. Prohibition can ONLY be done through legislation and NOT regulation. Otherwise, we have a autocratic government.

  33. Johng:
    There is a Federal Circuit case that holds to the contrary. In fact the case stands for the fact that unintentional gross misrepresentation of a reference is not grounds for inequitable conduct, because the examiner has an opportunity to check the argument against the reference. Unlike the McKesson court the Fed. Cir. in this case didn’t think examiners were dolts, i.e., the court thought that the examiners are conscientious and thoughtful members of society.

  34. “You just have to clear the very low hurdle of submitting them in good faith.”

    Then why did Solicitor Whealan acknowledge that no one would want to submit an ESD due to inequitable conduct issues? Do you understand the law better than he? If yes, could you have the “good faith” caveat published in the Federal Register? Additionally, when I read 37 CFR 10.18(d), I see no safe harbor for “good faith” – the regulated standard is very different than what you suggest, and the quagmire caused by the ESD rules is much deeper than you may understand or admit.

    “If you want all your claims examined up front, you can have it done, but it’s going to cost you, you’re going to have to do some work, which in the current law of inequitable conduct, nobody’s going to want to do.”

  35. I dissagree that there is no slippery slope introduced with an ESD. It may not be as slippery as my statements suggest, but it remains slimey.

    The idea that we are moving from a reactionary stance to a proactive one bothers me to no end.

  36. Just waint until the depositions. When it is realized than any member of the USPTO can be subjected to judicial scrutiny, they will understand that there are consequences for their actions. Remember, the Constitution is a document of self-defense against government abuse. It is imperative that there be individual accountability on the part of the operatives of the USPTO. Otherwise, the Constitution is nothing more than a wish list.
    What amuses me is that we have been fighting this fight ever since the first war of secession, which we refer to as the revolutionary war. Remember that it was international businesses that prompted King George to suppress the rights of our forefathers. While our colonial ancestors fired bullets at the soldiers of King George it is necessary to remember that it was international business which the colonists were fighting, i.e., the real parties in interest.
    The more things change, the more they stay the same.

  37. “It would appear that any time the examiner disagrees with an assessment provided by an applicant in an ESD, any amendment may be viewed as a lack of candor and/or an attempt to mislead the examiner”

    There’s no slippery slope here. We make arguments/amendments all the time that are rejected by examiners. You don’t have to get it right. You just have to clear the very low hurdle of submitting them in good faith. If someone hasn’t figured out how to do that before the ESD rules kick in, the problem isn’t the ESD rules.

  38. “If the Examiner finds flaws in the analysis regarding patentabiilty, according to OED, this would be a violation of the applicant’s and attorney’s duty of candor. Therefore, on the basis that the applicants and attorney had committed inequitable conduct, the Examiner can indicate that the case should go abandoned.”

    Good faith failures to do a proper analysis are, by definition, not done with the intent to deceive and therefore cannot be the basis of inequitable conduct. I recall the OED talking about bad faith failure to read each document submitted, but nothing about what you suggest. Please provide a cite.

  39. It would appear that any time the examiner disagrees with an assessment provided by an applicant in an ESD, any amendment may be viewed as a lack of candor and/or an attempt to mislead the examiner, unless the disagreement is appealed and the examiner is reversed. Thus, any such discrepancy should/will be appealed. If the examiner is affirmed, the case goes abandoned and the applicant/representative may be subject to OED action.

    Why would anyone amend in this situation when doing so would be viewed as an admission of guilt?

  40. “The Examiner is not examining patents and references, the Examiner is merely determining whether the applicant’s analysis of patentability is accurate and meets the MPEP standards and the additional ESD standards.”

    Please explain how the examiner can assess the accuracy of the ESD analysis without doing his or her own examination on the merits. Do they hold the paper up to the light as if checking a watermark in a hundred dollar bill?

  41. “The fact that the examination will be much easier doesn’t mean there won’t be any examination. After all, the examiner is free to reject (and probably will) the analysis of most applicants. Of course, I’m sure your ESD documents would be flawless and there truly would be nothing for the examiner to do, but agree. But, prior to that agreement, the examiner must consider the merits, which is *GASP* an examination!”

    If the Examiner finds flaws in the analysis regarding patentabiilty, according to OED, this would be a violation of the applicant’s and attorney’s duty of candor. Therefore, on the basis that the applicants and attorney had committed inequitable conduct, the Examiner can indicate that the case should go abandoned.

    The Examiner is not examining patents and references, the Examiner is merely determining whether the applicant’s analysis of patentability is accurate and meets the MPEP standards and the additional ESD standards.

  42. “Why? According to the USPTO, the ESD analysis must at least meet the requirements for examination in the MPEP and requires additional analysis as well. So the applicant has already done the examination.

    What examination is there left for the USPTO to do? All that is left for USPTO is to decide if the applicant has met the ESD requirements.”

    And the applicant can never know beforehand whether or not he has met (or even can eventually meet) the “search results” requirements:

    FR 46800

    “If the preexamination search is poor, then applicant runs the risk that the preexamination search or the examination support document will be deemed insufficient.”

    FR 46804

    “Simply because the Office knows of a closer prior art reference (that is not applicant’s own work) than the prior art cited by the applicant is generally not enough to hold a preexamination search insufficient.

    An examination support document could be deemed insufficient based on an insufficient search.

    Any applicant who disagrees with a requirement for an examination support document or the holding that an examination support document or preexamination search is insufficient may file a petition under § 1.181. As provided in § 1.181(f), the mere filing of a petition will not stay any period for reply that may be running against the application. The Office will make every effort to decide petitions in a timely manner.”

  43. “What examination is there left for the USPTO to do? All that is left for USPTO is to decide if the applicant has met the ESD requirements.”

    The fact that the examination will be much easier doesn’t mean there won’t be any examination. After all, the examiner is free to reject (and probably will) the analysis of most applicants. Of course, I’m sure your ESD documents would be flawless and there truly would be nothing for the examiner to do, but agree. But, prior to that agreement, the examiner must consider the merits, which is *GASP* an examination!

  44. “Ender: Requiring an ESD analysis prior to examination is not directly in conflict with 102, 131 or 132. The USPTO is going to win, if those are the arguments GSK presents.”

    Why? According to the USPTO, the ESD analysis must at least meet the requirements for examination in the MPEP and requires additional analysis as well. So the applicant has already done the examination.

    What examination is there left for the USPTO to do? All that is left for USPTO is to decide if the applicant has met the ESD requirements.

    And, according to OED, if the applicant has failed, the applicant’s attorney is potentially subject to disciplinary action.

  45. “Ender: Requiring an ESD analysis prior to examination is not directly in conflict with 102, 131 or 132. The USPTO is going to win, if those are the arguments GSK presents.”

    Why? According to the USPTO, the ESD analysis must at least meet the requirements for examination in the MPEP and requires additional analysis as well. So the applicant has already done the examination.

    What examination is there left for the USPTO to do? All that is left for USPTO is to decide if the applicant has met the ESD requirements.

    And, according to OED, if the applicant has failed, the applicant’s attorney is potentially subject to disciplinary action.

  46. “Instead, the main problem I see is that imposition of the ESD requirement (or any similar burden shifting from Office to Applicant) requires practitioners to practice on behalf of two masters (i.e., the client and the office) in a quasi-adversarial setting.”

    What about the FDA drug approval process? Any problems with the drug has to be disclosed. That’s a two-master situation: client big pharma vs. FDA.

    Now drugs and patents aren’t the same. Sure, the public has a very strong interest in avoiding risky drugs. But the public also has a strong interest in avoiding overly broad patents. I don’t see a court feeling bad for applicants who want the extraordinary benefit of the exclusive right, but who don’t want to have to admit what’s already been invented and who don’t want to have to show the merit of their invention.

  47. Ender: Requiring an ESD analysis prior to examination is not directly in conflict with 102, 131 or 132. The USPTO is going to win, if those are the arguments GSK presents.

  48. Markman – I did not link to that “article” by the so-called patent troll. Someone named “curious” did that.

  49. “I received two final office actions dated Nov. 1, and another dated Oct. 29. I suspect there may be a pattern here, and it doesn’t smell good.”

    Another interesting question is how many NOAs were issued prior to Nov. 1, and thus taking those claims off the table for 5/25 and etc. I spoke with an examiner on one case mid-Oct., who said an NOA should be out in a week – - I’m still waiting… Also of note: when we asked for the NOA, he asked if it had “something to do with these new rules.” After we answered in the affirmative, he noted “oh, yeah, I heard something about those, but I skipped that meeting.”

  50. The few Examiners I talked to about the new rules in early October told me that they knew very little about the rules and had not been trained. One had been proposing a restriction requirement, and when I asked if I elected by phone if I would received a FAOM before November 1, she said she thought so. I asked her if she knew why I asked, and she said no. In late October, I asked an Examiner if he knew the rules were being challenged in court, and he had not. Based on my own limited empiracle data, I don’t think most Examiners were manipulating the system to wait for the new rules — I think most of them had no clue about the timing or impact.

  51. Gee, I wonder if there’s another “smoking gun” memo from Peggy Focarino about holding Final Office Actions until after Nov. 1. Or maybe the PTO will learn from its “mistakes” and stop putting these things in writing.

  52. I received two final office actions dated Nov. 1, and another dated Oct. 29. I suspect there may be a pattern here, and it doesn’t smell good.

  53. “Per agent007 – “…consider a pro se Applicant, is there an analogy for requiring an Applicant for patent to preemptively gut the patent as a condition for grant?”

    Sure, imposing additional fees for additional claims.

    If every dollar is critical for some applicants and not for others, then the same invention which may require 100 claims for a small or medium sized entity (SME), may only get 20 claims for the hypothetical pro-se. A later applicant can get critical narrowing, but commercially important, claims and prevent the pro-se from actually practicing their most valuable embodiments.

    In theory the pro-se could take a loan or get investors or some such and pay the fees, just as larger applicants can file ESD’s. It is a weak analogy, but on the face of it, they are both quasi-limits on claim numbers based on administrative rules.”

    My hypothetical scenario wasn’t sufficiently clear — the situation I had in mind was where all applicants were required to file ESD like documents (e.g., as allowed by the recent House bill). I regard the filing of an ESD (under current law) as “gutting” the case, to a much greater extend than limiting the number of claims could possibly be.

  54. Thank you jwint – focusing on the day to day so much, sometimes it is hard to see ESD’s as anything other than a requirement to avoid.

    Per agent007 – “…consider a pro se Applicant, is there an analogy for requiring an Applicant for patent to preemptively gut the patent as a condition for grant?”

    Sure, imposing additional fees for additional claims.

    If every dollar is critical for some applicants and not for others, then the same invention which may require 100 claims for a small or medium sized entity (SME), may only get 20 claims for the hypothetical pro-se. A later applicant can get critical narrowing, but commercially important, claims and prevent the pro-se from actually practicing their most valuable embodiments.

    In theory the pro-se could take a loan or get investors or some such and pay the fees, just as larger applicants can file ESD’s. It is a weak analogy, but on the face of it, they are both quasi-limits on claim numbers based on administrative rules.

  55. Andrew:

    “The only way the USPTO used the public comments was to try to identify loopholes in the rules they published, not to actually address the concerns of the public.” I AGREE

    ” And the second set of rules, the rules published on August 21, 2007 that were to go into effect on November 1 were substantially different from the rules that the public was allowed to comment on, but would have still been disapproved by 95% of the public had they been allowed to comment on the rules.” I AGREE

  56. “For example, the 5/25 claim rule would not be a problem if…”

    Given the construct of Title 35 as a whole, I am hard pressed to identify any persuasive argument(s) that can be presented to demonstrate that a 5/25 limitation, even without an ESD requirement, is in accordance with controlling law.

  57. “but adding the ESD to the current system is nothing but punishment.”

    Exactly.

    In general, you can’t just look at the new rules in isolation from how they were created, why they were created, how public input on the rules were treated, how the USPTO has implemented related rules, how the rules interact with existing rules and how the rules interact with each other.

    For example, the 5/25 claim rule would not be a problem if the USPTO did not also add rules: (1) limiting continuations, (2) allowing voluntary divisionals only if the USPTO approves an SRR, and (3) that allow the USPTO to combine applications filed separately.

    Also, if the USPTO has been found to comply with “due process” with respect to how these rules were created, then effectively “due process” is a worthless idea. Yes, the USPTO published a first set rules for public comment. However, the public comments were over 95% negative. The only way the USPTO used the public comments was to try to identify loopholes in the rules they published, not to actually address the concerns of the public. And the second set of rules, the rules published on August 21, 2007 that were to go into effect on November 1 were substantially different from the rules that the public was allowed to comment on, but would have still been disapproved by 95% of the public had they been allowed to comment on the rules. How by any reasonable definition was this “due process?”

  58. The article that metoo linked to above isn’t actually an article — it is an opinion blurb by the chairman of TPL Group, a notorious patent troll.


  59. “To create, much less file, such a document is not a real choice, as claimed.”

    Within the circle of patent practitioners, that’s a common, justified belief. I wonder, however, how a court will view the ESD requirement and whether, if at all, the court will have pity on the practitioner or applicant who has to admit what the prior art teaches and has to specifically justify patentability. Sure the ESD has *tons* of problems that we’d rather not deal with, but I think there’s a real chance the USPTO will eventually successfully require applicants to file ESD documents. After all, a primary justification for not filing an ESD is to avoid creating estoppel. Is THAT going to be a sympathetic argument? And is the added cost really that big of a deal to a company spending billions in R&D?”

    Actually, avoiding estoppel isn’t the primary difficulty I see with ESD document, although estoppel is an important part of the picture.

    Instead, the main problem I see is that imposition of the ESD requirement (or any similar burden shifting from Office to Applicant) requires practitioners to practice on behalf of two masters (i.e., the client and the office) in a quasi-adversarial setting.

    I would be surprised if there is another group of legal specialists that are presently operating in this kind of ethical bind. For example, are tax lawyers obligated by the IRS to audit/investigate client’s finances as if they were actually IRS auditors, and then publish their opinions and judgement calls in public records?

    Even if we remove practitioners from the picture, and just consider a pro se Applicant, is there an analogy for requiring an Applicant for patent to pre-emptively gut the patent as a condition for grant?

    I could acccept the ESD only if it were part of a systemic reform to reward pre-emptively defining the invention over the art (which is not necessarily a bad idea), but adding the ESD to the current system is nothing but punishment.

    That the PTO knows this full well, and proceeded with it anyway, is, in my mind, proof of actionably bad faith.

  60. For Harry Moatz’ presentation on the OED requirements relating to all submissions, see:

    /media/docs/2007/10/MoatzHarry_presentation.pdf

    We won’t even mention the fact that, as emphasized in slides 25 and 26, the duty of disclosure is continuing. This was not much of a problem, when you could just file the new reference as an IDS. However, add the ESD to the picture, and it would appear a new ESD would be required each time the applicant or attorney becomes aware of a new reference.

  61. “Sure the ESD has *tons* of problems that we’d rather not deal with, but I think there’s a real chance the USPTO will eventually successfully require applicants to file ESD documents.”

    The ESD requirement effective eliminates first part of 35 U.S.C. 102: “A person shall be entitled to a patent unless —” By shifting the analysis of the references onto the applicant and requiring that the applicant provide an analysis of patentability that exceeds the requirements placed on Examiners, the applicant effectively must prove patentability in the ESD”

    Because the applicant has already been forced to do the examination, there is nothing left for the Examiner to do other than to determine if the applicant has violated the ESD rules. Therefore, the ESD requirement effectively eliminates 35 U.S.C. 131 as well:

    “The Director shall cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director shall issue a patent therefor.”
    [Assuming of course, that 131 refers to the USPTO conducting the Examination instead of the Applicant conducting the Examination, an assumption confirmed by decades of patent practice and implied by 35 U.S.C. 132.

    The ESD requirement is also contrary to 35 U.S.C. 132.

    “Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application”

    Based on the requirments of an ESD and how the OED is treating any violation of the ESD requirements, the only examination is made by the Applicant, so there are no rejections. If the Examiner finds a violation of the ESD requirements, as far as I can tell based on the OED’s interpetation of the rules, the entire application should be abandoned due to inequitable conduct.

    The ESD requirements as intrepreted by OED effectively turn examiners into beat cops for OED to find ESD violations.

  62. update on first page of pto website

    Additionally, on November 6, 2007, a notice entitled “Clarification of the Transitional Provisions Relating to Continuing Applications and Applications Containing Patentably Indistinct Claims” will publish in the Office Gazette (OG). This notice was originally posted on the USPTO’s Web site on October 10, 2007, but because of the normal three to four week publication delay for OG notices is now just appearing.

  63. “To create, much less file, such a document is not a real choice, as claimed.”

    Within the circle of patent practitioners, that’s a common, justified belief. I wonder, however, how a court will view the ESD requirement and whether, if at all, the court will have pity on the practitioner or applicant who has to admit what the prior art teaches and has to specifically justify patentability. Sure the ESD has *tons* of problems that we’d rather not deal with, but I think there’s a real chance the USPTO will eventually successfully require applicants to file ESD documents. After all, a primary justification for not filing an ESD is to avoid creating estoppel. Is THAT going to be a sympathetic argument? And is the added cost really that big of a deal to a company spending billions in R&D?

  64. Dear E-M Gill. With respect to a good faith attempt at improving the Office, I certainly hope so. If, for example, you look at the structure and function of the ESD, it is hard to believe. The ESD is an impossible, ill-conceived, potentially suicidal requirement that strains credulity. I honestly don’t believe it was developed in good faith. To create, much less file, such a document is not a real choice, as claimed. But I certainly back any good faith effort at improvement, because the Office is so critically important to our lives, to the extent that it functions well, and produces strong patents. The framework is important, but the only really successful way to have high quality patents is to give the examiners enough resources, time and encouragement to function. For the honest concern voiced in your statement, I congratulate you.

  65. metoo: I know. But I assume that the internal deliberation is precisely what Tafas et al want from Dudas and Doll (as opposed to their minions) — you do not need to have Dudas and Doll appear personally to answer factual questions. Absent some good showing that (1) the information can be obtained only from Dudas and Doll personally, and (2) at the same time, is not part of privileged internal PTO deliberations; I doubt this subpoena is going to stick.

  66. There are at least four (4) exceptions in which discovery beyond the administrative record is permitted: (a) if there is a failure by the agency to explain the administrative action in an adequate manner so as to frustrate effective judicial review; (b) to determine whether the agency considered all the relevant factors; (c) where the agency may have deliberately or negligently included or omitted information from the record that may have been adverse to its final rule-making decision; or (d) where there is a strong showing of bad faith or improper behavior on the part of the agency. It is unclear which of these factors plaintiffs may be focusing on here and thus difficult to handicap whether these depositions will ultimately be allowed by the Court.

  67. The shoddy way the rule changes were enacted and the poor quality of their content gives high suspicion that the process was seriously flawed at the top. If these two didn’t know, they should have known. They are ultimately responsible. This looks like a way to get to the bottom of the situation in a direct manner. Harassment?? We are being harassed!! Finally, it looks like these guys will be required to explain their positions!

  68. I’d like to ask them how many Final Office Actions were issued in October 2007. We recently got one dated November 1, 2007 and I have to wonder whether the USPTO told its examiners to hold any final office actions in families where one RCE had already been filed.

  69. Re the Dudas et al. depos, I don’t see why there can’t be inquiry regarding specifically how the rules will solve the PTO’s stated problems that “necessitated” the rules – and I would look forward to having Dudas et al. have to answer follow up questions on those points, and not be able to just rely on their canned talking points.

    On another point – has anyone seen a transcript of last week’s hearing? It would be helpful to those of us who are contemplating an amicus at the summary judgment stage.

  70. TJ, the “deliberative process privilege” is rather limited in some respects. For example, it will not protect factual information, nor will it protect anything after the final rules were decided upon (i.e., it only protects “pre-decisional” matters).

  71. Patent leather: yes, but “the USPTO’s decision making process when the rules were enacted” are privileged. NLRB v. Sears, Roebuck & Co., 421 U.S. 132 (1975).

  72. “(2) The DOJ will certainly move to quash this deposition and may well be successfull unless Tafas can show that this will be anything more than harrassment. ”

    Why would this be harrassment? Aren’t the facts surrounding the USPTO’s decision making process when the rules were enacted a factor in whether the rules are “abitrary and capricious?”

  73. I believe that subcommittee was created during the last Congress (i.e., in 2005). Thus, it is not that surprising that it was disbanded after the Democrats gained control of the Senate.

  74. There is information that they would be the best source of, and thus should provide, in the dep. Hopefully the court will not make Tafas tell them what they should know – as then they can prepare.

  75. (1) The two-page notice of deposition gives no indication of the content of the deposition. Dudas is a named defendant.
    (2) The DOJ will certainly move to quash this deposition and may well be successfull unless Tafas can show that this will be anything more than harrassment.

  76. Dennis, any idea what Dudas and Doll have been subpoenaed to testify about? I would assume pretty much anything of interest would be covered by the deliberative process privilege. You don’t get to take the agency head’s depo every time a regulation is challenged, or Secretaries would never do anything except give depos.

Comments are closed.