Zuhn: A Model Patent Office for the Future

Dr. Zuhn has been covering patent happenings at the BIO Conference. His article discussing a panel on suggestions for fixing the USPTO is a great read. The theme presented by Sherry Knowles (from GSK) is one that many Patently-O readers understand – stakeholders cannot count on someone else to address problems at at the PTO.

John Duffy, who participated followed-up with a note about GSK’s role in the case of Tafas v. Dudas.

GSK has been very well served by its attorneys, which includes an excellent team of lawyers from Kirkland & Ellis headed by John M. Desmarais. They’ve been successful in winning 99% of what GSK wanted. The rules still aren’t in effect, and they are unlikely ever to go into effect without substantial revision. Moreover, as for the last 1% percent that GSK attorneys weren’t able to win, I don’t think any attorneys could have won. The administrative law issues in the case were always very difficult for GSK’s position. I don’t think any set of attorneys could have produced a better result, and I don’t doub t that GSK’s lawyers recognize that Supreme Court review would have its risks.

Duffy also discussed the potential risks of a Supreme Court decision in Tafas v. Dudas.

Judge Prost did a masterful job on the administrative law issues in the Tafas case. If the case were appealed to the Supreme Court, I think the Court would largely affirm her opinion. The most difficult issue in the case has always been whether, giving the agency’s rules an appropriate amount of Chevron deference, a court should nonetheless hold Final Rule 78 inconsistent with the clear meaning of section 120 of the Patent Act. Judge Prost ruled against the agency on that issue, and her result seems to me to be one reasonable resolution of a difficult issue. But the issue is a close one, as even Judge Bryson’s concurrence suggests. If Tafas were to be heard by the Supreme Court, it is entirely possible that the Justices (a majority of whom either have taught ad law or have served on the ad law-heavy D.C. Circuit) might give the agency a bit more deference than the Federal Circuit panel did. Thus, if the case went to the Supreme Co urt, I think likely outcomes would be either a complete affirmance or a reversal limited to the one issue that GSK won at the Federal Circuit.

Other News:

  • The White House has again recognized Peer-to-Patent as an example of “approachable government.” http://www.whitehouse.gov/newmedia/. (“Improves the quality of issued patents”).

19 thoughts on “Zuhn: A Model Patent Office for the Future

  1. 6: not sure I understand your question. So, best I don’t try to answer. Suffice it to say that there is a well-established EPO methodology for dealing with a proliferation of independent claims. Every EPO Exr consistently applies it, to the letter. Every EPO practitioner understands it, to the letter. Every EPO Applicant need only put its case in the hands of a competent attorney firm, and things will take their pre-ordained course. Basically, the EPO uses up the fees paid by Applicant on the invention claimed first. From your last post, it seems that what Examiners are required consistently to do inside the USPTO is outside your control, so you have to just dutifully toe the “line”, right?

  2. Mad, that is probably because 90% of examiners are not restriction savvy enough to be able to properly perform that restriction and do not even attempt it. A good 95% of them will admit to your face they don’t understand what a combo/subcombo restriction is, or how it works, and without that, there is pretty much no chance of getting that restriction off the ground. So they’d need to ask for outside help, which is a rarity for restrictions past your first year.

    Plus, where is all this stuff you’re filing classified? That makes a big difference as well.

    And that’s the sad truth. For all the moaning about bad/too many restrictions there is a huge population that gets away without restrictions because of an outdated classification system, or the examiner not knowing how to do the restriction.

  3. I haven’t noticed the restriction practice being that crazy at the PTO in the past year or so. I routinely file and have receive no restriction requirements for applications with a combination claim, a subcombination claim, and a method counterpart to the combination or subcombination.

  4. Max, you are right in so far as it does offend the requirement. However, it appears they have gotten it into their heads that the “invention” to which two separate independents belong is the embodiment in the spec to which they both may be referring. And if they are both referring to the same embodiment (broadly speaking, as opposed to narrowly speaking, as you can break down many embodiments into sub embodiments, which is what is taking place usually in the two claims) then they are directed to the same “invention” at least for purposes of restriction because the two inventions that they might be said to be are not “independent and distinct” as required by one of the most bogus statutes in the history of our patent laws.

    My question is this though max. In the EPO they can declare a lack of invention if the ind’s aren’t all unified right? So do they basically just search for what seems to be the inventive technical feature and then declare lack of unity? If they do this, presumably might they never even have to do an action on the deps?

    Yet I have never see that happen.

  5. Max–unless the PTO has changed its position on unity of invention, my understanding of their view is that limiting an application to one independent claim and the like is consistent with unity of invention practice–they just apply the analysis to each limitation of each claim (so that each different limitation–in a dependent claim or not–puts a claim into a different category). Try discussing with them that this differs from unity of invention as practiced in the EPO and you will just be banging your head against the wall. With mind-bending logic like this, I don’t think they’ll have any problem “harmonizing” anything–the label is more important than the truth. (Note–this restriction practice was explained, for example, by Julie Burke at several recent PTO-Biotech and Chemical Practice presentations). Here’s hoping this attitude in the PTO changes dramatically very soon.

  6. Fishbones: “One independent claim per application” does indeed seem harsh, when compared with the EPO, which allows any number of independent claims to issue, all in a single application. Each has to be in a different “category” mind. (Note: “category” means one of product, process, apparatus, use, composition, dosage form etc etc). Myself, I always thought a proliferation of independent claims in just one “category” offends the requirement that a single application should be an attempt to protect a single inventive concept.

    In case you are wondering, when the inventive concept is X+Y+Z, then the process steps X-ing, Y-ing and Z-ing are one aspect of the SAME inventive concept that is embodied, in another aspect, as an apparatus that exhibits means for X-ing, Y-ing and Z-ing.

    The EPO can search such inventive concepts, to a reasonable standard, no? I gather, however, that the USPTO can’t. Not much prospect of “harmonisation” there then, eh?

  7. An honor to have the perspicacious professor share his legal insights on the GSK case. Ultimately, a study of the PTO’s proposed rules is an examination of a neanderthal’s club. Any paleontologists on that panel?

  8. The PTO is getting its way indirectly during the past year or so through over zealous issuance of election/restriction requirements, essentially limiting Applicant’s to one independent claim per application

  9. Oh shizzle, Duffy is in tha house! Almost didn’t see his post. Welcome good sir, welcome!

    Yes, we gotcha about the Knowles thing and the joke thing. I was under the impression the joke had gone deeper, but none the less agreed and found it very funny, literally laughing out loud for quite some time.

    About the Tafas case though I’m pretty sure that few deny what you say about SC review. Even if Q Todd et al. believe the rules are substantive, they cannot deny that the courts are likely to rule otherwise.

    On that subject though, do you not feel like the rules will be struck down by the DC on remand?

  10. Seriously. I know many well seasoned patent attorneys who would like to be on the gub’mt payroll as long as there are more reasonable goals. With engineering and attorney experience, like TM pros, the OAs and writing and communication skills would immediately make a positive change. pay a reasonable wage, appropriate benes, and virtual opps and i really think we could turn this ship.

  11. John Duffy has a good point. What is there in recent Supreme Court patent decisions that would make one think the Supreme Court would be likely to be more pro-applicant than the CAFC in a case like this?

    Also, I think there are some other practical, low cost and effective patent reforms.

  12. Donald Zuhn’s reporting on this event is generally very good, and his article is nicely written. On one significant point, however, the article probably gives an inaccurate impression. I discuss that below, with two other small comments.

    1. Knowles’ Theme. The article states that Sherry Knowles “argued that stakeholders could not count on patent reform, the courts, or the yet-to-be-named USPTO Director to fix the Office’s problems.” I think this sentence gives an inaccurate impression that Knowles was despondent about the ability of anyone to fix the PTO. As I remember it, Knowles’ general theme was that stakeholders could not just count on somebody else to address the problems at the PTO; rather, they must work together with the other actors to address the current problems. She was delivering not a pessimistic message, but a call to action.

    2. GSK’s Lawyers. As the article accurately reports, I joked that, if GSK’s lawyers were promising a better result at the Supreme Court in Tafas v. Dudas, then GSK might think about getting different lawyers. I want to emphasize that this was a joke designed to make point about the Tafas case, not about GSK’s lawyers. GSK has been very well served by its attorneys, which includes an excellent team of lawyers from Kirkland & Ellis headed by John M. Desmarais. They’ve been successful in winning 99% of what GSK wanted. The rules still aren’t in effect, and they are unlikely ever to go into effect without substantial revision. Moreover, as for the last 1% percent that GSK attorneys weren’t able to win, I don’t think any attorneys could have won. The administrative law issues in the case were always very difficult for GSK’s position. I don’t think any set of attorneys could have produced a better result, and I don’t doubt that GSK’s lawyers recognize that Supreme Court review would have its risks.

    3. Tafas at the Supreme Court. Judge Prost did a masterful job on the administrative law issues in the Tafas case. If the case were appealed to the Supreme Court, I think the Court would largely affirm her opinion. The most difficult issue in the case has always been whether, giving the agency’s rules an appropriate amount of Chevron deference, a court should nonetheless hold Final Rule 78 inconsistent with the clear meaning of section 120 of the Patent Act. Judge Prost ruled against the agency on that issue, and her result seems to me to be one reasonable resolution of a difficult issue. But the issue is a close one, as even Judge Bryson’s concurrence suggests. If Tafas were to be heard by the Supreme Court, it is entirely possible that the Justices (a majority of whom either have taught ad law or have served on the ad law-heavy D.C. Circuit) might give the agency a bit more deference than the Federal Circuit panel did. Thus, if the case went to the Supreme Court, I think likely outcomes would be either a complete affirmance or a reversal limited to the one issue that GSK won at the Federal Circuit.

    John Duffy

  13. Ms. Knowles has the number one quality necessary for change! I cite Margaret Peterlin, and Dudas… What do these shysters have in common?

  14. “why are there so many jesters on the field?”

    Foolery, sir, does walk about the orb like the sun, it shines everywhere. —Shakespeare

  15. link to mondaq.com States: Top Ten Patent Issues For The New Director Of The Patent And Trademark Office
    19 May 2009
    Article by Stuart P. Meyer and Rajiv Patel
    I.
    1. Re-establish strained relationships

    2. Increase transparency

    3. Rationalize the use of statistics

    4. Reevaluate what it means to provide “customer service”

    5. Foster inclusion in the rulemaking process

    6. Keep attacking the puzzle of retention

    7. Develop evangelism for better PTO funding mechanisms

    8. Train examiners on more than just the mechanical aspects of patent prosecution

    9. Provide examiners with incentives to suggest amendments that would be allowable

    10. Focus on the core mission

  16. Sounds like Ms. Knowles was the only one with something substantial to say.

    Riddle me this, if patents are the sport of kings, why are there so many jesters on the field?

  17. If by “a great read” you mean “a rehash of most of the stuff we’ve been talking about for years” then I agree with you.

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