Tafas v. Dudas: PTO’s Proposed Limitations on Continuations and Claims are Invalid

In a twenty-six page opinion, District Court Judge Cacheris has granted GSK’s and Tafas’s Motions for Summary Judgment — finding the PTO’s proposed limitations to the number of continuation applications and claims per patent to be improper extensions of PTO authority:


“Because the USPTO’s rulemaking authority under 35 U.S.C. § 2(b)(2) does not extend to substantive rules, and because the Final Rules are substantive in nature, the Court finds that the Final Rules are void as ‘otherwise not in accordance with law’ and ‘in excess of statutory jurisdiction [and] authority.’ 5 U.S.C. § 706(2).”

The documents:

==== Discussion ====

PTO Has No Substantive Rulemaking Authority:  35 U.S.C. § 2 provides various specific powers to the PTO. However, Section 2 does not provide the PTO with any “general substantive rulemaking power.” According to the Court, “Section 2(b)(2)’s authority is limited to rules governing the ‘conduct of proceedings’ before the Office, the USPTO does not have the authority to issue substantive rules, and it does not have the authority to make substantive declarations interpreting the Patent Act.”

Substantive Rulemaking is Broadly Defined: The district court defines a “substantive rule” as any rule that “affect[s] individual rights and obligations” (Quoting Chrysler Corp. v. Brown, 441 U.S. 281 (1979))

PTO’s Proposed Rules are Substantive: Applying the broad definition of substantive, the court then easily found that the proposed rules are “substantive rules that change existing law and alter the rights of applicants such as GSK and Tafas under the Patent Act.”


“The 2+1 Rule and the 5/25 Rule, which limit continuing applications, RCEs, and claims, and the ESD requirement, which shifts the examination burden onto applicants, constitute a drastic departure from the terms of the Patent Act as they are presently understood. By so departing, the Final Rules effect changes in GSK’s and Tafas’s existing rights and obligations.”

Limits on Continuations are Substantive: In particular, the court found that the continuation rule is runs contrary to the law because it imposes a “hard limit” that “deprives applicants of their valuable rights under 35 U.S.C. § 120 to an unlimited number of continuation and continuation-in-part applications as a matter of right.” Likewise, the limitations on RCE filings is a “clear departure from the plan language” of 35 U.S.C. § 132 (the PTO “shall … “at the request of the applicant …”).

Limits on Claims are Substantive: For over eighty years, the courts (CCPA) have blocked the PTO from placing any “mechanical limits” on the number of claims. Although the PTO may object to duplicate claims, the court found that the law prevents any strict limit on the number of claims.  The Court saw the ESD requirement substantive because it shifts the burden of examination from the PTO to the Applicant:


[T]he ESD requirement changes existing law and alters the rights of applicants under the current statutory scheme by shifting the examination burden away from the USPTO and onto applicants. . . . [T]he Federal Circuit has stated that applicants have “no duty to conduct a prior art search” and “no duty to disclose art of which an applicant could have been aware. . . . It is only after the USPTO makes a demonstration of unpatentability that the burden shifts to the applicant to rebut that showing. . . .  Thus, by requiring applicants like GSK and Tafas to perform prior art searches and by shifting the examination burden away from the USPTO, the ESD requirement manifestly changes existing law and alters applicants’ rights under Sections 102, 103, and 131.”

Holding: “Because the USPTO’s rulemaking authority under 35 U.S.C. § 2(b)(2) does not extend to substantive rules, and because the Final Rules are substantive in nature, the Court finds that the Final Rules are void as “otherwise not in accordance with law” and “in excess of statutory jurisdiction [and] authority.” 5 U.S.C. § 706(2).

From the order:  “Defendants Jon W. Dudas and the United States Patent and Trademark Office and their agents, servants, and employees are permanently enjoined from implementing the Final Rules”

Notes:

  • The court made no attempt to carve-out portions of the rules that may be legal.
  • Although numerous other issues were raised by the parties and amici, the Court decided only on the substantive ground.
  • Weak points in the decision: TBD.

189 thoughts on “Tafas v. Dudas: PTO’s Proposed Limitations on Continuations and Claims are Invalid

  1. Slone, that was one of the things I addressed in my long post. They hardly “shift” any burden to the applicant. What they do is create additional burden out of thin air and place it squarely on the applicant. The burden on the office is not diminished in the least. We still have to do a complete search, the hope is however that there will be enough searching between the both of them to have found the very best art possible. That does not mean that the examiner will not have a burden to search the deps should there be no art of record that already addresses it in full, nor even does it take away the burden to search it to make sure there is not better art to address it. In short, it shifts 0 burden. The burden placed on the applicant is 100% extra burden and is of his own making. Overall, you have no grounds to stand on in re that subject just as the judge doesn’t. It’s as bogus as the rest of the slew of easily shot full of gigantic holes fluff the judge wrote. I don’t have time to write it up today.

  2. e#6k,

    You may wish to consider reading p. 18 et seq. of the opinion wherein numerous examples abound.

    Bear in mind that even if the rules had been found to be “procedural”, they would nevertheless still be subject to the basic truism that a federal agency may not promulgate rules that contradict laws enacted by Congress. Using the “5/25″ case as an example, the court quite correctly noted that the ESD requirement contravened the statutes by, inter alia, shifting the statutory burden of proof from the USPTO to the applicant.

  3. “To take this judge’s viewpoint is to say that half the rules we have now are bogus.”

    Which ones, e#6k? (That’s not a rhetorical question, really.) I just scanned through Part 1 of 37 CFR. Yes, there are some “reporting requirements” (56, 105) that can result in abandonment, or invalidity, and there are certainly procedures before the office that can do the same, but there are not in my view:

    1) rule sections not founded in law which extinguish a patent right, such as final Rule 78, 114; and

    2) rule sections which shift the burden of proof of patentability (or add a substantive burden to the applicant beyond that of the patent application), such would have been done by the ESD.

    Remember, the Patent Reform Act of 2005 (H.2795, which did not become law) had this provision:

    Sec. 123. Limitations on continuation applications

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

    Without that permission (“The Director may…”; and I liked the safeguard clause at the end which was not reflected in the rules’ “could not have been submitted” standard), the PTO was apparently, by the final Claims and Continuations Rules, acting like a rogue agency when it tried to regulate specifically what Congress had not authorized the Director to do.

  4. I just wrote a big long detailed re, but I’m going to just cut it down to: No. The judge wrote flu ff. If you recieved an OA that was analogous in terms of substantial, relavant material presented you would promptly sht a brick, shout about how you ha te examiners and then lay into them with an 50 page response addressing only the cursory considerations being overlooked. Then again, if you’re really good you might sum it up as: The judge hasn’t pointed to any substantial matter in the new rules, only collateral substantive effects which are permitted. The judge even admits this on several occasions. He then talked about some substantial departures from the accepted meanings of the law and how he feels that doing such a thing magically makes a rule contain substantive matter or be substantive in nature, but accepted meanings to do not stop an agency from enacting 100% purely complimentary to the law procedural rules.

    To take this judge’s viewpoint is to say that half the rules we have now are bogus.

  5. “…nobody is yet to show any substantive sections in the new rules.”

    I believe it fair to say that the District Court Judge identified numerous such instances, which is precisely why the USPTO did not prevail. Moreover, even if one gets past the terms “substantive” and “procedural”, the fact remains that in neither circumstance is a federal agency permitted to engage in rulemaking wherein the resulting rules contradict laws duly enacted by Congress.

  6. Because Jeff, nobody is yet to show any substantive sections in the new rules. If you can show them to us all we’d love it.

    Just visiting, you know you seem to be right. I personally was unaware of that section, and while I’ve only sent out a very few first action finals (1-2?) since I generally prefer to give them another shot (which at this point the “another shot” is usually for giggles, they’re locked in by the art) so they don’t cry, I may have sent one out improperly according to that. Of course we’ll withdraw finality if it’s improper according to our little playbook. I do have to wonder though, that seems to limit first action finals to instances where the applicant stands by his guns and doesn’t amend after final but files an RCE anyway. Which, if true, I have to wonder why they didn’t just say that at the beginning instead of saying it broadly and then narrowing it down to that by excluding everything else. Still, something seems fishy about that interpretation of the portion you cite.

  7. In hindsight, the Court found the rules quite clearly unsustainable, but I’m left wondering how the Under Secretary and his General Counsel could have reasonably concluded the rules should be promulgated. Why shouldn’t heads roll for this arrogant exercise of ultra vires power?

  8. Dear bierbelly,

    Wilmington?, or there abouts?

    After my wife and I drop our son off at college near Philly, we usually drive down and get on Rt.13/40 then take the right split on 40 to Elkton to fill up the trunk at Jayco, then we drive down to the Tap Room in Chesapeake City for crabs – since the 60s I’ve been going back to Maryland a couple times a year for crabs. Maryland crabs, for those who don’t know, are strongly addictive, and they require large quantities of beer while being eaten.

    Now I know how you got your belly (;o).

    The last time we went to Chesapeake City we bought crabs at the Tap Room to take back to the Big Apple and we ate at Chesapeake Inn to celebrate my birthday. Someone at the Inn mention that she thought booze was less expensive in Delaware than Maryland, which surprised me.

    So, where’s the better deal on a trunk load of spirits, DE or MD?

  9. “Anywaay, since they closed “Gablers” for crabs, my wife and I discovered the many wonders of Chesapeake City, Maryland:

    Bed & Breakfast right on the canal:
    Ship Watch Inn, Chesapeake City: See ”

    Aha! JAOI, you must be up in my neck of the woods. I’m in N. DE.

  10. Hey, JD. AS for the suggestion, like I said, I have no problems with it. Just pointed out a potential problem for the outside. Just get the 10th floor to agree to them all & we are set to go :)

    As for the Wild Turkey, I realized by misstatement after I submitted it (meant to specify WT, not as an alternative), but didn’t want to put another post up correcting it. Was distracted by Nats going 3-0.

    thanks,

    LL

  11. “That’s a really sleazy tactic if you refuse to enter an amendment without an RCE and then give a first action final when you do enter it”

    It’s not just sleazy…

    From MPEP 706.07(b)

    However, it would not be proper to make final a first Office action in a continuing or substitute application >or an RCE< where that application contains material which was presented in the earlier application after final rejection or closing of prosecution but was denied entry because (A) new issues were raised that required further consideration and/or search, or (B) the issue of new matter was raised.

    On rare occasions I have had examiners make such actions final, but even in those cases, the examiner has always agreed to drop finality when asked.

  12. Dear JohnDarling,

    As you probably know, Virginia and DC are expensive compared to Maryland. Early Times ran $12.99/1.75L last time I did a rum run to Maryland. I usually shop Jayco or Midway on Route 40. I’ve been rum-running to Maryland since the 60s after completing my Army service teaching basic electronic for two years at Aberdeen Proving Grounds. Maryland is a beautiful state, well, to be fair, they all are, but New York State, of course, is tops.

    I’ve always wondered if it was illegal to buy a Town Car trunk full of booze in MD and transport it to the Big Apple?

    Anywaay, since they closed “Gablers” for crabs, my wife and I discovered the many wonders of Chesapeake City, Maryland:

    Bed & Breakfast right on the canal:
    Ship Watch Inn, Chesapeake City: See
    http://www.shipwatchinn.com

    Fancy dining at:
    http://www.chesapeakeinn.com
    Chesapeake Inn has some magnificent ship models and a fantastic saltwater aquarium. Ask for their $42 assorted appetizer samplers (discontinued, but they will accommodate) – well worth it, enough for two for dinner; and their wine specials can’t be beat.

    Great Maryland crabs at:
    link to taproomcrabhouse.com
    Crabs all year round!

    It is worth the trip – Enjoy life every day; life is, after all, a miracle.

    PS: Careful of speeding in Maryland; Maximum speed limit on most highways in the State of Maryland is 55 miles per hour.

  13. JAOI,

    I’m gonna pick up some Early Times tomorrow after work and toast you as I’m watching Nats-Cards with my wife. (She’s a Cards fan. But I love her just the same.)

    JD

  14. Dear Messieurs Lazarus Long & JohnDarling,

    Re:
    “Bourbon is OK. Personally, if I want liquor, I’d rather go for the Wild Turkey 101. :)”
    and
    “You should try the Wild Turkey Rare Breed. Very good.”

    Sure, who wouldn’t, but most inventors can’t afford the expensive stuff. For us clients, we are lucky to have Early Times. Rare Turkey for youse outside practitioners— I ain’t got no problem with that, youse guys work too hard not to enjoy the finest life has to offer. Notwithstanding the Early Times hour, I hereby raise a toast to all outside patent attorneys (even those who represent the dastardly patent pirates (no.ót)).

    House patent counsel, on the other hand, can kiss my patoo… well I best leave well enough alone.

  15. “1. No reopenings, etc. is OK with me, personally. Rarely happened for me, anyhow.
    The issue I would have with it is that the applicant is the one that would get $crewed and the litigators benefit. After all, if a case is appealed & after a review (oft-times in view of arguments the lawyer/applicant never presented before) it is decided the only options are to go ahead to appeal with a loosing position or to issue a patent that would be invalid who would loose? Not the examiner or PTO. Probably not the lawyer prosecution the case. Just the applicant who has a patent that may not be valid. So, if it even challenged, their choice is to go to litigation with a possibly loosing position, or to file a reissue or re-exam. Again, the lawyers win ($$$) and the applicant/inventor looses.
    Not defending bad actions (they are a big drain on resources for both sides; though occasionally Spit does happen), just pointing out potential problem with your proposal.”

    No offense, LL, but clients can make the choice whether to appeal, or not, without help from the PTO. That’s why they hire patent attorneys. And they can make the decision whether to enforce the patent without the assistance of the PTO. If the patent is important, it will be put through it’s paces (e.g. a validity search and opinion) by people who know what they’re doing before it’s asserted. Granted, as we’ve seen lately, that process ain’t fool proof. :-) But it’s not any concern of the PTO.

    The issue here is: PTO (mis)management spent 120+ pages in the Federal Register b#tching and moaning about “applicants not coming to the PTO prepared to prosecute their application” and “applicants having to get it right the first time.” Well, that’s great. But PTO (mis)management’s position that applicants get one chance to get it right, but examiners get an unlimited number of opportunities to get it wrong has got to stop. This, “well, if you disagree with the examiner, just appeal or petition” BS from PTO (mis)management is garbage. They know darn well that those are not true remedies available to applicants.

    Although you may not re-open, David Boundy’s statistics (posted in another topic),that he obtained from a FOIA request, show that since about 1998, the number of cases that are re-opened in response to the filing of an appeal brief, has gone from a little less than 50% to more than 50%. MORE THAN 50% OF APPEAL BRIEFS RESULT IN RE-OPENING OF PROSECUTION! THAT IS DISGRACEFUL! And Mr. Love’s presentation to the AIPLA in May, 2007 confirms that. Of the more than 5,000 briefs filed between September, 2005 and May, 2007, more than half were re-opened.

    Wild Turkey 101 is bourbon. You should try the Wild Turkey Rare Breed. Very good.

  16. Has anyone else considered that Dudas may have done this to try to get substantive rule making authority passed as part of the reform package?

    And, has anyone else thought that Judge Moore probably has her sights set on the Supreme Court? Her actions are all probably geared to trying to nosey up to the Republican party.

  17. JD, as for your 2 ideas:

    1. No reopenings, etc. is OK with me, personally. Rarely happened for me, anyhow.
    The issue I would have with it is that the applicant is the one that would get $crewed and the litigators benefit. After all, if a case is appealed & after a review (oft-times in view of arguments the lawyer/applicant never presented before) it is decided the only options are to go ahead to appeal with a loosing position or to issue a patent that would be invalid who would loose? Not the examiner or PTO. Probably not the lawyer prosecution the case. Just the applicant who has a patent that may not be valid. So, if it even challenged, their choice is to go to litigation with a possibly loosing position, or to file a reissue or re-exam. Again, the lawyers win ($$$) and the applicant/inventor looses.
    Not defending bad actions (they are a big drain on resources for both sides; though occasionally Spit does happen), just pointing out potential problem with your proposal.

    2. Bourbon is OK. Personally, if I want liquor, I’d rather go for the Wild Turkey 101. :)

    thanks,

    LL

  18. Lionel Hutz, regarding 1st action finals: the MPEP is clear that if an amendment is not entered “because it raises new issues that requires additional search and/or consideration” than the next action CAN NOT be made final. If you get one under these circumstances, cite the section of MPEP & bounce it back on the examiner.

    Now, if it was entered, or was not entered for a reason like adding extra claims, it CAN be made final on a 1st action.

    Personally, I always thought making a 1st action final a pretty lousy thing to do to the applicant, in general. The applicant paid for a new examination & should get their 2 “bites at the apple”. And that was always what I told my examiners. The exception being if there was nothing filed (more an issue with CON than an RCE). No amendments, no new arguments, no after-final to be entered. Then I would make it final. Those have been pretty rare.

    thanks,

    LL

  19. “It seems to me that someone claiming the grant of a public monopoly could be reasonably expected to (1) do their homework and (2) get their claim right the first time.”

    Big Hairy Rat, I think you want to make the U.S. the only country in the world where the inventors (or their agents) are tasked with examining their own inventions, as if inventing isn’t enough anymore to be worthy of reward… as if inventors are, can, or should be made to be examination savvy? Isn’t that a waste of American resources? Isn’t that what we pay Examiners for, and why we’ve concentrated so many resources and personnel at the USPTO?* What about the shared responsibility between citizen and government, where government actually performs a useful Constitutionally mandated function to facilitate and reward invention by the citizenry?

    Invention is good, Rat, and inventors are this country’s most valuable resource. And it’s good to have a functional USPTO that can examine applications just like the JPO or the EPO can, separating the wheat from the chaff, without having to rely on self-examination by patent applicants (who 90% of the time do not and cannot know the totality of the prior art… I speak from years of experience, not hypothesis). As a nation, and to promote the progress of science and the useful arts, we need expert Examiners and a USPTO management that wants to work and is capable of working. You’ve still got a wealth of talent in the corps, but they’re not being led. America needs people who are qualified at the top of the USPTO – not people who think they are qualified.

    P.S. Patents aren’t monopolies, and most people use “monopoly” as a pejorative term… though hopefully USPTO management doesn’t refer to patents in a pejorative way (“It is but an obfuscation to refer to a patent as ‘the patent monopoly’…”, 713 F.2d 782, n.3, 218 USPQ 698, n.3 (Fed.Cir. 1983); “[P]atent rights are not [even] legal monopolies in the antitrust sense of that word.” 725 F.2d 1350, 1367, 220 USPQ 763, 776 (Fed.Cir 1984), cert. denied; “Congress has provided that patents ‘shall have the attributes of personal property.’ 35 USC 261. The patent right, solely that of excluding others, is the fundamental element of all human rights called ‘property.’ The statutory, and therefore proper, characterization is not ‘patent monopoly’, but ‘patent property.’” 356 US 1, 10 n.8 (1958).)

    *dose of reality: there aren’t 5000 qualified patent searchers in the country that could conduct true patentability searches; there might not even be 500. So you can either bring 4500 (trained?) newbies on board on the outside and see what happens to patent quality, or use your 5000+ trained examiners. And if you bring the newbies on-board, well then why do we need to concentrate personnel and resources at the USPTO? We could just as easily bring on board 9500+ newbies, with the same affect on quality. Be wise, Rat.

  20. Did a bunch of posts on ths string disappear? Is Dennis tryng to get appointed to the Fed Cir?

    Dennis – you are tenured, it is ok to piss everyone off now, you cant be fired!

  21. The Examiner 6000 wrote

    “01/01 app files
    01/02 first office action issues (on overclaim using a standard chair to 102b the claims)
    06/02 applicant responds, overcomes standard chair by adding “a prong” limitation.
    08/02 final OA using a chair with a prong.
    02/03 applicant sends in AF finally gets close to claiming his invention, a chair with a prong, and ergonomic design.
    02/03 advisory
    02/03 RCE (disposal, but CASE DOES NOT DIE and continues needing examination)
    02/03 First action final using same refs as above, noting that the second reference has a line at the end talking about ergonomic design.”

    I have yet to encounter a jerk examiner who would give a first action final after an RCE. That’s a really sleazy tactic if you refuse to enter an amendment without an RCE and then give a first action final when you do enter it.

  22. “it is fact, applicant’s RCE 90%+ of finals”
    Got any proof of that? Me, I appeal 90%+ of finals.

    “It’s additive burden, not alternative burden for the agency.”
    Filing and considering IDSs are an additive burden, shouldn’t we get rid of those? I don’t hear the clamoring from the PTO for that one. BTW: I’m not sure what the big angst is over saying a response to an RCE is less of a burden than preparing a first office action. If you think it is most of the time, then I think you need to rethink your examination strategy. It was a minor, tangential point … but it seems to have struck a nerve … perhaps examiners are afraid that the PTO will change the rules of the game and give them less than a full count for first actions after an RCE and they are just praticing their response?

    “Goodness, stop acting like you’re a third grader and discuss the issue on the merits rather than some lame misconstruing thereof.”
    I respond to what you write, not what you should have written. Perhaps you can gain an understanding as to why it isn’t easy to write a patent specification that cannot be (substantively) changed once filed and will be subject to scrutiny by both examiners, competitors, and litigators for years to come. Miss a word or phrase something poorly and the whole application could become worthless. Now try to craft claims, every word of which will be even more scrutinized, without knowing exactly how those words might be construed in the future or how an examiner may construe the prior art (even the prior art you know about) or how a judge/jury might construe them based upon future case law you cannot know about. After you’ve done this a couple of times or a couple hundred times, you’ll realize that drafting perfect claims the first time around isn’t going to happen no matter how much additional burdens are placed on applicants.

    “unfortunately, what the applicant’s WANT, and what the system currently provides are two very different things”
    Actually, the system, as it is set up now and when implemented as it is set up, does provide exactly that. Unforunately, the USPTO doesn’t give examiners nearly enough time for them to do their job properly. As such, the USPTO forces examiners to cut corners and fosters an environment where doing less (per application) is rewarded and doing a good job is frowned upon.

  23. You’re right about the BTW section, unfortunately, what the applicant’s WANT, and what the system currently provides are two very different things.

  24. My fault it should be: pds, we’re not a service provider in the traditional sense because we’re a gov. agency” Goodness, stop acting like you’re a third grader and discuss the issue on the merits rather than some lame misconstruing thereof.

  25. “As for “typing of the action,” what I see most is cutting and pasting and perhaps a couple paragraphs of real analysis.”

    Cutting, pasting, and modifications of rejections takes more time than you may think. Mostly in the re-reading of references, determining if what you’re going to say is indeed obvious, anticipated, etc. You may very well would be surprised.

    “Let me give you a hint … the “little nuances [we're] including to overcome [the] references” is usually preceded by “(New)” or is underlined.” I’m talking about finding them in the art. Though you bring up a good point, sometimes even though the words be underlined they create broad ramifications for the claim as a whole so we have to find and assess that as well.

    “And what point does that drive home? BTW, the pool of applicants for becoming a patent attorney is much, much smaller than the pool of applicants for becoming an examiner. It will ALWAYS be much easier for the PTO to expand than it will be for the pool of qualified patent practitioners to expand.”

    I didn’t quote your above above above comment enough to make what point it was clear, my bad. I try to consolidate my responses to you to save us both some time and simplify the issues which you seem hell bent on expounding upon, again and again though we’ve been through them already I fear before this thread. Okay, let me run it down for you. You feel like RCE’s are less of a burden for the agency (you actually should insert “individual examiner” here) than a New case and presumably you feel this way because you think that if the New cases aren’t getting attended to then the PTO should just expand and hire new examiners (which it is, just not fast enough). And you are right in a sense, new apps aren’t done = hire more people. The problem occurs though when the PTO cannot hire enough new people to keep up with all the new filings. This is the current situation. There are a number of reasons for this. The organization as a whole doesn’t expand very well past a certain point, the management tiers etc., but most importantly, new examiners can’t be trained fast enough. And the attempts to do so are set back by retention problems. Hiring does not solve the RCE problem, that is overall what I meant by that simple statement which I presumed you were well versed enough in 1. what you were talking about and 2. what the solutions are and why they don’t work to be able to comprehend the simplicities before you. That we’ve discussed 100 times on here already that you still don’t understand.

    “Simply put, the system is burdened far more (in terms of time spent by an examiner) in examining 10 new applications than it would be in examining 1 application with 9 RCEs.”

    Of course that’s the case, but you’re neglecting the fact that THE NEW APPLICATIONS HAVE TO GET DONE SOMETIME. The RCE work is simply “extra” work. Sure, it MAY be smaller than the time it takes to do a FOAM, but that’s irrelevant since that FOAM it’s “replacing” STILL HAS TO BE DONE, although later. We are not discussing the burden on the EXAMINER, but on the PTO, as a whole organization. You then have the burden of the RCE + the NEW case. Not RCE burden OR New Case. It’s additive burden, not alternative burden for the agency. It’s alternative burden instead of additive burden for the individual examiner only.

  26. I bounce from point to point because there’s a huge collection of points above. I know it didn’t all come out perfect but I have neither the time nor inclination to make it so.

    “No what I wrote is that LL was *assuming* that applicants file RCE after RCE with overbroad claims. You need to work on your reading comprehension.” <<< that suggests that there may possibly be some other alternative to LL’s assumption. You made that suggestion by stating this. There is no alternative to LL’s assumption, it is fact, applicant’s RCE 90%+ of finals, end of story.

    “If you, as an examiner, aren’t getting more abandonments, it means that you cannot find killer prior art (which is different than just good prior art, i.e., art good enough to reject the claims but easily amended around).”

    Correct. It is impossible in the current statutory scheme to use art that in reality is killer, is not killer because of some little minutia that has no bearing on any contribution to the art and is merely doing “something different” providing no percievable benefit whatsoever over the prior art. Nevertheless, the applicants want that coverage, so they file an RCE. That is where we take issue with the process. We want them to have claimed that bottom line thing that they want coverage on UP FRONT. Even if they do it concurrently with some overclaims, get those claims in UP FRONT. People just don’t do this. Why? Because the bottom line claims aren’t really what the applicant wants, and they’re not even an invention per se, they’re just some bs attempt to be more specific about what they did “differently” than the guy that solved their problem in spades 2 years before them. I understand why they want it, and I understand why we allow it, at the same time I understand that the references before me disclose a lot more to POSHITA than a strict reading of them shows. A LOT. Problem is, the current statutory scheme just isn’t setup to account for that. Arguably this is a very good thing for me, as my AU likely wouldn’t exist if it wasn’t setup this way.

  27. expoundless6 — cant resist (twice in a day) … let’s do the sentence structure game (you allege to not be old enough to remember when we use to have to “construct” sentences — admittedly a discipline i failed)

    “Oh and pds, we’re not a service provider because we’re a gov. agency.”

    NO … you are a service provider because the tax payer EXPECTS service when it is THEIR MONEY (in this case if the taxpayer knew MORE jobs would be lost instead of how to pay major record companies via a TAX on internet access…) … next …

    “We would like to become one, that’s what Peterlin is espousing btw.”

    So what? Her credentials with reagrds to patents? copyright? signing letters of intent? who cares … the contrapositive is that she does her job really really really well and you as an alleged examiner loses your job to say … blackwater? at 5X – 10X what they allegedly pay you …

    “If we could become a service provider paying above the market rate for people with the skills we need to do the job very correctly, which are btw more than the standard industry worker possesses, then we would be very much happier.”

    NO … private industry does best in pursuing profits … that is the point of a captitalist system … profiteering governments do best for special interests … (22 yo south beach resident with 300 mil contract for munitions – was that above market rates?) … namely the profiteers and those who espouse issues that they would like to say does not impact their bottom line (that would be net net net profit 6X) …

    if I wanted a government agency to observe the market and not correct it for the taxpayer i would look at the … MORTGAGE MESS … happiness is NOT work! go invent something people will pay you for then whine about happiness … it doesn’t seem like you spend much time examining anything but your blog count …

    “Such a change has to be made by the congress, and would constitute patent reform you’d cry about.”

    ACTUALLY, NO … and your comments about Mr. Riley as well as your post do present interesting ethical challenges (a part of the market, you see, involves some modicum of appropriate behavior and context) … the patent reform act does nothing you say it does and in fact increases costs beyond what you as an ALLEGED examiner would even care to deal with when confronted by a three letter NYSE ticker symbol-representin’ attorney …

    i guess it was the wrong question i posed several months ago … what exactly is your deal? how much? what is the overtime? how old are you? what was the first question on the LSAT? while were at it, what was your SAT score? can you remember?

  28. “hmm, so far, out of 100+ apps handled, I have 1 express abandonment.”
    If an examiner ever wants an affirmation as to whether or not they put forth a good rejection, ask them how many abandonments they got. Also, ask them how many abandonments they got immediately after the first office action.

    Whether or not I proceed with prosecution is dictated on the prior art (and the client’s ability to fund continued prosecution). If you, as an examiner, aren’t getting more abandonments, it means that you cannot find killer prior art (which is different than just good prior art, i.e., art good enough to reject the claims but easily amended around).

    “then you actually suggest that applicants do not file RCE after RCE”
    No what I wrote is that LL was *assuming* that applicants file RCE after RCE with overbroad claims. You need to work on your reading comprehension.

    I would respond to the rest of the paragraph, but it is your classic 6K stream of conscious that bounces from point to point with no apparent rhyme or reason.

    “This statement is false, even though it be your position. If nothing else we still are adding all the review time of the case, and the typing of the action, the finding of all the little nuances you’re including to overcome references etc. etc.”
    Let me give you a hint … the “little nuances [we're] including to overcome [the] references” is usually preceded by “(New)” or is underlined. Those claims labeled (original) or (previously presented), you probably don’t have to look at them too hard for these “nuances” you speak of. Quite a simple process once you get the hang of it. You can thank me later.

    As for “typing of the action,” what I see most is cutting and pasting and perhaps a couple paragraphs of real analysis. What you typed in your single post is about the mean for the amount of real analysis I see for any given office action. Unless an applicant files entirely new claims with an RCE, the number of issues associated with the application should be narrowed down quite significantly. If you are redoing the case over from scratch each time an RCE is filed, then you are wasting a lot of time.

    “The part that really drives the nail into the coffin of your opinion is that the pto can only expand at a certain rate.”
    And what point does that drive home? BTW, the pool of applicants for becoming a patent attorney is much, much smaller than the pool of applicants for becoming an examiner. It will ALWAYS be much easier for the PTO to expand than it will be for the pool of qualified patent practitioners to expand.

    “Oh and pds, we’re not a service provider because we’re a gov. agency.”
    Funny … you are both absolutely right and wrong in this very short sentence. Ask any business student or anybody with a modicum of experience in business terminology, and they’ll all say that you are a service provider. However, I think most patent practitioners and applicants agree that what the USPTO provides could hardly be considered service. Moreover like an incompetence and aggravation provider.

    “Also, you fail to give credit to the agency in doing cost analysis”
    I see you omitted the “benefit” part from your statement … probably a Freudian slip on your part. I’ll give credit where credit is due, but from what I’ve seen with the continuation rule package and the other recently-proposed rule packages, the USPTO wouldn’t recognize a cost/benefit analysis if it bit them where the sun don’t shine.

    BTW: What the most applicants WANT is to get as much as they are entitled to. Unless you can come up with some solution that provides applicants with perfect prior art and perfect claim constructions prior to applicant preparing the application, then expect over-claiming. It is a lot easier for applicants to get what they are entitled to by overclaiming than underclaiming. If applicants underclaim, and an ex parte Quayle action gets issued, applicants will (i) likely not see the best prior art and (ii) not have a chance to amend the claims to get broader coverage without great expense.

  29. repose then greeting

    >>

    WRITE your senators … not call; not e-mail; not communicate with staffers (without written notice – they are not clerks to a judge and have their own agenda[s] which transcend THIS administration for obvious reasons) — WRITE them!

    A personal handwritten note is often the BEST communique …

    Letters from your clients, NOT SOME STATE IP GROUP (sorry Mark), is the best communication >> they CREATE THE JOBS! and, the likelihood of re-election — plus you get to be the big man/woman in the middle …

    >>

    second (even if i wanted to save the pleasantries for last), expoundless6 >> fourthree; 43; FOUR-Three; did you get that? quatro-tres; yotsu-mitsu; shi-san; 43! still think you are a shill but when the facts come out about your identity — oooh, irony …

    third, what is the consequence of a regulatory agency seeking appeal after summary judgement at the expense of the public purse and in light of the 95% plus “nay” responses for the rules over the past several years?

    though. as stated before, I do not believe that any patent bar, pro or anti inventor/applicant “group” >represents< a true value *creator* – my further opinion over the radically unique history of negotiating AWAY entire portions of intangible property protections (not trademark or copyright, of course, as these industries create icons/petards(in the bomb sense)/messages — not jobs) — 17 year term upon grant, GATT/WTO quasi-political constructs, and publication after 18 months, because of Lemelson & Hyatt — primarily (? and where are the GM and Intel jobs now?) …

    is there any precedent for the madness to leave these potential rules on the table while arguing that the cost of leaving them is a SUBSTANTIAL COST? It is easy to adjust time but cost? Add time to all pending applications?

    CaveMan — as per our exchange a few weeks ago, see detail there — it is time not cost that really matters when “no one knows” — enabling applicant and examiner “first shot” at direct negotiation over claim language without prejudice & YES, examiner sign-off on READING a spec as though it were an ids — (if you were not an examiner would you want the same treatment?)

    to my surprise ::

    “The USPTO isn’t just a service provider to the people paying a fee for that specific service, it’s also a service provider to the entire public. It has a job the job of making sure an adequate balance is struck when granting a limited monopoly traded for public disclosure. In other words, it’s job is not to issue patents exactly how they were filed, in the most time efficient manner possible.”

    cant resist — this is brain dead — you either encourage disclosure by inventors or you don’t … an examiner is not a public defender let alone a sage to determine what is the best policy for the US … you are civil servants!! in a parallel universe you would determine the outcome of litigation and damages … that is NOT your role — no one ELECTED you or APPOINTED you — it is a job … search & examine … make sure the US has the best facilities in the WORLD to determine the metes and bounds of IP — that is the focus … read, read, read and possess the best possible knowledge to dispose of cases that you have NO future accountability over …

    even IRS employees do not invoke any “i work for the public interest”-argument … patentability of the claims “in view of the specification” is the job … moaning about what a private sector attorney gets is pointless … they have clients … those clients may or may not understand the process … but they are paying you the examiner, by effects, and the attorney for a full and proper search and examination … LEAVE OUT ALL THE REST …

    forget about anticipating legal decisions and future directions of PATENT-specific issues as you too will garner much pride and joy from interacting with the cusp of the actual and discernible “r&d” that the world has to offer … that interaction with the rest of the world is what makes the USPTO unique — not the big flag over Brussels that indicates something beyond my comprehension about EPO or greater EURO discussion … you are paid by the US and your pay is tied closely to how well the US acts as an arbiter of IP … for the 45% of small entities and foreign applicants this is especially important as a departure from the way other offices handle applicants …

    invention is not a political process … it is a pure form of self-interest and should be treated as such … it is a money game in the truest sense … paying the government to search and examine what you think you should be paid for is clearly a sensitive/legal imperative/ethics-bound negotiation … and, you would expect nothing less than what the attorneys and practitioners argue here – if you were wearing the other shoe or even better, if you were the inventor …

    inconsequentially, with experience with 10+ year pendency in many cases, there are plenty of systems in place which deal with “public” protections — namely secrecy orders and security review … TRUE patriots pay their phone tabs (or at least mention it when discussing how patriotic they are) … TRUE patriots verse themselves in the minutiae of what they are searching and examining when they get a pension and health care in their pay packages (courtesy of the applicants and the maitenance they must pay)

    TRUE patriots don’t lose the Super Bowl … whoops must be baseball season …

  30. In order to realize the full benefit of “three sheets to the wind” (a seafaring expression I learned before they repossessed my yacht), we’ll need to raise one more toast–

    three cheers for Judge James C. Cacheris,!!!

  31. pds, that’s probably the most lolable back and forth I’ve seen you involved with. First you say you’re re that the PTO has unclean hands (which is 100% irrelevant to my point, and my point still stands, even as your point stands as well), then you actually suggest that applicants do not file RCE after RCE, hmm, so far, out of 100+ apps handled, I have 1 express abandonment. The rest of them want to pick on some small point. They like to RCE end of story. Anecdotal evidence yes, but the same thing happens with all examiners I know. Oh, and each search does not necessarily get easier and easier. They often do, but not always, that’s irrelevant anyway because we’re talking BURDEN, as in time spent and that time spent will always be greater if I have to type 3 actions rather than type 1 action, review the case 3 times rather than 1 time, and yes, search more than once. Applicant not getting a fee reduction is irrelevant, especially since they many times are not necessarily easier. Oh, and the applicant is getting out precisely what he put into the system, money spent to determine if his current set of claims meet the statutes for patentability. This is the benefit he gets EACH TIME I review a case. BTW: In the real world service providers set their own market driven fees. You and I both know the examination fee will double, triple, or increase by a factor of 10 as soon as we’re told to set market driven fees rather than lol we’re gov fees. And yes the appeals rules put a burden on the applicant more than the office, what’s your point? Oh, and yes, you’re paying for the sins of the bad applicants who are seemingly not the very few, but are instead the sizable majority.

    “My point is that an examination after an RCE takes much shorter time than an examination on a “NEW” case. As such, one RCE doesn’t prevent one NEW case from being examined.” Finally, we get down to the part where the crux of your problem in understanding the issue is. This statement is false, even though it be your position. If nothing else we still are adding all the review time of the case, and the typing of the action, the finding of all the little nuances you’re including to overcome references etc. etc. The part that really drives the nail into the coffin of your opinion is that the pto can only expand at a certain rate, regardless of how much $ you put in and that is one of the problems we’re facing but is impossible to meaningfully and realistically overcome in a manner that would solve the problem.

    You’re right about 2nd action non-finals they su ck for everyone. Unfortunately, I’m not perfect and neither are my fellows. But what I can say is that my record looks a lot better than the attorney’s who are throwing the same ol’ crp back at me expecting it to magically issue. A LOT. Not even to be subject to reasonable dispute amongst reasonable men.

    Oh and pds, we’re not a service provider because we’re a gov. agency. We would like to become one, that’s what Peterlin is espousing btw. If we could become a service provider paying above the market rate for people with the skills we need to do the job very correctly, which are btw more than the standard industry worker possesses, then we would be very much happier. Such a change has to be made by the congress, and would constitute patent reform you’d cry about.

    Also, you fail to give credit to the agency in doing cost analysis, you must think that the cost analysis presented wasn’t based on the lolable presumption made by the office that the applicant WANTED to do the right thing up front. And of course, the apps don’t, so the whole analysis is skewed horribly away from the ideal presented by the office.

  32. “The USPTO isn’t just a service provider to the people paying a fee for that specific service, it’s also a service provider to the entire public. It has a job the job of making sure an adequate balance is struck when granting a limited monopoly traded for public disclosure. In other words, it’s job is not to issue patents exactly how they were filed, in the most time efficient manner possible.”

    Why is that? The public is benefited by the disclosure, which happens 18 months after filing, which in the vast majority of cases, occurs prior to issuance. Thus, the benefit to the public already occurs (in most instances) no matter when the examination occurs. It is the applicants that benefit the most from having an earlier issued patent. However, as I’ve noted in a prior post, there should be some cost-benefit analysis done to balance quicker issuance with the cost of that issuance.

    As the briefs in this particular lawsuit pointed out, the USPTO isn’t too good at cost-benefit analysis.

    BTW: I’m having difficulty trying to make sense out of your last sentence.

  33. Yes, good point— a federal judge who like to stick it to the man!
    Let’s raise another toast–
    three cheers for Judge James C. Cacheris,!!!

  34. Cacheris MUST have a sense of humor to issue arguably the most highly anticipated decision (amongst the patent community) in years on April 1st.

  35. Posted by: pds | Apr 02, 2008 at 01:18 PM
    “BTW: In the real-word (i.e., outside of government), service providers don’t blame or alienate their customers when the customers give the service provider more work than the service provider can handle.”

    The USPTO isn’t just a service provider to the people paying a fee for that specific service, it’s also a service provider to the entire public. It has a job the job of making sure an adequate balance is struck when granting a limited monopoly traded for public disclosure. In other words, it’s job is not to issue patents exactly how they were filed, in the most time efficient manner possible.

    Posted by: JohnDarling | Apr 02, 2008 at 01:35 PM
    “Good suggestions. Combine your suggestions with my suggestions to require the examiner, in response to an appeal brief, to either 1) issue the Examiner’s Answer, or 2) allow the application (i.e. no re-opening and/or no new grounds) and that would go a long way to reducing the backlog and pendency. We also need to take away BPAI’s ability to remand and/or insert new grounds, and absolutely forbid examiners from re-opening after a reversal. But your suggestions combined with mine would be a nice start.”

    Great suggestions as well. I think the vast majority of Examiner’s (note: not SPEs, Directors or higher management) would actually welcome these types of changes.

  36. “is that for every RCE that is one NEW case not being examined”
    My point is that an examination after an RCE takes much shorter time than an examination on a “NEW” case. As such, one RCE doesn’t prevent one NEW case from being examined.

    A greater burden on the “system” occurs with second non-final office actions, because at least with RCEs, the system is getting paid and (in theory) should be able to allocate more resources to examination. The second non-final actions, however, not only waste USPTO resources but also waste applicant’s resources, who are forced to pay to respond to a rejection that should not have been made.

    Simply put, the system is burdened far more (in terms of time spent by an examiner) in examining 10 new applications than it would be in examining 1 application with 9 RCEs.

    “And the examiner, nor the public, really knows what the intended claims are supposed to be since each tweak is more intended to get around the applied art than to more clearly claim the invention.”
    No one ever knows what the final claims are going to be until the application issues, but after publication, the public will have a good idea as to what can be claimed and the general scope of what the application enables.

  37. “I assume you are being facetious. That phrase is just the boilerplate form paragraph that goes before the actual response to arguments. I seriously hope you aren’t suggesting that examiners just put that statement there and nothing else.”

    In an advisory action? … I’m darn tootin’ serious.

    How about this, I’ve gotten appeal briefs (i.e., more than one) reopened when the examiner added a rejection, kept all of the other rejections (i.e., the ones that I argued against in the appeal brief) and completely ignored my arguments (i.e., just retyped the prior rejections and did not respond at all to my arguments). I’ve had one examiner completely ignore my arguments 3!!!! times in a row.

  38. PDS, you state “The applicant isn’t getting a fee reduction for these easier searches. Also, even if the applicant is paying RCE after RCE, the applicant is paying into the system more than it is getting out of the system. To me, that is not overburdening the system.”

    What you seem to be missing, or not (want to?) understand, is that for every RCE that is one NEW case not being examined. THAT has a big impact on the backlog. If we can get cases to resolution quicker, we work on more NEW cases which will result in less of a backlog.

    And I am talking the BIG picture not an individual examiner. YES, overly broad claims are easy counts for a single examiner. But they lead to more RCEs and more backlog. Bad for the PTO & bad for ALL applicants. And there are not enough “smart” lawyers out there that include real broad claims but also more narrow claims that are actually directed to the inventive concepts.

    As I said (many times), I was not in favor of the new rules. We do not need artificial ways to reduce the backlog. We need to give the applicant more incentive to try to get a patent quickly. That’s why I like what I suggested. Not only does it put the public on notice as to what the claimed invention might (probably will) be, but there is no incentive to keep prosecution going.

    Currently, there is nothing (other than a relatively minimal filing cost)to keep filing RCEs until they get what they want. Make a tweak here or there, final, file an RCE, make a tweak, final, repeat process… We see that a lot (not all cases, but a lot). And the examiner, nor the public, really knows what the intended claims are supposed to be since each tweak is more intended to get around the applied art than to more clearly claim the invention (and, at least in this forum, you lawyers can admit that changing the claims is not always the same as “clarifying” them :) )

    thanks,

    LL

  39. Opinions?

    Sounds like the proposed Appeal rules, put all the burden on applicants and none on the examiners. So you are proposing that applicants only get one bite at the apple but place no limits on an examiner reopening prosecution/entering new rejections. Definitely sounds like a USPTO proposal.

    The goal should be to get it done correctly not just get it done fast (with due consideration to the fact that perfection from the USPTO is not acheivable at anywhere close to a reasonable cost). This is why most federal agencies allow amendments/revisions to applications. Applications are placed with, e.g., the FCC, FDA, EPA, yet I know of no requirement that these applications have to be perfect the first time. Nobody has perfect knowledge as to the scope of the prior art, and unless one has perfect knowledge as to the prior art, then perfect claims cannot be written.

    Moreover, before perfect claims can be written, there must be an agreement as to claim construction (e.g., to use a past example, does a rigid member disclose a flexible member?). How can you write perfect claims when the claim construction is yet to be determined?

    BTW: Your “bad applicant” examples reflect certain applicants that are likely trying to game the system. Presumably (not knowing what is being claimed), the applicant has an idea as to what may be patentable but is deciding not to have it issue. However, in most circumstances, applicants want their patents issued with less cost and earlier. Personally, I think it is a mistake to craft rules based upon the actions of a very few, particularly when those actions harm the many.

  40. “That phrase is just the boilerplate form paragraph that goes before the actual response to arguments. I seriously hope you aren’t suggesting that examiners just put that statement there and nothing else.”

    ROFLMAO!

    LL,

    Good suggestions. Combine your suggestions with my suggestions to require the examiner, in response to an appeal brief, to either 1) issue the Examiner’s Answer, or 2) allow the application (i.e. no re-opening and/or no new grounds) and that would go a long way to reducing the backlog and pendency. We also need to take away BPAI’s ability to remand and/or insert new grounds, and absolutely forbid examiners from re-opening after a reversal. But your suggestions combined with mine would be a nice start.

    I’m ready for a bourbon.

  41. LL

    I have on multiple occasions noted the incompetence of many patent attorneys. It doesn’t mean that I have to repeat them every time I criticize examiners.

    6K accuses attorneys/applicants of being a burden on the system, and I’m responding that the USPTO doesn’t have clean hands in this issue.

    The whole point of the continuation package promulgated by the USPTO was supposedly to reduce the burden placed upon the USPTO by certain applicants abusing continuation practice. My point (not that I take ownership of it since many people have expressed the same opinion), which is relevant to this thread, is that many of the USPTO’s problems are of their own doing.

    “I despise it when lawyers argue a 103 by saying there is no TSM & leave it there.”
    You need to take a closer look at the OAs coming out of the USPTO. Most of them are not using Supreme Court-blessed alternatives to TSM. Instead, most of them are using strict TSM. As such, if an examiner purports to using TSM to find obviousness, but doesn’t use it appropriately, then all an attorney has to do is say there is no TSM and leave it there. Remember, the burden of establish a prima facie case of obviousness rests with the examiner. Applicants/attorneys have no burden to respond to obviousness arguments that were not made.

    “We see all types of garbage coming our way that looks like it was created by someone with no concept of the patent process, how to respond to an action, or even heard of KSR”
    They must be playing to the level of their competition. Actually, there is some truth to this. I’m seen some smart attorneys write some pretty dumb-downed responses.

    “Lawyers/applicants contribute to the backlog & problems with the office as much as the examiner side does. If you can deny that with a straight face, you are either horribly uninformed or an inveterate “non-truth-teller”.”
    Well …. give me your list … or are you going to act like just the average examiner and expect me to rely on your conclusory statement without a modicum of evidence/argument to back it up with?

    “The over-broad claims ultimately results in RCE after RCE with no resolution.” You are assuming that the applicant does file RCE after RCE. However, as already noted once before by somebody else, once an examiner does a search the first time, each subsequent search gets easier and easier and easier. The applicant isn’t getting a fee reduction for these easier searches. Also, even if the applicant is paying RCE after RCE, the applicant is paying into the system more than it is getting out of the system. To me, that is not overburdening the system.

    BTW: In the real-word (i.e., outside of government), service providers don’t blame or alienate their customers when the customers give the service provider more work than the service provider can handle.

  42. PDS, another thing that you said (10:49am 4/2/08 -paraphrasing) is that “smart” lawyers/applicants will file not only very broad claims but more narrow claims and that “smart” examiners will cite art that rads on the more narrow things disclosed as well as claimed.

    In an ideal world, you are correct. Unfortunately, that ain’t the way it works in real life. On either side of the aisle.

    All too often lawyers don’t really claim what the “invention” is until 1 or 2 RCEs (in our art, there is one notorious, very large firm/applicant that does this. The NEVER appear, though. I’ve seen 5+ cons/RCEs b4 they ever claimed the invention they disclosed & then it got allowed.)
    And, all too often, even when examiners cite (but not apply in a rejection) other relevant prior art it seems the lawyer/applicant does not read them & amends the claims to read on that art. Makes for an easy final.

    “My” solution (actually may have read some of it somewhere 1st) would take care of many of the problems we discussed as well as (I think) help with the backlog, as well):

    1. NO substantive amendments to the claims after a 1st action int he case. This ensures that the applicant can/will have claims in accordance with the MPEP (broadest they think they are entitled to down to the most narrow they are willing to accept). The only amendments that can be entered would be rewriting in independent form, cancellations, or minor amendments to correct typos/antecedent basis/grammar, or to put in proper form for 101 (not going to argue that here).

    2. After the 1st 20 or so claims, drastically (e.g., exponentially per claim) increase the fees for additional claims filed.

    3. Let the applicant determine how many claims they want examined. They must have all independent claims examined. Dependent claims are optional to be examined. They pay an examination fee for all that they want examined.

    4. MAYBE allow some substantive amendments (adding limitations, not deleting) upon filing an RCE/CON/CIP? Negotiable.

    What this will also effectively do is “encourage” the applicant to do some preliminary search & see what is out there already since they can not claim the world & then narrow it down depending on what is found. It does not MAKE them do it, though it would usually be good sense to do it.
    “Enlightened self-interest” is usually the best way to get people to do what you want them to do.

    Opinions?

    thanks,

    LL

  43. Oh, and I forgot to address this point:
    “You mean that stock phrase ‘Applicants arguments have been fully considered but is considered non-persuasive’?”

    I assume you are being facetious. That phrase is just the boilerplate form paragraph that goes before the actual response to arguments. I seriously hope you aren’t suggesting that examiners just put that statement there and nothing else.

  44. @pds:
    You continue to miss the point – on purpose, I suspect. Frankly, I’m not surprised; I see these kinds of responses with disturbing regularity.

    Let’s first clarify a few things:
    1. I’m not arguing whether your argument is consistent with “your experiences at the PTO”, so you can put that strawman away.
    2. I am not arguing whether something is or is not a burden, so you can put that strawman away also.

    My argument is that you cannot argue these two statements simultaneously:
    A. “Examiners not reading the spec and not trying to understand the applicants invention the first time (so they can find the best prior art in anticipation of claim amendments) are a burden on the system.”
    B. “[A]pplicants overclaim [sic] should not be a burden on the system”

    Statements (A) and (B) are logically inconsistent with each other. Again, I don’t address whether one or the other is a burden or not – in point of fact, I don’t care. But where one is (or is not) a burden, the other similarly is (or is not) a burden. I have set forth my reasoning in the previous post, and will not reproduce said reasoning here.

  45. concerned practitioner said

    “It’s BECAUSE my clients refuse to pay for a prior art search, and refuse to give up claim scope to which they are NOT entitled that I have to go around and around with the PTO on my clients’ applications.

    It frustrates me to no end, this unreasonableness on the part of my clients.

    And it most certainly is not MY doing. In other words, it is the fault of the applicants that pay for my time, it is not the fault of me, the practitioner.”

    You are either a professional or you are not. Being a professional means taking responsibility and telling your clients the truth. If the client will not accept your advice your only option as a professional is to tell the client to hit the road. Real professionals do that all the time.

  46. My bad examiner, I did mean Rolla not Love above.

    As for Doll, yes, he is behind ESDs but they are only a small part of Final Rules that were overturned. Doll is interesting, he argued strongly for single sequence restriction when heading 1600 which increased the backlog significantly but made his Examiners job dead easy and thus increased his throughput (which led him to where he is) but now he complains vehemently about the backlog he helped create. Sweet guy…

    Mr. Doll – have you allowed any of the single sequence restriction apeeals to make it to the Appeal board yet?

  47. real anonymous,

    When I have become aware of the prior art, I have convinced my clients to amend. No malpractice or inequitable conduct going on here.

  48. Ya’ll seem to be convinced that the 3 Johns are the ones behind all the new rules packages. From what I know, that is not accurate.

    John Doll is definitely the one behind ESDs.

    But the one behind most of the other rules is Joe Rolla. Former director, then former contractor with the PTO, now back at the PTO. Many of the ideas some from him, not the 3 Johns.

    “Follow the money/idea…

  49. PDS, sometimes you are reasonable. In the above you are not & come across like all of the rest of bitter old lawyers.

    You list of all of the “problems” with examiners convienetly leaves out all of the problems with lawyers. While I may agree with you that some examiners, particularly newer ones, do have many of these problems, you leave out the other half of the problems. The LAWERS!!

    You may be perfect (??), but most are not. We see all types of garbage coming our way that looks like it was created by someone with no concept of the patent process, how to respond to an action, or even heard of KSR (a personal pet complaint of mine – I despise it when lawyers argue a 103 by saying there is no TSM & leave it there.)

    Unfortunately, I have to agree with 6K in at least some of this discussion. Lawyers/applicants contribute to the backlog & problems with the office as much as the examiner side does. If you can deny that with a straight face, you are either horribly uninformed or an inveterate “non-truth-teller”.

    As for your comment that “applicants overclaim should not be a burden on the system … in fact, those should be the easiest applications to dispose of.” (posted 4/1 @ 11:32pm) is ridiculous on its face. The over-broad claims ultimately results in RCE after RCE with no resolution. Yes, for an individual examiner, they are an easy 1st count. For the PTO as a whole, they greatly contribute to the backlog. (and NO, I was not for the rules. Glad they were shot down.)

    In that same post, you said “On the contrary, those applications that claim subject close to (but not crossing the line) place more burden on an examiner because they actually have to think to put together a rejection.”
    You clearly miss the point! Yes, they may be “harder” to examiner the 1st time, so for the individual examiner it maybe “worse” (takes longer to do), for the PTO as a whole it is better, as the case gets closer to resolution quicker which leads to fewer RCEs and less backlog. Simple as that. Yes, an individual examiner likes broad claims since they are easier, but they aer bad for the system as a whole.

    thanks,

    LL

  50. “Your last comment is logically inconsistent no matter what kind of examiners you were addressing.”

    I’m not sure what dreamworld you are living in, but it isn’t in Alexandria, VA.

    Overbroad claims (i.e., our hypothetical “chair comprising 3 legs”) are easy for most examiners to examine because most examiners will only look at the claims, find any piece of art that has a chair with 3 legs and get his/her count. If you don’t think that happens, then you need to get out more often and read what is being put out by the rest of PTO. Under these circumstances, there is less of a burden on the PTO because there is less searching needed, less analysis needed, and less writing needed (e.g., easier to write a 102 rejection than one or more 102/103 rejections). As such, my statement is perfectly consistent with my experiences at the PTO. As I said, my comments were directed to the PTO, as it currently stands, not as to how I want it to be.

  51. “@real:
    Your arguments are without merit.”

    examiner, we’ll disagree, and I’ll continue to contest wrongly issued patents. :-)

  52. concerned practitioner, I believe you’re flirting with malpractice and inequitable conduct (for $$$) if you prosecute “claim scope to which they are NOT entitled”, regardless of what your paying clients want.

    What’t your price? You may wish to re-read 37 CFR 10.18 and 10.20. (But if you don’t know better already, I suspect you are a troll and not an practitioner at all.)

    “(ii) The claims and other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;”

  53. Re status of proposed IDS/claim species rules package, PTO mgt reps recently indicated (Jan. ’08)at PLI in NY that these new rule packages will sink or swim together. if that still holds true, in all likelihood this all gets mothballed, and sits around until the next admin takes over and makes its own decisions about all this.

  54. Now that we have an opinion concerning the unconstitutionality of the rules and we have evidence that the same were put into effect prematurely I believe it is time to address the fate of those who usurped the Constitution of the United States of America under color of authority. We must not stop at this decision. These individuals must be held accountable. Forget not the Memorandum that state cases were to be pulled, because they failed to satify they exceed the 5/25 limit. Every single Officer and bureaucrat that acted in contravention to the patent laws must be identified and held accountable.

    This situation is not unlike the telephone companies seeking immunity for following unlawful government order from the Bush administration to undermine the Civil Rights of the citizens of the United States. If we do not hold these people accountable then we have nothing less than a dictatorship.

    In ending I note that for the first time the government is seeking to hand to private individuals the regulatory authority over all financial transactions in the United States. I am speaking of the Federal Reserve. It is my opinion that the minions of the elite seek to undermine, if not totally destroy, the Constitution of the United States of America under the guise of regulatory authority.

    I suggest that you read the factual history of General Smedley Butler, one of the most decorated Marines in the history of the United States of America. link to en.wikipedia.org . He single handedly ended a plot by American business to overthrow the government of the United States to institute a fascists government. link to en.wikipedia.org

    So I say to you my fellow citizens, be careful about letting the Constitution of the United States of America to be undermined by the necessities of business and economics. There are greater pursuits than profit.

  55. NWIAUMRN (No Way . . .)

    I would LOVE for my clients to allow me to do a prior art search before drafting claims and applications.

    I would also LOVE for my clients to allow me to amend claims in a reasonable way in view of the art that I (or they) am (are) aware of.

    It’s BECAUSE my clients refuse to pay for a prior art search, and refuse to give up claim scope to which they are NOT entitled that I have to go around and around with the PTO on my clients’ applications.

    It frustrates me to no end, this unreasonableness on the part of my clients.

    And it most certainly is not MY doing. In other words, it is the fault of the applicants that pay for my time, it is not the fault of me, the practitioner.

    P.S. Not all of my clients are this way.

  56. @pds:
    “However, without reading the spec, you will be completely ignorant to how an applicant may amend the claim.”

    Incorrect. In cases with non-overbroad claims, it is generally clear from the claims what the applicant is trying to patent – narrowing amendments in these cases generally add specific details of implementation or simply adjusting the language of the claim to escape the prior art, rather than actually adding previously-unclaimed components. In cases with overbroad claims, as I stated above, a reading of the specification is necessary to determine the scope of the invention. There are, of course, other indicators: a case with 3 short claims and an 80-page specification is good indication that applicant has not claimed everything up-front, thus reading the specification may be prudent.

    In short, we are not applying global rules. In each case, the exact claims and subject matter will determine whether a reading of the specification is likely to help or simply be a waste of time. While new examiners are unlikely to be able to judge this with any degree of accuracy, an experienced examiner with knowledge of both the art and the character of applications in general is far more able to make an accurate prediction.

    Your last comment is logically inconsistent no matter what kind of examiners you were addressing. An overbroad claim has the same ‘burden’ effect as not anticipating further amendments. If you are going to argue that anticipating amendments reduces burden (by supposedly reducing prosecution time and examining the ‘real invention’ up-front), the same logic drives the argument that applicants should refrain from overbroad claims (in order to present the ‘real invention’ up-front). The ‘burden’ on the system is the same, the only difference is which side is doing the implementation.

  57. 6K

    BTW: Nice strawman hypothetical that includes both a stup_d examiner and stup_d applicant.

    A smart applicant would have had the cup holder and any other “novel” features in the dependent claims.

    Also, a smart applicant wouldn’t have amended to claims to include a straight back (if it was well known) if the point of novelty was the cup holder. Adding the straight back would have been unnecessarily limited the claims.

    The smart examiner would have taken the time to read the spec and noticed that the application was for a ergonomic design and cited chair art that included the ergonomic design even if the ergonomic design was not initially being claimed.

    Now if both the examiner and the applicant were smart, the examiner would have rejected the broader claim to the ergonomic chair and allowed the claim to the cupholder. If the cup holder was the true point of novelty/non-obviousness, then a first amendment and notice of allowance would proceed.

    Unlike your scenario, the applicant wouldn’t need to spend the money doing an initial search and, instead used that money could be used to commercialize the product or perhaps to start preparing another patent application.

    Most cases of “overclaiming” can be cured by having dependent claims of varying scope directed to narrower aspects of the invention. Admitedly, there are some dumb attorneys out there who don’t know how to prepare good dependent claims. Also, as already touched upon today, there are examiners who don’t realize that when he/she doesn’t read the specification, he/she cannot anticipate amendments to the claims.

    It would be refreshing to have examiners exercise their brain power by anticipating applicant’s amendments. It isn’t easy, but they aren’t getting paid as clerks either.

    BTW: write “stup_d” two times, and the post gets filtered as spam.

  58. @real:
    Your arguments are without merit.

    First, new examiners are required, as a matter of policy, to read the spec for exactly the reason you imply: to learn the art. However, it is assumed that older examiners, particularly those that came from a career in industry, have, in the first place, functional familiarity with the art and, in the second place, the ability to judge whether the application is directed to subject matter which requires further research. In short, your argument assumes that all examiners use the same standard, regardless of their skill and experience, and that all applications are treated the same, regardless of their subject matter; this is a plainly baseless assumption.

    As I stated above, cases where the subject matter of the claim is unclear or unfamiliar to the examiner would require a reading of the spec. Unfortunately, my art simply does not see a substantial number of cases with phenomenal advances. If you’ve already read several hundred cases directed to the essentially the same problem with minor changes (relatively speaking), it should be clear from the claims what the invention is. A reading of the spec reveals little of worth in those cases.

  59. “First, fully reading the spec isn’t necessary in the majority of cases, as it’s clear from the claims what the subject matter is directed to.”
    Unless the spec is massive, there is absolutely no excuse for not reading it. You don’t have to read it word-for-word (i.e., skim over background of the invention and completely skip the summary). However, without reading the spec, you will be completely ignorant to how an applicant may amend the claim.

    “arguments+reconsideration must be addressed in advisory actions anyway, so it’s not as though your arguments are being ignored. What are your grounds for complaint?”
    You mean that stock phrase “Applicants arguments have been fully considered but is considered non-persuasive”? Personally, I don’t bother with responses after final because IMHO most examiners don’t read them and most responses to them rarely exceed 2-3 sentences. As such, I just appeal. The cost of appealing is much more than filing a response + (eventual) RCE and the examiner definitely takes notice of my arguments.

    As to my last comment about burden on the examiner … to paraphrase a former Defense Secretary … my comments were directed to the examining corps we have, not the examining corps we might want or wish to have at a later time.

  60. Just a thought from outside the inner circle of PatentlyO, but the reason 6K and most on the PTO side seem to have such animosity towards practioners (not applicants) is that where you see back and forth dialog, they see churning to make money.

    Filing overbroad claims and having 7 exchanges seems like a waste of time to examiners and a waste of money to the applicant. Who gains? The prosecuting attorney at a large firm trying to hit their billing targets. Examiners do not want to keep readdressing the same material and perform 4 separate searches.

    Did the PTO handle this very poorly? Absolutely. But, does a good prior art search enable more likely-to-be-allowed claims to be filed? Absolutely. Many companies that do things in-house have already come to this conclusion which allows them to obtain cheaper and more valid patents.

  61. RA-

    Are we talking the same IDS rules? Over a certain number of refs you have to file an Examination Search Document – that is substantive!

    Also, the rules shift the burden to the Applicant which is specifically mentioned by Cacheris in the ruling as a substantive change!!!!!!!!

  62. me, Rule 56 doesn’t require a search. (Though you are correct in my opinion that the vague ESD requirement for a search, which by the very wording of 1.265(e) could be deemed “insufficient” for unstated reasons, would have been a substantive change.)

  63. I laugh at the notion that the PTO will somehow be shamed, and those responsible removed. This shows a fundamental misunderstanding of government workers.

    To the contrary, the only way those responsible for the failed rules will leave would be through outside pressure.

    The rules guys are rock stars of the PTO and will now move on to another equally bad project. They must be removed and all of us should concentrate on that for now. Now is not the time to open a dialog and seek reasonable solutions. To cure a disease, its causes must first be removed.

    Please refrain from deleting this. I believe it is a reasonable opinion.

  64. “I find these comments curious. First, fully reading the spec isn’t necessary in the majority of cases, as it’s clear from the claims what the subject matter is directed to.”

    That’s *exactly* what my SPE told me. This is the kind of mentality that assures certain examiners will *never* become experts in their art. And this is *exactly* the kind of mentality that those on the outside who contest wrongly issued patents don’t have. (This incongruence and its affects on the patent system, isn’t too hard to understand, is it?)

    So let’s dum down patent examination even more, shall we, to solve the backlog. The Examiner just need read the part after, “…the improvement comprising….” [You present this as a solution to the backlog, perhaps, but it is in fact one of the main causes of the ills of the patent system - and a cause of why many Examiners can no longer grasp what might be obvious to a PHOSITA and therefore don't/can't even try. Learning an art never comes easy.]

  65. IDS man-

    Your argument is incorrect in my opinion, as the requirement for search is a substantive change, and has never been part of the system even in the bad old days.

    That said, your argument also ignores the 50 other bases this could have been overturned on, as Cacheris hints at in the ruling – there are 50 other ways he could have obviated these – and I bet he would have.

  66. Won’t Dudas immediately move them both Doll and Love to a closet in the back of the patent office and get someone below him who has a clue? Even Dudas has to realize what a whacking this is and he will stop all the rules packages and fire everyone before even considering doing anything else, right? I hope… I pray…

  67. Many examiners didn’t like these rules either due to their effects on the so-called “RCE gravy train”. No one in my art unit seemed to particularly care, as one RCE was typically the limit of what we got anyway.

    pds says some interesting stuff:
    “… Examiners who don’t need to read the spec, but instead, simply rely upon reading the claims in putting together a rejection are a burden on the system
    Examiners who treat a response after final as an automatic advisory action are a burden to the system.
    Examiners not reading the spec and not trying to understand the applicants invention the first time (so they can find the best prior art in anticipation of claim amendments) are a burden on the system …

    BTW: applicants overclaim should not be a burden on the system … in fact, those should be the easiest applications to dispose of. On the contrary, those applications that claim subject close to (but not crossing the line) place more burden on an examiner because they actually have to think to put together a rejection. Yet another instance of 6K not thinking through the ramifications of his assertions.”

    I find these comments curious. First, fully reading the spec isn’t necessary in the majority of cases, as it’s clear from the claims what the subject matter is directed to. Generally, a text search of the spec for definitions and supporting disclosure is a sufficient treatment of the specification. Exceptions would be:
    - Truly innovative stuff; things you’ve never seen before. In point of fact, I like to take home the really interesting applications to read in my spare time, simply because I’m interested in the technology itself. Unfortunately, these are an infinitesimal minority. The vast, vast majority of applications are just respins and updates of old stuff – backlog doesn’t help here, obviously, since applications from 3 years ago likely have commercial application by now, so even if you haven’t seen it in the patent databases you’ve probably seen it in technical journals or tradeshows.
    - Extremely broad claims. Some claims are so broad that you simply don’t have any clue what the invention is really directed to, and there are potentially hundreds of references that could be used as 102 against the plain language of the claim.
    - Claims with non-standard terminology. This mostly falls under the “text-search the spec for definitions” category.

    On the issue of advisory actions, the majority of after-final responses are going to draw advisory actions; I don’t see the problem here. Substantive amendments to the claims raise new issues for search/consideration essentially by definition (if not, it wasn’t much of an amendment, was it?), and arguments+reconsideration must be addressed in advisory actions anyway, so it’s not as though your arguments are being ignored. What are your grounds for complaint?

    Finally, your last comment is inconsistent with your opinion of examiners not reading the spec. Specifically, your final comment reasons that overbroad claims are “easy” (i.e., less burden) and claims closer to the invention are “hard” (i.e., more burden). By this reasoning, examiners that reject based on the plain language of the claim are less burden (because it’s easier to do and results in more RCEs which again = less burden), whereas examiners that read the spec and search to anticipate future amendments are more burden on the system (because it’s harder to do and results in fewer RCEs). From a ‘burden’ perspective, there is no difference between an applicant that claims overbroad and an examiner that rejects without anticipating future amendments. You cannot, in the same breath, argue that one is less burden and the other is more.

  68. 6K is Love, Doll gets the heat but the idea origniated with Love. 6K also seems way to ignorant for Doll, Love on the other hand…

    Hang them both, get Dudas someone below who has worked at a firm and prosecuted, and litigated, and lets move on.

  69. We need to pray Congress doesn’t change the law and give the PTO substantive rule making authority after all.

    Congress shouldn’t muddy up the framer’s brilliant separation of powers in the Constitution by taking the easy road and delegating its lawmaking responsibility to unaccountable bureaucrats in Alexandria.

  70. PTO mafia, I disagree. 6k is Doll. They have the same combination of ignorance, arrogance, and hostility towards patent applicants. It will be interesting to see how long Doll sticks around after this fiasco (though who would hire him?).

    6k, on the other hand, is already planning his next career move.

  71. Examiner 6k is Duda$$ right hand man. Before that, he worked at Cisco and ran an anonymous blog for them.

  72. “The Federal Circuit would laugh the PTO out of court if they appeal.”

    There won’t be an appeal. If I remember correctly, the USPTO gave up the right to appeal in return for there being no discovery into the process by which it came up with the proposed rules in the first place. An awful lot of people wanted to see the “voodoo math” supporting the PTO’s position.

    FOIA request, anyone?

  73. #6k:

    In the first case, the first rejection is an easy google search (as you admit). Looking at a fees/effort ratio, the PTO and the examiner are clearly ahead. Then the PTO gets RCE fees to keep it alive, you get a count, and you are examining a case that you already know something about (which should make it easier), so the PTO and the examiner are even further ahead. Cycling through the RCEs, the PTO gets lots of money, you get lots of counts and extra time to search the art in four incremental searches that should take no more effort than one or two good searches.

    In the second case, the actual effort the examiner has put into the case is much higher compared to the average “round” of the first case, but s/he loses out on the RCEs and the PTO only gets one round of fees.

    Truth be told, in case one the examiner probably did a better search of the prior art b/c s/he got multiple attempts at it (and spent much more time searching) and developed a better understanding of the invention and the art.

    …and the applicant paid for all of it.

  74. Even if you say that Rule 56 *is* substantive, it’s merely a codification of a requirement previously established by the judiciary. Good luck getting the courts to throw out their own rule.

  75. The PTO hierarchy got their collective butts kicked here. The opinion Cacheris wrote was carefully done, and is as close to reversal proof as it can get. The Federal Circuit would laugh the PTO out of court if they appeal. These Rules are now completely “dead in the water” (assuming Congress doesn’t upset this applecart, which appears unlikely unless they do something quickly this month). And as others have commented, the other PTO Rules packages are in similar jeopardy. Justice did prevail this time. Hopefully the PTO hierarachy will realize they’ve been beaten, fair and square, and cease and desist from this rhetorical nonsense.

  76. “So, here’s a different question: is rule 56 substantive?”

    It’s a reporting requirement, like small entity status.

  77. What I find most disturbing about much of the discussion here (not just on this topic but in general) is examiner#6k’s blatant hostility towards patent applicants and the patent process. Unless e#6k came into the PTO knowing something about patents – and nearly all examiners do not – then everything he has learned about patents, patent applicants, and the patent process has come from the training he got from the folks at the PTO. And unless e#6k is just generally a hostile, unhappy guy (which I suppose is possible), his hostility comes from his training at the hands of the PTO. If e#6k is an exemplary product of the current examiner training, then we are all in for a tough time.

  78. To joe:

    backlog = job security and budget forecasting ability. Don’t count on the backlog ever going away. I suspect it will all blow over including Congressional action. Never underestimate the ability of Congress to look like they are on the verge of legislating, when they are actually doing nothing – and thank the good lord for it.

  79. This however begs to be pointed out as completely ridiculous:

    “BTW: applicants overclaim should not be a burden on the system … in fact, those should be the easiest applications to dispose of.”

    In case you didn’t notice, OVERCLAIMED APPS RARELY DIE, they just get killed, are revived, get killed, etc. and keep going, and going, and going. A “disposal” in terms of counts is not the same as an application truely “disposed of”.

    Well, here, since you helped us out, let me spell it out for you in terms of dates:
    Situation 1, Overclaim.

    01/01 app files
    01/02 first office action issues (on overclaim using a standard chair to 102b the claims)
    06/02 applicant responds, overcomes standard chair by adding “a prong” limitation.
    08/02 final OA using a chair with a prong.
    02/03 applicant sends in AF finally gets close to claiming his invention, a chair with a prong, and ergonomic design.
    02/03 advisory
    02/03 RCE (disposal, but CASE DOES NOT DIE and continues needing examination)
    02/03 First action final using same refs as above, noting that the second reference has a line at the end talking about ergonomic design.
    08/03 applicant amends, sends in RCE preemptively, claims now include a flat back to the chair.
    10/03 Non-final sent 103ing in a ref with the primary that shows a flat back.
    04/04 applicant amends, claims now include a cup holding ergonomic design.
    06/04
    Total time for office spent, 2 year 6 mo. with 4 “searches” (times used to calculate the delays between responses may vary case to case but presumed equal to the case example below, 6 mo for applicant, 2 mo for examiner)

    Situation 2, applicant does presearch, finds standard chair with prong sticking out, (by googling “chair with prong sticking out” and hitting I’m feeling lucky) and also sees the reference to the ergonomic design at the end of that reference. Claim comes in with a flat back limitation.

    01/01 app files
    01/02 first office action issues, is rejected over the art the applicant found and a 103 with flat back chair in the art.
    06/02 applicant amends to include cup holding ergonomic design.
    08/02 Notice of allowance.
    Time spent by office 8 months, 2 “searches”.

    Please compare and contrast the two situations above pds and tell me just how EASY it is for the office to get rid of (dispose completely of) applications that are overclaiming. It’s fair to say it is you that haven’t thought this through. At all.

    Now let’s make posts even more clearly related to TvD shall we? Which btw apparently is not April Fools though it appears Dennis scooped everyone on the planet. No doubt due to his network of highly placed officials that feed him every juicy tidbit.

  80. PDS- We’re not derailing this very important thread with this bs we’ve been over time and again. You and I both know good and well the Office has to do it’s part, but so does the applicant. We are certainly not disavowing the office’s problems as well. However, your lenghty yet still incomplete list of issues facing each and every examiner belies your real problem, the lawyers/applicants attempting to push the boundaries of what is reasonable have ballooned the issuance of a legal claim in a simple parchment descibing an invention into such a complex matter that one truly deserves no less than 2 years of intensive study of the system before even attempting to indulge in the near flawless practice of its application, and this applies on EITHER side. Nevertheless, the office must do what it has to to insure staffing and the moving of applications. If you prefer we start only hiring lawschool grads with 4+ years of exp. (and pay them 120k+ starting) then I suggest you submit the suggestion in writing to your representatives in congress. Until then, please restrain yourself from bringing up the matter. The portion of the responsibility we were addressing above, that was related to the Original Topic of TvD, was clearly not meant to be taken as the whole of the problem and does not call for your continued rehashing of old ideas.

  81. This will sink the proposed IDS and Appeals Brief rules, also. This management team is done. It will be for the newbies to figure out what to do next.

    Now if Judge Moore would just go back and read Graham v. John Deere, the sun could come out and shine.

  82. re: “BTW: applicants overclaim should not be a burden on the system … in fact, those should be the easiest applications to dispose of. On the contrary, those applications that claim subject close to (but not crossing the line) place more burden on an examiner because they actually have to think to put together a rejection. Yet another instance of 6K not thinking through the ramifications of his assertions.”

    So with continued prosecution the claims will claim subject matter close to the line and the examiner will actually have to think to put together a rejection. And I’m not sure what you mean by dispose of but yes every RCE is a disposal.

  83. re: “BTW: applicants overclaim should not be a burden on the system … in fact, those should be the easiest applications to dispose of. On the contrary, those applications that claim subject close to (but not crossing the line) place more burden on an examiner because they actually have to think to put together a rejection. Yet another instance of 6K not thinking through the ramifications of his assertions.”

    So with continued prosecution the claims will claim subject matter close to the line and the examiner will actually have to think to put together a rejection. And I’m not sure what you mean by dispose of but yes every RCE is a disposal.

  84. “People coming in clueless about what has gone before are a burden on the system.”

    Examiners who don’t know the difference between inherency and obviousness are a burden on the system.
    Examiners who need 3-4 non-final office actions to find (perhaps) decent art on never-amended claims are a burden on the system.
    Examiner reopening prosecution 3-4 times after appeal are a burden on the system.
    Examiners who don’t need to read the spec, but instead, simply rely upon reading the claims in putting together a rejection are a burden on the system
    Examiners who treat a response after final as an automatic advisory action are a burden to the system.
    Examiners who don’t understand the concepts of official notice and substantial evidence are a burden on the system.
    Examiners who game the system to get RCE counts are a burden on the system.
    Examiners who rely upon a broadest possible claim construction of claim terms, the type of which would bring one having ordinary skill in the art to tears, are a burden on the system.
    Examiners who have never picked up the MPEP and have not at least read every page of chapters 600, 700, and 2100 are a burden to the system.
    Examiners who never cite foreign prior art because they don’t know how to search it are a burden on the system.
    Examiners who cannot apply State Street and AT&T as to “plain as day” statutory subject matter are a burden on the system.
    Examiners who don’t understand the difference between a broad claim term and an indefinite claim term are a burden on the system.
    Examiner who don’t understand that 37 CFR 1.104(c) actually applies to them are a burden on the system.
    Examiners not reading the spec and not trying to understand the applicants invention the first time (so they can find the best prior art in anticipation of claim amendments) are a burden on the system.
    I could go on …. but then we would be belaboring the point and I think I would run into the absolute character limit for a single post.

    BTW: applicants overclaim should not be a burden on the system … in fact, those should be the easiest applications to dispose of. On the contrary, those applications that claim subject close to (but not crossing the line) place more burden on an examiner because they actually have to think to put together a rejection. Yet another instance of 6K not thinking through the ramifications of his assertions.

  85. I must defer to the A team and they are voicing concern. I think we will have to wait until everyone gets over their immediate reaction and get down to some detailed legal analysis and see where that leads. The PTO has some issues they could raise on appeal, but I think they are of the mind set to just let it die and go to Congress and use the defeat as leverage for something else to be the silver bullet to clearing the backlog.

    A salient unspoken aspect of my concern over fees:

    Republicans = keeps the fees under the PTO Roof

    Democrats = take the money and run

  86. “pds — you make some good points
    (“getting the claim right the first time” is nonsensical)”

    pds makes his standard points, which regardless of inherent goodness, do not support a rebuttal of a more sensical statement that you try to portray, namely: “getting the claims CLOSER TO right the first time is sensical”. People coming in clueless about what has gone before are a burden on the system. The examiner cites some art that is a 102b on the huge overclaim, and then, on second or third action (depending on the applicant getting around the 102b) the examiner gets around to making the best of the 103′s, then by 7th action we’ve worn through all the myriad rejections (going from “best” art to “least best” art). Gee, that was swell, maybe the applicant could google his hotwords in the app and start us out where we end up starting on third action? Reasonable and sensical to say the least. Wanting to be mandatory is to say the most perhaps, but nonetheless is reasonable and sensical as well.

  87. What a disaster. Over $10 million spent on these rules by the USPTO. And the pendency has only increased now due to the flood of continuations filed before the rules took effect. And the private cost for training and preparatory action probably cost tens of millions of dollars (perhaps more?)

    Mr. Doll and Mr. Dudas, next time you propose a new rule try reading the comments. When virtually the entire patent bar opposes a new rule, don’t you think there would be a good reason?

    Are there any hints on who the new Commissioner might be? The problem with Doll is he is a PTO lifer and has no clue what it is really like to prosecute patents. A better candidate would be a patent attorney who spent time both inside the Office and outside.

  88. joe

    I don’t see the problem. As long as Congress sticks with the no fee diversion kick, the more funds funneled to the USPTO will likely bring better examinations because of the greater resources being applied to the examination. It may not happen overnight, but few of us (except for some of the new examiners) are in this for the short term.

    I would take double the current filing fees (i.e., add $1K for a large entity) over paying $1-$2K for a search and spending 5-10 hours of attorney time crafting some search report statement that won’t get me subsequently sued for malpractice for making characterizations that I shouldn’t have made which ultimately cost the client a patent (or claims with broader scope).

    The fees could be tripled and it would still be less expensive for the client over the long run than the USPTO’s continuation package.

  89. “Why do you say that?”

    You completely lost the point I was making …. I was merely repeating points/arguments that other people were making, but points that I personally did not agree with.

  90. Joe, your points may be interesting, but what you don’t realize is that the Rules were not susceptible to implementation. They were incomprehensible. I’m not sure what the result of an appeal would be. I think you are just being a little paranoid. The decision has not shaken any foundations of Admin law. Its not rocket science that Agencies cannot promulgate rules that will operate against statutes. They can more narrowly define statutes but cannot contravene them. This is what happened in this case vis a vis 35 U.S.C. 120.

  91. This is great news – though not surprising for anyone who studied the 120 issues raised in the rule commentary well before the GSK and Tafas were filed.

    Its interesting to see the ex post reactions from some of the more vocal. Of course, I wouldn’t have expected to hear so much from Mooney today. Now he’s comfortable calling things a mess. He appeared to be in full glib support of the new rules in previous commentary. Such as the Patently O issue from October 29, 2007 “Patent Prosecutors: Don’t Wait for the Witching Hour”

  92. Being an old saw at Federal Admin Law, in addition to US Patent law, all I see here is a judge who has awakened a sleeping giant, namely DOJ’s A team for Admin Law Litigation. The breadth and depth of this decision as to how it can be spun to curtail the rule making authority of other agencies just cannot stand. The calls will be pouring into DOJ to appeal, regardless of what the PTO desires.

    As for the patent bar, please prepare your clients for massive fee increases. As this rule package, along with all the other that likely will be sunk if not damaged by this decision, will bring the PTO back to congress to tell them that plan B to reduce the back long, rule making, has failed and Congress needs to either pass a significant statutory change to address the problem and/or give the PTO substantive rule making or agree with PTO’s Plan A, jack up the fees. If a democratic administration comes to power in the fall and after the open the cupboard to see the empty shelves they will be more than happy to accommodate a request for a fee structure like every other Patent Office in the World, huge fees with greater frequency to keep both your APPLICATIONS as well as your ISSUED PATENTS alive. And to boot they will likely institute a hiring freeze, and take the money to plug up all the holes in the economy. Tell that to your clients who will be paring back on legal work as recessionary pressure builds and see how that works for your practice.

  93. “what benefit does the public obtain by having applicants do their own search?”

    pds,

    So, to address your question, given that applicants are already hiring the USPTO to do their searches, the real question is, “What benefit does the public obtain by having applicants pay to have a search done twice?”

  94. “the USPTO funds aren’t directly being used to fund the USPTO”

    pds,

    Why do you say that? It was my understanding that applicant fees are used to directly fund the USPTO. In fact, applicant fees are the only source of USPTO funding. See link to uspto.gov

  95. “Not to be too nit picky, but the public does not pay for the search the USPTO does. The applicant pays for the search.”

    I threw that comment in because I continually hear (from the USPTO types) that applicants aren’t the clients of the USPTO, the public is the USPTO’s client. Moreover, since the USPTO funds aren’t directly being used to fund the USPTO, then it is the public that funds the USPTO. Thus, the public pays for the search, which is a statement I disagree with yet recognize that someone could make.

    Anyway, the question remains is “what benefit does the public obtain by having applicants do their own search?” Personally, I don’t see much benefit to the public since a search is going to be done anyway, and applicants still have a duty to disclose art they are aware of. There may be some benefit to the inventor, but that should be a decision made by the inventor and not foisted upon the inventor by law. I can also see where the USPTO may benefit (somewhat) from such a rule, but a minor convenience to the USPTO shouldn’t require the significant costs that a search (and explanation of the search) would impose upon applicants.

    The public goal should be to encourage invention and disclosure, not discourage it by increasing the costs of obtaining a patent.

  96. “because the public is already going to pay for a search by the USPTO”

    pds,

    Not to be too nit picky, but the public does not pay for the search the USPTO does. The applicant pays for the search.

  97. “OK, so as a procedural matter, the rules were beyond the power of the USPTO because they dealt with substance. Moving to the substance of the underlying argument: why should a patent applicant be allowed to file without doing a prior art search and why should an applicant be allowed an indefinite number of continuations over an indefinite number of years?”

    Indefinite number of years???? Did you miss out on the briefing about the change in law regarding the term of patents only being 20 year from filing? Granted, this briefing probably happened 13 years ago, but all new patent applications filed on or after June 8, 1995 only have a 20 year term (excluding patent term extension). As such, there is a DEFINITE limitation as to when a continuation application can be filed (and enforced).

    As for as the number of continuation applications, the public has notice after 18 months as of filing as to the subject matter that could possibly be claimed. Many specifications supports more than one invention/application because in the describing one invention, other invention(s) could also be described. As long as the invention is enabled by the specification, which should be made public (in most applications) after 18 months, the public shouldn’t be surprised if additional patents issue from an original parent application.

    Also, why should an Applicant be hamstrung by the PTO when the PTO allows a narrow dependent claim but rejects the broader claims. Shouldn’t the Applicant be allowed to get a patent on the allowable subject matter (and prevent competitors from infringing the patent) and file a continuation as to the broader subject matter?

    “It seems to me that someone claiming the grant of a public monopoly could be reasonably expected to (1) do their homework and (2) get their claim right the first time.”
    The quid pro quo for the grant of a patent (which is not a monopoly … come on, this is basic stuff) is disclosure as to what applicant believes to be the invention and NOT an identification as to what the applicant believes is the prior art. As I’ve opined time and time again, in most situations, the applicant is not in the best position to determine what the prior art may be. Instead, that position rests with the USPTO, which is the organization in the best position to identify the possible prior art. Thus, the REASONABLE course of action would be let the respective entities do what they do best (i.e., inventors are best at inventing and the USPTO is best at finding prior art).

    This isn’t to say that the applicant couldn’t find better prior art, but for the resources (i.e., money) spent, the USPTO will be far better than an applicant in most instances in finding the prior art. Moreover, even if the applicant is required to find prior art, will this prevent the USPTO from also performing a search? The answer is “No.” Your “reasonable” request that application “do their homework” provides little benefit to the public (because the public is already going to pay for a search by the USPTO) and substantially increases the cost of obtaining a patent. As such, a cost-benefit of this requirement yields that the costs far outweigh the benefits.

    BTW: As for getting the claim right the first time, when the USPTO decides to get their Office Action rejections right the first time, then this might be an idea worth considering.

  98. “MM- yes yes, I agree, they were a bit overbroad”

    And the PTO was a tad pushy about it.

    And so here we are.

    I agree that there are/were reasonable things that can or should have been done. Suffice it to say this mess was an unecessary and unwanted step backwards.

  99. “Getting the claim “right” the first time presupposes that there is such a thing as a “right” claim. There isn’t.”

    Incorrect. -10 points (Hint: One could say there is no such thing as a “perfectly right” claim)

    “Applicants draft claims based on their business needs and in light of the prior art that they are aware of and the law.”

    True, unfortunately nobody ever said that they have a “right” to be totally ignorant of their art when they file. The courts have merely suggested that such may be the case. Your end conclusion:

    “That’s why, even in a world of perfect examination and infallible patent agents/attorneys, claims will still undergo changes as an application is prosecuted.”

    is thus indefensible. Please just cease now. I’ve got to head out, ttyl guys have fun when the 50/50 turns out that this is an april fools. Or does anyone have a citation to where this decision is found out of patently-o? I notice Dennis has his copy stored right here on PO…

  100. “Think…. who has the time during work hours to write endless amount of comments and the guy is supposed to be overworked?”

    The guy that is taking a day off from work after the quarter just ended? Or maybe the guy that knows he’s going to be here deep into the night anyway, may as well spend an hour bsing and tack that hour on at 2 in the morning when he’s stopped caring about anything? Do remember, more than a few of these discussions have led to substantive differences in the way I examine. And lord knows JD’s education has been invalualolble. Actually I’m kidding, his and the other lawyers on here has been pretty valuable.

    That’s not to say that I’m not a propaganda machine, but then again, so are the rest of the posters on here. According to JAOI if a member of congress reads these boards we’re all now lobbyists!

  101. “It seems to me that someone claiming the grant of a public monopoly could be reasonably expected to (1) do their homework and (2) get their claim right the first time.”

    Big Hairy Rat,

    You make an excellent point. The “homework” that an applicant is supposed to do, however, is provide a clear description of how to make and use their invention. That’s the value they provide to the public in exchange for their limited monopoly right. It’s the patent office’s job to search the prior art and examine the claims.

    Getting the claim “right” the first time presupposes that there is such a thing as a “right” claim. There isn’t. Applicants draft claims based on their business needs and in light of the prior art that they are aware of and the law. Business needs change. Prior art changes (as new art is discovered). The law changes. That’s why, even in a world of perfect examination and infallible patent agents/attorneys, claims will still undergo changes as an application is prosecuted.

  102. MM- yes yes, I agree, they were a bit overbroad, but something has to be done, and they tried whatever they could while the Congress ho hums about what they can do. And yes, I realized the rules weren’t very beneficial to us examiners right around the time that I found out that (some) applicants are, allegedly (by the lawyers), so stupdd and/or ignorant, they wouldn’t be able to carry out and document a search OR would purposely mislead the search.

  103. “Weak points in the decision: (1) overbroad definition of substantive; (2)Please explain why you think it is “overbroad” and also what is (2)?”

    I’ll try to help you with this. Because under that definition used in the decision, even requiring the applicant, or other government agency petitioner etc. to fill out an additional form is “substantive” (it affects their obligations amirite?) and is thus unlawful for that administration to require. Clearly, all of the the agencies need this procedural authority in the conduct of routine procedure and it is not to be held unlawful based on such an overbroad definition just because it affects the applicant’s (etc.) obligations.

  104. “Does anyone know how likely senate aides are to take calls from rank-and-file patent attorneys (like me)?”

    12 angry patent attorneys,

    I’ve had good success getting returned phone calls from my Senators’ aides handling S 1145. One of their suggestions to add weight to the voice of an individual constituent is to send them information from a recognized State level IP organization. You might want to contact your local IPLA, for example.

  105. So, what’s next?–

    (1) The proposed IDS rules are put on ice? Is there any chance the PTO will disavow the substantive aspects of the proposed IDS rules and try to issue a narrower subset of “procedural” rules–e.g., keeping the additional disclosure requirements, but dropping the inequitable conduct safe harbor provision?

    (2) PTO appeals this opinion? Maybe some of the continuation rules could be deemed “procedural.”

    (3) Or, three–there’s a move to go to the Democratic Congress to try to get substantive-rule-making power for the Republican-run PTO?

    If I were Dudas, I’d pick the first and second options simultaneously (just to be a stinker).

  106. OK, so as a procedural matter, the rules were beyond the power of the USPTO because they dealt with substance. Moving to the substance of the underlying argument: why should a patent applicant be allowed to file without doing a prior art search and why should an applicant be allowed an indefinite number of continuations over an indefinite number of years?

    It seems to me that someone claiming the grant of a public monopoly could be reasonably expected to (1) do their homework and (2) get their claim right the first time.

  107. I said this and will say it again…

    6,000 is a propaganda machine of Dudas. Think…. who has the time during work hours to write endless amount of comments and the guy is supposed to be overworked?

  108. In citing the EUR 500 fee at the EPO for the 51st and succeeding claims, let’s not forget the geometric progression of feature combinations provided by “as claimed in any one of the preceding claims” effect. Question: how many claims do you need at the USPTO, to give the same number of permutations as you get with 50 claims at the EPO?
    Second question: is the USA the only country in the world unable to see multiple on multiple as nevertheless clear? Claim dependency reform anyone? US patent litigation reform anybody?

  109. Most examiners hated these rules from the get go and most are elated that they have been shot down. We only need to weather about 9 more months and these bozos are gone – thankgod.

  110. Dennis -

    I take issue with the title of this posting. There was nothing proposed about the rules at issue. They were made final and if not for the preliminary and now permanent injunction would have been enforced.

  111. “We’re down, but we’re nowhere near out.”

    6k, please refrain from lumping the rest of us examiners in with you. Most of us have a modicum of sense and realized these rules were a ridiculous overreach (and not beneficial for us examiners, either) from the beginning.

    As this entire administration winds up its time in office by going down in flames, I really think that if the Congress is leaning anywhere, it’s towards NOT granting federal agencies whatever powers they ask for…

  112. On to the Senate 6k – heres hoping you insipid insights into this case will presage a completely failure before the Seante.

  113. patent leather, I wouldn’t worry about that. For an example of appellate disparagement of district court opinions, see RLJCS Enters. v. Prof’l Benefit Trust Multiple Employer Welfare Benefit Plan & Trust, 487 F.3d 494, 499 (7th Cir. 2007).

  114. Dennis:

    – Weak points in the decision: (1) overbroad definition of substantive; (2) –

    Please explain why you think it is “overbroad” and also what is (2)?

  115. My concern is this:

    As I’m sure the PTO has been lobbying the Senate (much harder) since the decision was published, what will the new rules look like if the PTO is granted substative rulemaking authority? My guess would be that the PTO would come back with rules that basically say “You thought the previous rule set was draconian, try these on for size…”

  116. E6k has entered the building. *Crowd cheering and going wild*. E6k reviews what may be the most epically lulzable posting ever made by Dennis with due concern. First, grats on the scoop D (or april fools if such is the case). I’m perusing, and all I’m seeing that’s important is, Judge C determining that “substantive” rules are those that “affect[s] individual rights and obligations”. Hmmm, woulda thunk a judge would take the easy way out, and then write 26 pages of filler? Certainly not me.

    In any event, you are correct JD, ol’ judge C is smackin’ us down (if D didn’t). We’ll see about any appeal, but unless the appellate court is willing to start redefining “substantive rules” or that rules may be non-substantive if the substance is merely a result of a procedural rule change. That is, rules are not substantive if they do not directly address the substance of the issue (applicant rights and obligations), but instead are addressing purely procedural issues (must file additional forms etc.) as is taking place in this case. The only one I could see happening is the later, and that would be because the court wouldn’t be coutermanding its prior decisions and/or definitions, but would merely be clarifying them as per the usual thing that comes out of courts.

    In any event, as we’ve been disucussing, the patent reform renders this whole issue likely to be moot. Which btw, your claim that it was to be abandoned is wholly untrue and I’d like to see your source for such a claim.

    Finally, as stated above, if the congress sees this decision and doesn’t like it (kinda likely) it will merely grant the USPTO the authority. I saw a case of this government not liking how a decision went down and immediately drawing up legislation to overrule the decision in the following Assembly just the other day to my dismay (the ramifications affect me). Further, the 500 pound 50 claim fee might also do the same trick, fee making authority anyone?

    We’re down, but we’re nowhere near out.

  117. great news, but will this have any kind of nonbinding but persuasive affect on the Aristocrat abandonment case? I hope the CAFC finds some way to rule that that the USPTO has no power to make substantive rules, but that the unintentional revival rules are procedural or somehow within the USPTO’s authority.

  118. ‘Does anyone have any proposed language for a letter/e-mail to our respective senators re the Patent Reform Act (other than “please don’t vote for this because it’s bad”)?’

    We’re Going to Need a Bigger Boat, also check out:

    link to nipra.org

  119. On to the subject of killing patent “reform” …

    Does anyone know how likely senate aides are to take calls from rank-and-file patent attorneys (like me)? I called both of my senators, asked for the person handling S.1145 (per aipla’s suggestion), left very polite voice mails, and neither has called me back. I’ve never called a politician about anything in my life. Is this “call your senators …” strategy for real, or will they only take calls from the chief patent counsels of fortune 500 companies?

  120. TJ,

    Yeas, appeals will be filed and even if they are unsuccessful, legislation may be introduced. However, this is a good first step.

  121. As to the $1M per claim, that may be so punitive as being substantive, but how about the EPO charging 200 euros per claim after the first 15? (Next year that goes up to 500 euros per claim after the first 50.) Something like that may pass court muster and still limit the number of claims. Otherwise, we may see a return of the old “prolixity” objection.

  122. On to the Senate — Make sure to call your Senator and express your opinion on the Patent Reform Act and proposed substantive rulemaking authority for the PTO.

  123. Re the remaining rules not involved in this litigation, I find it quite difficult to conceive of any credible arguments that could be proferred by the USPTO to sustain their enactment in view of the analysis contained in the Court’s decision. They too seek to impose constraints that are clearly in conflict with unambiguous provisions of Title 35.

    It was refreshing to note that the Judge appears to embrace Justice Robert’s recently expressed view to the effect that judges should refrain from “over-judging”.

    Yes, perhaps “venue” will now shift from the courts to the Congress. I would hope that the contents of the decision, coupled with much of what was presented by amici, would help better inform certain member of Congress about the ramifications of many of the proposals contained in the pending legislation.

  124. Why substantive? Because it is too expensive? At what fee is it not substantive? (Of course, fees are set in the statute, which doesn’t help my argument).

    So, here’s a different question: is rule 56 substantive? I don’t see where the PTO gets the right to tell me I have to disclose anything. It’s not in 111-122 – any requirements in the application over those sections must be substantive, right? This is especially true with respect to materiality. Right?

  125. So all that energy I spent figuring out the proposed rules and educating my clients as to how to deal with them – gratis, of course – now prove to have been an utter waste of everyone’s time. Thanks a bunch.

  126. “Maybe the PTO should just charge a $1,000,000 fee for every claim over the 5/25 and every continuation past 2. Would that be procedural or substantive?”

    Substantive in the way you present it…

  127. Before we start popping corks — any bets on whether Commissioner Dumba$$ will be able to pursuade a “patently-clueless” Senator to introduce legislation to expressly give the USPTO authority to enact the new rules?

  128. Umm, what happened to appeal, de novo review, etc., all that stuff? Of course I will concede the district court comes down strongly GSK’s way, but this is just the first step in a very long process.

  129. The PTO’s hubris, lack of judgment and failure to work with the customer should also teach us that they also cannot be trusted with substantive rule making authority.

  130. My favorite language from the opinion, which also spells a potential death knell for the IDS rules:

    “[T]hese [ESD] rules go far beyond merely requiring additional information. Instead, the ESD requirement changes existing law and alters the rights of applicants under the current statutory scheme by shifting the examination burden away from the USPTO and onto applicants.” (at 23-24).

  131. Greatest thanks to Dr. Tafas (Kelley Drye & Warren) and GSK (Kirkland & Ellis) for their efforts!!

    Now to the rest of us, take a deep breath move on to stop S.1145. Please!! Or this will be the briefest of respites!

  132. James C. Cacheris is my hero! Now, if we can get some clarity as to whether the rest of the rules are going to go forward or not, that’d be great.

  133. Where is 6k and the rest of the PTO? Didn’t the PTO think these were great rules and had a 70% chance of flying through the court?

  134. I think today’s decision takes out the IDS rule as well, because the IDS rule – like the 5/25/ESD rule – shifts burden of proof.

  135. What does this mean for the Markush and IDS rules? Both might go down based on the breadth of this ruling…

  136. Well …

    I checked the date on the order …

    I won’t gloat -y-e-t- _until tomorrow_, e#6k.

  137. I was worried when I first saw this from a friend that it was April Fools. This is GREAT news for American innovation!!!!

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