In support of Tafas:
- AIPLA File Attachment: aipla.PDF (1020 KB)
- BIO File Attachment: bio.pdf (240 KB)
- Cantor Fitzgerald File Attachment: cantorfitz.pdf (376 KB) (rules improperly shift burden of proof)
- ELAN File Attachment: elan.pdf (7683 KB)
- Intellectual Ventures, et al. File Attachment: intven.pdf (936 KB)
- IPO File Attachment: ipo.pdf (1306 KB) (Undermining the principles of Knorr-Bremse, the rules force disclsoure of a “patentability opinion” in the form of an ESD)
- Lelkes, esq. File Attachment: lelkesprose.pdf (321 KB) (discussing how the rules would violate the PCT)
- Licensing Professionals File Attachment: licensingcos.pdf (1400 KB)
- Monsanto File Attachment: monsanto.pdf (243 KB) (provides a specific example of how the final rules will impact the company’s rights)
- NYIPLA File Attachment: nyipla.pdf (3313 KB)
- PhRMA File Attachment: phrma.pdf (263 KB) (discussing the financial impact of the rule change)
- SonicWall File Attachment: sonicwall.pdf (104 KB)
- William Mitchell File Attachment: williammitchell.pdf (1145 KB)
In support of the PTO:
- Law Professors File Attachment: lemley.pdf (510 KB)
- PubPat File Attachment: pubpat.pdf (149 KB)
The link to the Licensing Professionals amicus brief is actually to the pro se Lelkes brief just above it.
Your comments regarding the amicus brief filed by AOK and entered by the USCAFC on 1/15/09 would be appreciated. Sincerely AOK
Upon reading that case from Cooper Tech, it appears the PTO will not need the SCOTUS to win, and I doubt SCOTUS will grant Tafas cert.
If it goes to SCOTUS PTO wins the day. Mark my words. Scalia: “Substantive? Substantive my arse, remand this case to the DC for further proceedings knowing that procedural rules are not substantive rules. Smack the judge upside the head once for me too thx. What’s that? The app loses the “right” to infinite continuations? Where does he get this “right? I don’t see anywhere giving him that “right”. Jeez, the things these attorneys come up with, do they just sit around all day trying to make my job hard? First it’s the second amendment NOT giving the right to bear arms, even though it says so right in the amendment! Now it’s 35 USC giving a “right” to infinite continuations, when the word “right” isn’t even mentioned! What’ll it be next year?!”
9 to 0 unanimous. Mark my words.
On a side note. Can everyone share their methods of looking up cases? I found this one at the CAFC, but how do you guys get ones from the 50’s or before? Library?
In response to Mr. Mooney’s comments, applicability of Chevron deference to PTO rulemaking efforts is confirmed in Cooper Tech v. Dudas, 87 PQ2d 1705 (2008) where the CAFC cited the Tafas AMICUS BRIEF on behalf of the PTO. That’s right, the Lemley brief in Tafas v Dudas is being cited as authority in another CAFC decision before Tafas is decided. Does this tell you something about PTO “reasonableness” as viewed by the CAFC. In the Cooper case, the CAFC affirmed a PTO interpretation of “original application” in a statute (AIPA of 1999)?
In response to the comment by Curious, those are valid questions. If the PTO is acting outside of the Patent Act, Chevron does not really apply. However, if the PTO is interpreting words of Patent Act, such as “continuation”, then Chevron and Cooper are applicable. In Cooper, the CAFC specifcally says that under 35 USC 2, the PTO has authority to “govern the conduct of proceedings in the Office”. This is balanced by a citation of Merck v Kessler that a substantive rule that effects a change in existing law or policy that affects individual rights and obligations is not authorized.
I am not convinced that the “substantive” vs. “interpretive” analysis of the CAFC will stand when applied to policy, if policy means procedural consistency, (although OK when applied to law because the PTO cannot change law but it can change its mind on procedures as it has frequently done in the past on many matters). There is a lengthy and interesting justification in the Cooper case that will have a bearing on Tafas. SCOTUS will have the last word in this matter I believe.
Thomas Schneck
“(2) is the agency position reasonable?. The answer to (1) is No; the answer to (2) must be Yes.”
How can incomprehensible, impossible to apply, and/or internally contradictory rules be “reasonable”?
Thomas Schneck: please post any any comments you may have on AllSeeingEye’s statement: “did the agency have the statutory authority to effect the specific change and was the change consistent with the law”
Nice try Mr. Schneck, but Lemley’s Chevron analysis is, of course, self serving and specious. That congress gave the PTO rulemaking authority is not to say that any rulemaking exercise is deserving of Chevron deference. If so, there would be no need for Chevron since all rulemaking exercises could be considered as, de facto, within the scope of the authority. The analysis is more specific: did the agency have the statutory authority to effect the specific change and was the change consistent with the law. Even a tortured reading of the PTO’s rulemaking cannot escape the words of the statute affected, which the rules clearly contradict. And by the way, the Tafas brief exhaustively and masterfully deals with the Chevron issue.
You need to get out of your office a little more often. And you may want to consider relocating away from the left coast. Living on the left coast is notoriously bad for your general cognition skills, your patent law skills and your administrative law analysis skills.
Prof. Lemley et al. are correct IMHO. The importance of the Chevron case, 467 U.S. 837 (1984), in administrative law cannot be overemphasised. Its huge. Yet that case has been overlooked in many briefs opposing the PTO position. Those briefs merely echo the lower court position which is under review. The lower court completely missed the Chevron case. How the court did this, or how both counsel did not apparently argue the Chevron case is a mystery and blatant error.
The PTO studiously sidestepped U.S. v. Mead, 533 US 218 (2001), which limits Chevron, by providing an ample notice-and-comment opportunity. Therefore, Chevron applies and it sets out 2 tests:(1)did Congress address the issue in dispute – if so, the statute prevails; but if not, then (2) is the agency position reasonable?. The answer to (1) is No; the answer to (2) must be Yes. Therefore, the PTO position gets Chevron deference and the new rules are valid.
Very weak, but proper. Yup. That and $2.89 will get you a small latte at Starbucks.
Their procedural versus substantive argument is, admittedly, better. Unfortunately, it too is a loser. (Notice that I spelled that correctly. As I always do.)
If (or more likely when) the Fed. Cir. finds that the rules are substantive, that will not be a result oriented decision. It will be a legal determination based on the evidence. The PTO cannot avoid judicial review of their rules simply by labelling them as procedural. Their arguments in their reply brief are not persuasive on the issue of substance versus procedure. That will be clearly established at the oral arguments.
See you there.
pds, why do you think European Applicants need the PCT to protect their stuff in Europe? The EPC is enough, to cover 38 European countries and 600 million consumers. Sorry, no time to read the Lelkes Brief. Don’t interest me much. This whole New Rules saga is for me, as an outsider quite boring. I only saw by chance the gratuitous insult to MaxDrei (now repeated) and was dumm enough to reply. Anyway, isn’t Smith Kline Glaxo involved. Don’t they know the PCT?
“Your opinion is of little value. The Office was asked that exact question after the rules were promulgated and in their FAQ they confirmed that yes, the applicant would be restricted to 5 claims.”
I seem to remember that also. A shame I’m not the one making the rules isn’t it?
lol
Yes JD I’m aware that the inherent authority argument is very weak, none the less it is proper based on existing law (lolcaselaw). That doesn’t change the better argument about procedural v substantive which you require a results oriented decision to win.
“I can’t think of any way the new Rules will offend the PCT.”
Read the brief I referred to.
“You’re a patent attorney of a signatory country aren’t you. You should yourself know “YOUR” PCT, shouldn’t you?”
Most of my clients, rightfully, don’t want to waste their time/money going PCT and then national phase. Your clients, presumably in Europe, should have a much greater need for covering products throughout Europe and, thus, a greater need for going PCT. As such, I assumed you would have a greater knowledge of the intricacies of the PCT.
BTW — I would rather admit to my lack of knowledge about a particular subject than to pretend that I know more than I do like a few on this board (FYI, MadMax, this comment was not necessarily directed at you).
This in haste. pds wants an answer from somebody he calls MadMax. I will answer in his stead. The USA signs but then does as it pleases, as befits the dominant economy. I suspect it is as yet only pds who has thought of using the PCT as a stick to beat the new Rules with. But that stick has no striking power, has it? pds, tell me, who inside the USA is going to care two hoots if something in the new Rules offends the international obligations of the USA? And anyway, I can’t think of any way the new Rules will offend the PCT. I can’t think of any other country that has continuations. I can think of lots of other countries that impose fees on excessive claim numbers. Do you have something specific in mind. Why should my knowledge of PCT be greater than yours? You’re a patent attorney of a signatory country aren’t you. You should yourself know “YOUR” PCT, shouldn’t you?
JD –
Exactly. Neither do they explain why an examiner would make more mistakes if she examines 100 claims in one application verses 100 claims spread over 5 or 10 applications.
100 claims is 100 claims ain’t it?
I loved the discussion in the PTO’s reply brief that examiners make more mistakes as the number of claims rises. Of course, what they don’t say is that this alleged problem is caused by their failure to give the examiners more time to examine more claims. They also don’t mention that for the past 20+ years they’ve collected billions in extra claim fees on the theory that more claims require more examining resources, yet they taken the fees but never provided examiners, or applicants, what was paid for: more examining resources.
“Has anyone seen a discussion in any of the Amici of the absurdity of rule 75 preventing an applicant from taking all of his allowable dependent claims”
T, I haven’t seen any discussion of that ridiculous result of the absurd proposed rules. I think the focus has been on the larger absurdities of the rules.
Spacers :
Your opinion is of little value. The Office was asked that exact question after the rules were promulgated and in their FAQ they confirmed that yes, the applicant would be restricted to 5 claims.
The rest of your statement is admission that an ESD is required in all cases where more than 5 claims of any type are or might be filed, not just, as asserted in the PTO’s reply brief, when the number of claims gets so high that Examiners make mistakes.
“…as opposed to JD’s eventual affirmation that my interpretation was the correct one.”
LOL
Keep pushing that “inherent authority” argument from Bogese. But don’t be surprised if one of the judges does laugh uncontrollably when it’s brought up at the oral arguments.
It’s free to attend the hearing. Ties are not required. The hearing has not been put on the court’s schedule. Check their website each week. I’m predicting a packed house, so get there early.
“Although I write arguments all the time that I know an examiner will ignore, I do so knowing that I’m just setting the application up for appeal and either the arguments will be considered during the appeal conference or by the BPAI.”
Yes, this is the current state of prosecution. Sad, but true.
“I’m not sure I see the problem in your case T. ”
In a nutshell, so what if the applicant has lost his rights to 12 claims in a patent. I TOLD you that the Continuation Rules are merely procedural and have no substantive effect. Just because you prove me wrong, doesn’t mean I am wrong.
It all depends on what the definition of ‘is’ is.
To change topics, one of the more interesting briefs I read was the one by Lelkes. What the USPTO is proposing (either in the current rule package or in the patent reform bill) is very different than what is done in the rest of the world.
Considering that we (the U.S. of A.) are a signatory to the PCT, I’ve always wondered how these proposed changes impact our compliance with the PCT. I’m no international lawyer, so I’m not sure how we can reconcile our obligations under the PCT with this new rule package/patent reform bill.
Where is MadMax when his knowledge might actually be of some use?
“But enough about on, Tafas is v Dudas. Come come, perhaps you can tell me that my interpretations above are wrong and why, as opposed to JD’s eventual affirmation that my interpretation was the correct one. I appreciate not having to push for that one btw JD.”
The arguments have been rehashed here dozens of times. You just ignore them.
Personally, I have little doubt that the Federal Circuit will slap down the USPTO’s illegal power grab for what it is. Anything I would argue is already in the briefs, so if you want my arguments, just read them.
Although I write arguments all the time that I know an examiner will ignore, I do so knowing that I’m just setting the application up for appeal and either the arguments will be considered during the appeal conference or by the BPAI. However, since I don’t have that backup in this situation, I won’t waste my time.
I’m not sure I see the problem in your case T. They didn’t file an ESD. End o story. Although, it is my opinion that if that situation arises then they may as well allow the 17/0 and call it a day. I don’t think anyone at the PTO would have that big of a deal with that, they’re just sticking with the hardline so that people don’t make a bad ind just to connect 17 iffy deps to do that on purpose.
“you need to find better prior art.”
Nah. That prior art is likely “the best” prior art. How much better prior art do I need to find than “the best”? You will never convince me that art that is a 102b with a completely reasonably stretched out “on” is not as good as a three reference 103 ripe for “omg that temperature in ref 3 isn’t right”. Every rejection has its positives and its negatives. Well, except for a golden 102b I suppose.
Bottom line is. As evidenced by your slyness, if you argue those types of construction without amending, you’re asking for a final. No, I take that back, begging for one. Usually there’s some other arguments though, the claim construction is just one of many. So I get to go down the list one by one, saying either “nope” or “yep, but that’s irrelevant”.
“Also, like many examiners, you seem to focus on broadest interpretation while ignoring whether or not the interpretation is consistent with applicant’s specification”
And what if the part is “on” the other part as well as “directly on” in the spec? And, what if other part was on the top of the side surface as well as the top of the top surface? I’lll tell you what then, then we have an automatic reply that, if an RCE, is one of the majority of “unreasonable RCE’s”. Also, don’t lecture me about consistency with the spec, I do pretty well as is, and, I might add, that any discrepancies are fully accounted for in the “don’t import limitations into the claims from the specification” rule that governs us.
The house definition is a funny one, it’s always there, in the back of your mind, taunting you to use it ;p It’s one of those things you do in your last few weeks before leaving to a new job.
But enough about on, Tafas is v Dudas. Come come, perhaps you can tell me that my interpretations above are wrong and why, as opposed to JD’s eventual affirmation that my interpretation was the correct one. I appreciate not having to push for that one btw JD.
Lets all not wear ties and go to the oral hearings, maybe one of the judges will remind us that it is the FEDERAL Circuit. How early do you need to be to get in one of this fame? It’s free right?
Has anyone seen a discussion in any of the Amici of the absurdity of rule 75 preventing an applicant from taking all of his allowable dependent claims:
File 20 claims (3 independent 17 directly dependent
well within 5/25 so no ESD
Independents finally rejected, dependents allowable if placed in independent form.
But that would be 17/0 so applicant must give up 12 allowable claims…..
The PTO’s reply brief was filed yesterday. You can find on “Patent Docs”
“clark kent and superman? Come on pds, he puts on glasses and he’s got you fooled? I bet you’ll never see them in the same room.”
You must have missed my post where I wrote:
“Either you are a USPTO person that has drunk long and deep from the kool-aid, 6K, or completely ignorant as to how claim drafting works.”
“The terms that get disputed with me are things like ‘on’, when they mean ‘directly on’. And then there’s always ‘top surface’ when they said upper surface. Now tell me, is the upper part of a side surface not an ‘upper surface’? Who can forget ‘connected’ when they want ‘electrically directly connected’?”
Sounds like stuff from the semiconductor arts. I’ve seen those claim constructions before. Again, the examiner will construe the language to whatever will fit the prior art. Regardless, based upon all your claim constructions, should the applicant either win the claim construction at the BPAI or amend the claims, you need to find better prior art. Thus, if the applicant amends the claim, to clarify the limitation, which requires a new search, this is a legitimate use of an RCE to have the amendment entered.
Also, like many examiners, you seem to focus on broadest interpretation while ignoring whether or not the interpretation is consistent with applicant’s specification, reasonable, and consistent with the interpretation that one having ordinary skill in the art would reach.
Just because you’ve found a dictionary definition (e.g., the house was !on! the lake) that supports your claim construction does not mean that one having ordinary skill would also have that claim construction (e.g., the sidewall spacers is !on! the LDD region).
Mark Lemley and Arti Rai are having a few seconds of shamlessly self promoted fame based on the recent few years of radical anti-patent hype from the left coast. I predict Lemley and Rai will fade into insignificance once the Federal Circuit rules in the Tafas v. Dudas case and patent law is returned to its natural state of sensibility (and once anyone gets a good look at their pictures). With all due respect, Lemley should doing ads for Pillsbury, and Ms. Rai should be promoting the world iron-cage spelling bee.
“Also,while I agree that “this” is substantially overused in the Monsanto brief, it can be used properly, especially if not using it would require a relatively long descriptive string to be used instead.”
I disagree Mr. Bloom. String substitution may work in computer programming, but in written language, which is exposed to an infinite number of “compilers” e.g. readers, one should place a higher value on avoiding ambiguity than the convenience of the writer. If one writes well, there is no need for the word “this.” The possible exception I might make is when, such as in a Federal Circuit opinion, you see the word “this” referring to “this court.” In cases when the court is referring to itself, I prefer “we.”
Thank you Roger Karp, its more of an issue of the confusion created between it’s as a contraction of it is, and it’s as the possessive form. Since there would be confusion any way you slice it, more discriminating linguist, such as yourself, have realized that its better to drop the apostrophe all together. Not surprising that Mooney is not on the cutting edge of language.
This whole discussion (above) strikes me as class warfare in disguise — lots of pedantic, gasbag like analysis.
All very impressive nevertheless
Morton’s? If you offer the dinner to the judges they’ll probably results oriented decide this one (I mean who really cares what the law says when good steak is at hand?).
“”An examiner will construe claim language as broadly as will permit the examiner to reject a claim based upon the prior art available to the examiner.””
While a good rule, and one that the fed circuit should consider implementing here shortly, that’s one that I rarely have to utilize. I will admit, when I was in the academy for the first few weeks of production I was grasping at any straws necessary to get deps. Now, meh, they’re usually just not even that hard. The rule of thumb I’ve found is that if you stick to the art that is reasonably within fairly small niches then construction doesn’t really come up. I will admit that I meet the claim limitations in some ways that nobody would have ever anticipated (especially deps) having happened, but they none the less follow the claim terms in the way the applicant meant them. To be honest, I haven’t had a technical term like server or host etc. argued … ever? that I can recall. The terms that get disputed with me are things like “on”, when they mean “directly on”. And then there’s always “top surface” when they said upper surface. Now tell me, is the upper part of a side surface not an “upper surface”? Who can forget “connected” when they want “electrically directly connected”?
“I cannot wait until the USPTO asks for the first-named inventor’s first born son when filing an application. Since the USPTO can make their own rules without judicial intervention and since this serves an important purpose of reducing backlog by reducing the total number of applications being filed (an inventor can only have 1 first born son, thereby limiting first-named inventors to only a single application). I cannot wait to see how random and 6K extoll the virtues of a such a new rule at the USPTO.”
At the rate filings are going up we may have to start recruiting the old old fashioned way…
“random and 6K”
clark kent and superman? Come on pds, he puts on glasses and he’s got you fooled? I bet you’ll never see them in the same room.
Steak and seafood for 2 only 99$…
link to mortons.com
I may have to take my fam out sometime.
I’m going to go pick out a lame calf on my amended docket and slaughter it right fast, get a leg up on tomorrow.
“Also, pds, I should tell you that the number of applications where the meaning of claim terms comes into meaningful question is pretty low.”
You must not work in the art units I do.
I still remember when the examiner tried to explain to me that the prior art’s server anticipated my client and the prior art’s client anticipated my server. Actually, come to think of it, there was no explanation involved. This wasn’t the most egrigious example — it is just an example that some people can easily get.
Mind you, this is just directed to the computer arts. I’ve seen some whoppers in the mechanical arts as well. Claim construction comes into play (by my rough estimate) over 50% of the time in the applications I prosecute.
Forget old case law about claim construction, the new rule (since the USPTO gets to make its own interpretations now) is the following:
“An examiner will construe claim language as broadly as will permit the examiner to reject a claim based upon the prior art available to the examiner.”
BTW: I cannot wait until the USPTO asks for the first-named inventor’s first born son when filing an application. Since the USPTO can make their own rules without judicial intervention and since this serves an important purpose of reducing backlog by reducing the total number of applications being filed (an inventor can only have 1 first born son, thereby limiting first-named inventors to only a single application). I cannot wait to see how random and 6K extoll the virtues of a such a new rule at the USPTO.
“Tell you what, why don’t you call your buddy Mr. Dudas and have him clear his calendar around February/March of next year when the decision will probably be issued. If the Fed. Cir. rules for the PTO, lunch will be on me.”
Forget lunch, if the Fed. Cir. rules for the USPTO, I’ll buy dinner at Morton’s.
Regardless, this is a bet I won’t be worried about.
Hey Bunny, I was supposed to say that. Goback to your whole.
So was I, thanks.
JAOI,
I was taking dramatic license. 🙂
JD
Dear Mr. JohnDarling,
No one gets it right all the time, not even the venerable Honorable Judge Newman. Even she can screw it up big time and write a shameful result oriented decision.
Heck, even I screw up sometimes(õ¿)!
“…even Newman in her dissent acknowledges and forcasts what was to come from the decision.”
Even J. Newman, in her infinite wisdom, could not have predicted the unprecedented and unlawful power grab by the PTO that is the continuation and claim examination rule package.
She was correct though that giving the PTO power it clearly doesn’t have was unwise.
“I will try to make it to oral arguments (just because I’ve always wanted to go to one)”
Generally speaking, they’re not that exciting.
But this one should be interesting. Assuming you consider human sacrifice of the poor schlub tasked with arguing the PTO’s dog case to be interesting.
“Further proof that J. Newman always gets it right.”
So, J Newman understood that my interpretation is the correct one, and she fights against it. Yet, you’re standing there merely saying my interpretation is “wrong” which she plainly does not.
Also, pds, I should tell you that the number of applications where the meaning of claim terms comes into meaningful question is pretty low. But, it would be my opinion that if the claims are wildly interpreted or something of that nature then you would at least have grounds to make a decent petition. But, at the same time, you did have one amendment already right? Why hasn’t this been resolved by now? Two wild interpretations back to back? Now we’re approaching having to ask if your drafting might be a little sloppy.
Dear Random,
Re: “The PTO mgmt takes a different position and they happen to be the ones with the authority to change things.”
Mr. pds is right. Please see the bottom portion of this comment:
link to patentlyo.com
And, if it captures your interest, here’s more:
link to patentlyo.com
“For case law to have any effect, the facts of the case have to bear some resemblance to the facts at issue. Bogese fails miserably on that requirement.”
I’ll agree with the first part, but come on man, even Newman in her dissent acknowledges and forcasts what was to come from the decision. How much more relevant does a decision have to be then where the dissenting judge spells out what “bad” thing is going to happen later on because it will be supported (properly) by the decision of the day.
Dudas will probably have moved back to where ever it was he came from, but I will try to make it to oral arguments (just because I’ve always wanted to go to one) and I’m sure you won’t be hard to pick out. Leave a seat open and you may meet 6k.
In any event, yes I agree that the facts in the case are far from what is transpiring, but everyone involved in the case seems to have realized what they were holding. And that it went beyond what they may have needed to in order to take care of the case. “laches” would have sufficed.
“I wouldn’t talk though mr. loose (lose). Yes I remember the time you misspelled it not once, not twice, but three times in one small posting. If we’re going to pick nits though I can pick as well.”
I must have been quoting one particular 23+ year examiner who always spells “lose” as “loose.” I’m well aware of how to spell lose.
“Also, note Newman’s dissent in borgese, she is specifically railing against the interpretation I am putting forth.”
Further proof that J. Newman always gets it right.
I always do that, I notice it every time I read the word but I always forget. They should just call it latches imo.
I wouldn’t talk though mr. loose (lose). Yes I remember the time you misspelled it not once, not twice, but three times in one small posting. If we’re going to pick nits though I can pick as well.
“You must have missed the discussion on the separation of powers in your social studies class during grade school.”
Or you must have missed the discussion on the executive branch actually having powers (rather than your purported lack thereof) while I was off to the playground having already heard the seperation discussion a few times already. FYI, as noted very well in Zurko iirc administrative agencies do indeed have powers over their respective areas.
BTW 6k, it’s “laches” not “latches.”
I have to disagree with pds, you’re not quite ready for your second semester just yet.
“JD finds it easy to laugh off…what I put forth…”
Yes I do. But you make it so easy.
Bogese simply doesn’t support the PTO’s position. It is so fact specific as to be useless. For case law to have any effect, the facts of the case have to bear some resemblance to the facts at issue. Bogese fails miserably on that requirement.
You should know that. Especially considering that you told me you understand our common law system quite well.
I’m quite sure the Fed. Cir. is going to laugh off the PTO’ reliance on Bogese also. Not to their faces, but in chambers. But maybe I’ll attend the oral arguments just to see if one of the judges loses control and breaks out in hysterical fits of laughter.
Tell you what, why don’t you call your buddy Mr. Dudas and have him clear his calendar around February/March of next year when the decision will probably be issued. If the Fed. Cir. rules for the PTO, lunch will be on me.
LOL
Also, note Newman’s dissent in borgese, she is specifically railing against the interpretation I am putting forth. Not an interpretation specifically directed to latches. She knows what was being put forth and was being used as the basis for the ruling. In fact, she specifically states that with this holding the pto had accomplished what it was forbidden to do by a previous binding precedent in Henrikson, although it seems the precedent in Henrikson was a bit different than her sound byte reveals.
“In the Bogese application the Patent and Trademark Office accomplishes what has been explicitly prohibited to it. The PTO does not have the right to adopt administratively a position that has been expressly denied by binding precedent. In In re Henriksen, 55 C.C.P.A. 1384, 399 F.2d 253, 158 USPQ 224 (CCPA 1968) the court held that “there is no statutory basis for fixing an arbitrary limit to the number of prior applications through which a chain of copendency may be traced to obtain the benefit of the filing date of the earliest of a chain of copending applications, provided applicant meets all the other conditions of the statute.” The patent examining process is a creature of statute, and operates on the premise that the inventor is entitled to a patent if the statutory requirements are met. 35 U.S.C. § 102 (“A person shall be entitled to a patent unless — ….”). The court today extends to patent examiners a new power to deny a patent on the ground that the applicant dawdled too long in prosecution.”
Newman goes on to remark specifically:
“The majority remarks that the PTO has the right to promulgate rules for the prosecution of patent applications, and indeed it does. However, there was here no agency rule-making, no public notice and comment period. The avoidance of rulemaking procedures has been fairly criticized. See Comment, The Exceptions Process: The Administrative Counterpart to a Court of Equity and the Dangers it Presents to the Rulemaking Process, 30 Emory L.J. 1135, 1165 (1981) (“Congress has demonstrated a sensitivity to the need for public participation in the development of law by agencies both in the APA and in the increasingly rigorous rulemaking standards imposed by recent statutes.”)”
“The majority remarks that the PTO has the right to promulgate rules for the prosecution of patent applications, and indeed it does.”
And now such rulemaking has taken place. Even though it is Newman’s opinion it is the realm of the legislature to make these changes, and her opinion that such rulemaking would be improper, never the less it is what has occured.
Anyway I should probably look over another one of these perfectly reasonable RCE’s I have on my docket. First action final anyone?
“The PTO mgmt takes a different position and they happen to be the ones with the authority to change things. In other words, just because your explaination might be reasonable to me or to you, or to a judge, it does not make it reasonable to the PTO mgmt and they are the only ones that count by previous judicial decree.”
You must have missed the discussion on the separation of powers in your social studies class during grade school.
Scary, just scary.
“Nobody is asking for perfection. Perhaps, just perhaps, if you had a case of the examiner wildly interpreting a claim term and pulling random art to reject, then you might get an RCE. What the pto has asked for is 1 thing. Provide a full range of the possible claim scopes you would a. like and b. accept. This is not hard, nor is it impossible to do at the outset.”
When you say “perhaps, just perhaps,” are you implying that when an examiner wildly interprets a claim term or pulls random art to reject that perhaps an RCE would not be justified?
Either you are a USPTO person that has drunk long and deep from the kool-aid, 6K, or completely ignorant as to how claim drafting works.
Forget the prior art, we are working with English (in the USPTO), which (like all langugages) is imperfect and nuanced. Combine that reasonable people and differ on the broadest reasonable interpretation of a particular claim term with English being a 2nd language to many patent examiners at the USPTO and what us patent practitioners often get is claim constructions (explicit or implicit) that are very different from how we would interpret the language of the claims.
Just clarifying the language takes time and frequently does not happen after just a single action. Remember, applicants only have a right to amend once. Per normal PTO procedure, most 2nd OAs are final and amendments are very, very, very rarely entered after the 2nd OA.
How about this … I’ll make a deal with you … if the USPTO gives me the BEST prior art in the first office action and the USPTO explicitly gives me their broadest reasonable claim construction for all of the terms, I’ll present claims after the first office action that should be allowable.
However, to coin a phrase … it ain’t gonna happen.
“However, there is judicial action which specifically states that the PTO has the inherent authority to determine how long this option can be exercised.”
Under a VERY specific set of circumstances. Let me refer you to M.P.E.P. 2144, which includes a statement that”
“The examiner must apply the law consistently to each application after considering all the relevant facts. If the facts in a prior legal decision are sufficiently similar to those in an application under examination, the examiner may use the rationale used by the court.”
Although this discussion was in reference to 103 rejections, this concept applies to all rejections at the USPTO. You can apply case law when the facts are sufficiently similar to the facts presented in the case law. Determining what facts are relevant, what facts are not relevant, what is sufficiently similar, and what is not are things that lawyers (of all ilk) do every day.
That being said, my guess is that the percentage of pending applications that have facts similar to the fact pattern in Bogese is somewhere around <0.0001.
If you are relying upon Bogese to support your positions, then best of luck, as you are really going to need.
Also, I would like to add, that, just like the attorney I had to contact recently about a case, JD finds it easy to laugh off (or argue against without actually saying anything of substance) what I put forth until pressed to finally deny or affirm each peice of my analysis. This usually results in eventual affirmation. I’m not going to bother pressing any further today though.
“For all of you out there (which includes me) that wonder about whether academics like Lemley and Rai are in touch with the “reality of patent practice”, just consider the unpleasant thought that these two individual are two key advisors to Obama on IP matters.”
Worrying about the effect tbat an Obama presidency might have on the degree to which two academics are able to influence patent policy is absurd.
“It’s also looking like Obama (not my choice by the way)”
LOL. Just for laughs, I’m going to assume you’re voting for McCain. Can I ask what difference minor changes in patent policy will have on the health of this country if the rest of McCain’s policies are put into action? Rhetorically, of course. McCain’s policies would quickly become Palin’s policies after McCain’s inevitable stroke, cancer, or Alzheimers ends his presidency prematurely. Think about that.
In any event, you’re correct: Obama is going to win and with any luck America will have a chance to crawl out of the toilet where Bush and his gleefully ignorant base have left it.
“For all of you out there (which includes me) that wonder about whether academics like Lemley and Rai are in touch with the ‘reality of patent practice’, just consider the unpleasant thought that these two individual are two key advisors to Obama on IP matters.”
I just noticed that today when I was surfing the links of other patent blogs that were recently posted. It gave me shivers when I read it.
By all means JD, tell us what is meant by the blatant “well 1.111 doesn’t apply but the pto has the authority, beyond the authority to deny apps that would fail at a DC due to latches, to determine deadlines etc” portion if not exactly that.
“Spoken like somebody who’s never done it.”
True, but I’ve yet to recieve an amendment that couldn’t have been drafted at the outset with little trouble. Perhaps a case somewhere exists where it couldn’t have been, but I haven’t seen it. Maybe that case gets +1 RCE?
Also, to the person above that says that it is the dicta that is speaking about the USPTO’s authority needs to reread the decision. It is not dicta, it is the specific basis they decided for the USPTO on. They said that the 1.111 argument the PTO was relying on didn’t amount to squat, and that the authority it would have to squash apps before they make it to being squashed by a DC for latches is inferior to the inherent authority they have to set reasonable deadlines and procedures.
Also, it appears mine is the same opinion as the pto’s.
“What the pto has asked for is 1 thing. Provide a full range of the possible claim scopes you would a. like and b. accept. This is not hard, nor is it impossible to do at the outset.”
Spoken like somebody who’s never done it.
When, or should I say if, you ever get to that monstrous firm, 6k, you’ll find out it ain’t so easy.
To your credit though, your interpretation of Bogese is equally as silly as the PTO’s. Maybe you can transfer to the solicitor’s office.
Dear Mr. this space intentionally left blank,
I wish I’d thought of that – very appealing indeed.
pds asked, “Really, where do people come up with these inane ideas?”
… from PTO managers who have no substantial private practice experience.
random wrote, “The PTO takes the position that a reasonable application will provide a slew of ind’s covering the full range of protections which the applicant may wish to pursue so that all issues are taken care of up front. Is that so unreasonable?”
Yes. It is unreasonable when the claim fees are structured to discourage (if not prohibit) the drafting of a full set of independent claims and when examiners routinely blow off dependent claims.
“Link to Bogese II, 303 F.3d at 1368 (which is apparently the same one as 1362 which I don’t really understand). Otherwise known as In re Bogese, 303 F.3d 1362 (Fed. Cir. 2002)”
I’ll give you credit for admitting (for once) that you don’t understand something. The opinion, as published in the 3rd Federal Reporter (F.3d), begins at page 1362. The “at 1368” gives you a “pinpoint” citation telling you exactly which page the citation is pointing to. The first time you cite the case you give the full citation, plus the pinpoint (if appropriate), e.g., In re Bogese, 303 F.3d 1362, 1368 (Fed. Cir. 2002). Later you can simply say Bogese at 1368.
There, now you’re ready for the 2nd semester of law school. When scheduling courses for second year, consider taking Administrative Law. Professor Rai sometimes teaches it at Duke, if you’re interested.
For all of you out there (which includes me) that wonder about whether academics like Lemley and Rai are in touch with the “reality of patent practice”, just consider the unpleasant thought that these two individual are two key advisors to Obama on IP matters. It’s also looking like Obama (not my choice by the way) will win the presidential election come November 4. That means that folks like Lemley and Rai may have an even greater say on how our patent system should work and particularly whether it should be modified to restrict the number of continuations, claims, RCEs, etc. (admittedly I’m nauseated by this thought). So while GSK/Tafas might win the “battle” on this, we who want a patent system that deals with the “reality” of patent practice may still lose the “war.” What that means is we’ll need to be very vigilant (and vocal) about: (1) who is the next Director/Deputy Director of the USPTO; (2) who will sit on the Federal Circuit bench (remember that we’ve got a number of Federal Circuit judges who could take Senior status); and (3) what Congress might propose in terms of patent legislation, including granting authority to the USPTO to do what they cannot do now in restricting the number of continuations, claims, RCEs, etc. (HR. 1098 and S. 1145 might become the “reality” in 2009). Not a happy thought to consider for 2009 and onwards, but something that we who take the “reality” of patent practice seriously have to be ready for.
random, you slid past the holding in Borgese and landed in its dictum. Borgese means that the PTO is allowed to apply a judicially created rule to reject a patent application.
“An applicant is not going to knowingly write perfect claims unless: (i) applicant has perfect knowledge of the prior art and (ii) applicant knows how the examiner is going to interpret the language of the claims. Also, this completely ignores the impossibility of predicting how an examiner may cobble together multiple references to form a 103 rejection.”
Nobody is asking for perfection. Perhaps, just perhaps, if you had a case of the examiner wildly interpreting a claim term and pulling random art to reject, then you might get an RCE. What the pto has asked for is 1 thing. Provide a full range of the possible claim scopes you would a. like and b. accept. This is not hard, nor is it impossible to do at the outset. It is time consuming, AT WORST. Saying otherwise is revealing wilfull stupdity on your part PDS.
“The patent system has long contemplated that the determination of patentability is not a single test where pass/fail are the only options. Instead, the determination of patentability is a PROCESS that involves two actors, the examiner and the applicant, who work toward a common goal of drawing the proper line between the prior art and what applicant considers to be the invention.”
I agree, but strangely enough, the statutes say nothing of any of this that I’m aware of. The statutes provide the OPTION of engaging the drawn out “process”. And there is no garuntee in the statute that this option can be exercised forever. However, there is judicial action which specifically states that the PTO has the inherent authority to determine how long this option can be exercised.
Also, it seems to me that many applicants wouldn’t knowingly draft a good claim up front even if all your factors were met pds. It is quite often that I run into the situation where the applicant knows up front that all claim elements are known (and not just some weird interpretations of the claim elements) and merely wish to argue about obviousness, which I am obliged to do.
“The definition of “reasonable” is not whatever the USPTO can dream up (e.g., claim construction, intrepretation of law, etc.) which allows the USPTO to reject an application.”
My definition of reasonable is my own thanks pds. And it is a generous definition of reasonable. Yet applicants routinely fail even that. Frankly if the system weren’t so overburdened I’d be ashamed of the prosecutors. Remember pds there are two of us here, one of us sees mostly responses drafted by ourselves and other associates whom we are familiar with and the other sees responses from randomly picked prosecutors. Which one probably has a better view of the overall population?
btw pds, what is your opinion, could the examiner’s way of summing up the actions in borgese be applied to any application that goes to RCE?
Link to Bogese II, 303 F.3d at 1368 (which is apparently the same one as 1362 which I don’t really understand). Otherwise known as In re Bogese, 303 F.3d 1362 (Fed. Cir. 2002)
link to altlaw.org
I put this here so others can look it up in google easier.
‘On the contrary, the filing of an amendment with an RCE (necessary unless you want the next action to be final) is a reasonable explanation.”
That is merely your opinion btw (also the opinion of many others (judges etc.) whose opinions are just as relevant as yours, that is, not relevant at all to this discussion). The PTO mgmt takes a different position and they happen to be the ones with the authority to change things. In other words, just because your explaination might be reasonable to me or to you, or to a judge, it does not make it reasonable to the PTO mgmt and they are the only ones that count by previous judicial decree. Would you not agree that this is the way of things? Are they not the deciderers (lol)?
“As for ‘unexplained’, nobody has of yet explained what possible reason(s) one might have for not presenting claims up front. There simply is none. You have the ability to claim the invention in nigh on infinite ways.”
The more one plumbs the depth of this post, the more idiocy one finds. I’ve made these points time and time and time and time again, but they bear repeating.
An applicant is not going to knowingly write perfect claims unless: (i) applicant has perfect knowledge of the prior art and (ii) applicant knows how the examiner is going to interpret the language of the claims. Also, this completely ignores the impossibility of predicting how an examiner may cobble together multiple references to form a 103 rejection.
Based upon this imperfect knowledge, it is UNREASONABLE to expect that applicants will have perfect claims at the time of filing. Moreover, since (in many instances) the best prior art isn’t discovered until later in prosecution and the likelihood of an examiner providing at least one explicit claim construction for any claim term at anytime during prosecution is probably less than 15%, it is UNREASONABLE to expect that applications will have perfect claims (or at least allowable claims) even after a couple of actions have issued from the USPTO.
“The PTO takes the position that a reasonable application will provide a slew of ind’s covering the full range of protections which the applicant may wish to pursue so that all issues are taken care of up front. Is that so unreasonable?”
See above.
“Good” claims don’t just magically appear at the beginning of prosecution. If they are there, it is more a matter of luck than anything else. Instead, good claims (which draw the line between the invention and the prior art) are a result of the collaberation between applicant (who knows the invention) and the examiner (who knows the prior art). Once the examiner has a better feel for the invention, the applicant has a better feel for the prior art, and the examiner and applicant can agree on terminology (and the meaning thereof) that describe both, THEN good claims can be agreed upon.
The patent system has long contemplated that the determination of patentability is not a single test where pass/fail are the only options. Instead, the determination of patentability is a PROCESS that involves two actors, the examiner and the applicant, who work toward a common goal of drawing the proper line between the prior art and what applicant considers to be the invention.
Monsanto’s brief is soooo funny. “Hey guys, we made this totally awesome tech and we claimed it poorly in the first application!” “We planned to claim it poorly in the first application as our strategy!” “We should be able to execute our bad plan, just because the rules to curtail our type of bad planning were not in place!” “Also, our job of drafting claims is hard QQ QQ!” “We don’t want to explain why we can’t provide an ESD because that would destroy our case!”
On a more serious note, Monsanto argues that Borgese II is extending prosecution history latches only. Upon review of Borgese, at least the one 303 F.3d 1362 it becomes painfully apparent that indeed latches is discussed as a basis for it’s opinion and then tossed to the wind in favor of discussing PTO authority.
The way the primary examiner put it sums up the facts of the case:
“Applicant has pursued a deliberate and consistent course of conduct that has resulted in an exceptional delay in advancing the prosecution and the issuance of a patent. The record shows that a decision by the Court of Appeals for the Federal Circuit dated March 16, 1987, for application XX-XXX-XXX, which is a continuation of XX-XXX-XXX, filed June 14, 1978. Subsequent to the above CAFC decision, Applicant has filed 11 patent applications in which Applicant has clearly made no attempt to advance the examination of the claimed invention. The effect has been to postpone the issuance and term of a patent that it would appear that applicant has always intended to secure. Applicant has deliberately postponed meaningful prosecution, deliberately postponed the grant of any patent to which he may be entitled, and deliberately postponed the free public enjoyment of any invention on which a patent may have issued. These deliberate actions are an evasion of the patent statute and defeat its benevolent aim. Woodbridge v. United States, 263 U.S. 50, 44 S.Ct. 45, 68 L.Ed. 159 (1923).”
Funny enough however, that can be applied to every case that has ever gone to RCE.
This passage:
“Whatever the views of the individual panel members concerning the correctness of our decision in Symbol Technologies, we are nonetheless bound by it, and we see no basis for denying the power to the PTO itself that we have recognized exists in the district courts in infringement actions. It necessarily follows that the PTO has the authority to reject patent applications for patents that would be unenforceable under our holding in Symbol Technologies.
23
Indeed, we think the PTO’s authority to sanction undue delay is even broader than the authority of a district court to hold a patent unenforceable.5 The PTO is the administrative agency that is “responsible for the granting and issuing of patents….” 35 U.S.C. § 2 (2000). Like other administrative agencies, the PTO may impose reasonable deadlines and requirements on parties that appear before it. The PTO has inherent authority to govern procedure before the PTO, and that authority allows it to set reasonable deadlines and requirements for the prosecution of applications.”
is unmistakable. It is not taken out of context, it is the context in which the court squarely put it’s holding. The “preamble” if you will, to this context was about latches, but clearly there is no mention of latches here.
You notice the footnote 5 which reads:
“Although the PTO, both in the Board decision below and in its brief on appeal, relies on 37 C.F.R. § 1.111 as supporting its action,Ex parte Bogese II, slip op. at 37, n.14, 818 F.2d 877, Appellee’s Brief at 4, 18, 38, 43, 49, and 50, that section appears to be inapplicable here. That section provides “[t]he applicant’s or patent owner’s reply must appear throughout to be a bona fide attempt to advance the application … to final action.” 37 C.F.R. § 1.111(b) (2001) (emphasis in original). The cited section, both as it existed in 1995, and currently, applies to replies to Office actions. See 37 C.F.R. § 1.111(a) (1995) (“After the Office action, if adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply thereto and may request reconsideration or further examination, with or without amendment.”); 37 C.F.R. § 1.111(a)(1) (2001) (“If the Office action after the first examination (§ 1.104) is adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply and request reconsideration or further examination, with or without amendment.”). Section 1.113 effectively defines a reply as including an appeal, amendment, or petition. See 37 C.F.R. § 1.113(a) (2001) (“On the second or any subsequent examination or consideration by the examiner the rejection or other action may be made final, whereupon applicant’s, or … patent owner’s reply is limited to appeal in the case of rejection of any claim (§ 1.191), or to amendment as specified in § 1.114 or § 1.116. Petition may be taken to the Commissioner in the case of objections or requirements not involved in the rejection of any claim (§ 1.181).”) However, a file wrapper continuation application, governed by section 1.60 of the 1995 regulations, is not included with the definition of a reply. While section 1.111 recognizes the general requirement of good faith in prosecution, its terms are not directly applicable to file wrapper continuation applications.”
Where in Bogese the court specifically says that 1.111 does not appear applicable, but they feel the PTO has the authority anyway. In fact, there opinion is that specifically the PTO has a broader power than that of the power to reject applications that would fail at the district court later under latches. Specifically they hold that the PTO is the agency that is responsible for granting and issuing of patents and that like other agencies the PTO may impose reasonable deadlines and requirements on parties that appear before it and that it has inherent authority to govern procedure before it. Finally they hold that this inherent authority, not any other authority under latches etc., is what enables the pto to set reasonable deadlines and requirements for the prosecution of applications.
How a judge could even possibly read this any other way than: “We the court in borgese hold that the PTO has the inherent authority to impose deadlines and that authority allows it to set reasonable deadlines and requirements for the prosecution of applications” is beyond me.
Also, footnote 6 of Borgese is of no benefit to Monsanto.
Maybe just give all “grandfathered” applications that want inf extra RCE’s one extra one to put them on equal footing with everyone else who isn’t grandfathered and then all is right with the world.
“Besides all that, you are sorely, sorely, mistaken if you believe that the ‘majority’ of RCE’s are ‘reasonable’. A fair amount perhaps, but by no means a majority. Barely any (20%-?) are ‘reasonable’ if we factor in ‘ordinary skill in the art’.”
Put away the USPTO propaganda crack pipe. The definition of “reasonable” is not whatever the USPTO can dream up (e.g., claim construction, intrepretation of law, etc.) which allows the USPTO to reject an application.
The fact pattern of In re Bogese not only was extremely usual, there was no reasonable explanation for the delay.
On the contrary, the filing of an amendment with an RCE (necessary unless you want the next action to be final) is a reasonable explanation.
Really, where do people come up with these inane ideas?
For you grammar geeks out there:
“Its” is a perfectly appropriate possessive unless you are an anal retentive patent lawyer, as long as it is 90% or more clear what the it refers to. “Its” contains no apostrophe unless “its” is short for “it is” and I have generally been taught not to use contractions in formal documents.
Also,while I agree that “this” is substantially overused in the Monsanto brief, it can be used properly, especially if not using it would require a relatively long descriptive string to be used instead.
“The key phrase in the Bogese decision is the unreasonable and unexplained delay. I assume that most continuation / RCE filings are reasonable and explainable.”
I agree with you, that is the key phrase. Also, one must remember that “reasonable” is in the eye of the beholder. The PTO takes the position that a reasonable application will provide a slew of ind’s covering the full range of protections which the applicant may wish to pursue so that all issues are taken care of up front. Is that so unreasonable? I hardly think it is. It is entirely reasonable. Picture claim for no. 1. Take out some limitations for no. 2 take out a few more for 3 etc. until you arrive at the overclaim you would have otherwise filed. How hard is this? Not hard. It may take one whole billable hour more. May. In a big case. Thus, considering this reasonable behavior, applicant’s submitting only overclaims are behaving “unreasonably”. I have to say that at least to some degree I concur with the PTO mgmt, and it is their decision to make. As for “unexplained”, nobody has of yet explained what possible reason(s) one might have for not presenting claims up front. There simply is none. You have the ability to claim the invention in nigh on infinite ways. The only thing wrong with this is it forces the applicant to take some responsibility for not submitting only garbage up front and expecting the PTO to play back and forth to sort it out.
Then we look to the limits no claims. Easily delt with. A simple search and “Reverse Office Action” type report on the search suffices perfectly.
Besides all that, you are sorely, sorely, mistaken if you believe that the “majority” of RCE’s are “reasonable”. A fair amount perhaps, but by no means a majority. Barely any (20%-?) are “reasonable” if we factor in “ordinary skill in the art”.
Once again we see the vast disparity between those who practice in this field and those who don’t. Lemley clearly has never prosecuted a patent in his life and has no grasp of the practical aspects of the new rules (or ignores the PTO’s own statements about how the rules will be applied – no continuation EVER).
The quality issue (alternately appeal/RCE issue), in my view, will never be resolved until there is a mechanism to make sure that the examiner (and perhaps the primary) actually believe that the rejection is solid before making it final (i.e., doing their job).
Presently the only tangible benefits for an examiner appear to be provided when they reject an application (a final disposition – abandonment or allowance providing one count, an RCE for 2 counts). Increasing the counts for allowed applications does not solve the problem of milking the application for RCEs.
Thus, it seems to me, a stick is needed in addition to the carrot. I believe that providing consequences for examiners (and perhaps primaries) whose appealed cases result in reopening of the prosecution may be necessary. The easiest way to do this is to remove a count for these examiners every time an appealed case is reopened. Better yet, couple this with giving the examiner an additional count for an allowance that makes it past QC and you have a recipe for cooperation.
The Fed Circuit already apparently ruled on this precise RCE issue in Bogese… In the exact words of the Circuit: “unreasonable and unexplained delay” in prosecution results in the PTO being able to refuse to examine further.
Posted by: e6k | Oct 15, 2008 at 10:52 AM
e6k, I disagree that this was the issue in Bogese. Bogese filed 11 continuations in a row where he never amended or argued the examiner’s rejections. All he did was file the continuation, wait for the office action, wait 6 months, then file another continuation. That’s a very different situation from what the USPTO proposes in its continuation rules, which is a hard limit (“2+1”) regardless of reason or explainable delay. (When the USPTO says they can’t think of a reason why they would allow an additional filing, it’s a hard limit.)
The key phrase in the Bogese decision is the unreasonable and unexplained delay. I assume that most continuation / RCE filings are reasonable and explainable.
Dear West Coast Guy,
Yes, of course, you are right. I was focused on the professorial Signatories, and I missed footnote 10:
“10 All individuals signing the brief do so in their individual capacity; institutions are listed for identification purposes only.”
JAOI,
McDonnell Boehnen Hulbert & Berghoff LLP will agree with the position of any client who pays. The firm doesn’t have to agree with the position argued. They just make the argument on behalf of their paying client (assuming this isn’t pro bono).
At first, when I started reading some of the above, I was taken aback at the number of amici for Tafas. Then I realized that one man stood against many and performed flawlessly, seemingly making a better argument than the PTO itself.
The Fed Circuit already apparently ruled on this precise RCE issue in Bogese, and I don’t remember the PTO making that argument. Though they may have. In the exact words of the Circuit: “unreasonable and unexplained delay” in prosecution results in the PTO being able to refuse to examine further.
And the analysis of Henrikson running straight into Brand X. Whew, good stuff. And with Star Fruits addressing the requirement of information “reasonably necessary to treat the matter” pretty much seals the deal as far as I can see.
Also, I should note, the commentor question brings up that RCE’s might not compel an examiner to allow an app, and rather would compel the examiner to stand by the rejection. On the contrary, any rejection that is questionable in any respect could be bound for appeal>judgement>reopen>appeal>judgement> reopen taking the examiner’s time each time. And Lemley addresses the want for RCE’s as well, stating that either case distorts the evaluation of claims by examiners. Which is true.
Tafas got their copy and was like, dmn, we just got owned in the face, how much could we hire this Lemley guy for?
Regarding the use “its” when the proper term is “it’s”. A while back I read an article that indicated use of the apostrophe in American English is dying. Much like the death of the “long s” (used as the first “s” in a double “s” word) many years ago. I believe German still has their “long s”.
At first, when I started reading some of the above, I was taken aback at the number of amici for Tafas. Then I realized that one man stood against many and performed flawlessly, seemingly making a better argument than the PTO itself.
The Fed Circuit already apparently ruled on this precise RCE issue in Bogese, and I don’t remember the PTO making that argument. Though they may have. In the exact words of the Circuit: “unreasonable and unexplained delay” in prosecution results in the PTO being able to refuse to examine further.
And the analysis of Henrikson running straight into Brand X. Whew, good stuff. And with Star Fruits addressing the requirement of information “reasonably necessary to treat the matter” pretty much seals the deal as far as I can see.
Also, I should note, the commentor question brings up that RCE’s might not compel an examiner to allow an app, and rather would compel the examiner to stand by the rejection. On the contrary, any rejection that is questionable in any respect could be bound for appeal>judgement>reopen>appeal>judgement> reopen taking the examiner’s time each time. And Lemley addresses the want for RCE’s as well, stating that either case distorts the evaluation of claims by examiners. Which is true.
Tafas got their copy and was like, dmn, we just got owned in the face, how much could we hire this Lemley guy for?
DC,
The Licensing Professionals brief is linked to the Lelkes brief.
Would you please correct? Thanks.
e6k, are you for real?
JAOI, I hope you’re not “learning” too much from the wrong people…
Then Lemley goes on to nail a home run at 7-9. Someone give this man a raise.
You’re right SF that is pretty funny.
I thought the Monsanto brief did a great job of discussing why a company would want to pursue different claims during prosecution, particularly because they discussed a specific example in detail.
question–good point about the count system. I hope somebody made this point in one of the amici briefs, or that the Federal Circuit understands counts, or that they ever talk to actual patent prosecutors who know that this point of Lemley’s is just ridiculous. Of course, now that one of Lemley’s coauthors is on the court, you have to wonder what weight that will have.
Oh look, Lemley makes the exact same argument as I’ve been making since the very beginning. Lemley 6
Dear Professor Crouch,
Re:
BRIEF AMICI CURIAE OF INTELLECTUAL PROPERTY AND
ADMINISTRATIVE LAW PROFESSORS IN SUPPORT OF APPELLANTS
May we assume that neither you nor McDonnell Boehnen Hulbert & Berghoff LLP endorse or agree with the above referenced brief?
No answer need be provided if you agree that this assumption is correct.