Is the legality of the PTO’s new rules to limit the number of claims foreclosed by Section 120 of the Patent Act?
Section 120 declares that a newly filed patent application “shall have the same effect” as a parent application so long as it is “filed before the patenting or abandonment …[of] the first application.” The statute includes two specific limitations: First, the newly claimed invention must have been properly disclosed in the original application by overlapping inventors. Second, the new application must specifically reference the parent.
Courts have primarily used Section 120 in determining whether to grant an early ‘priority date’ to a later filed application. The following quote from a recent CAFC case is typical:
“A patent application for an invention disclosed in a previously-filed application in a manner that satisfies all the requirements of 35 U.S.C. § 112 is entitled to the benefit of the earlier filing date.”
Go Med, 471 F.3d 1264 (Fed. Cir. 2006). The practice of filing continuations is old — and was sanctioned by the US Supreme Court in the 1863 case of Godfrey v. Eames.
>Dennis, what to you predict will happen on Oct. 31? < It really happens-a preliminary injunction. I am a patent engineer from Asia and I can't wait to see what will happen next. 🙂
> 5.6 quake in Silicon Valley — the patent gods are mad!
At the PTO. Our servers stayed up, our power stayed on, and we kept on with our efforts to file a zillion continuations in the next 12 hours.
5.6 quake in Silicon Valley — the patent gods are mad!
Here’s a good laugh at the right time . . . originally written by “Patent Hawk” on The Patent Prospector on August 23, 2007, just two days after the PTO announced its Rules – and really thought that they would get away with it!
“Mark Lemley, professor at Stanford Law School, ‘widely recognized as a preeminent scholar of intellectual property law,’ toots of the new rules for examination limits: ‘The idea that this would be any sort of significant restriction on patent owners is ludicrous to me. It will affect 10 applications a year, maybe 50, out of 450,000.’
“New 37 CFR §1.75(b)(1), known as the 5/25 rule, limits applications to five independent and 25 total claims without an odious examination support document (ESD). An ESD, covered under 37 CFR §1.265, comprises claim charts mapping claims, limitation by limitation, to the most relevant prior art references found; based upon a compulsive prior art search for which inequitable conduct liability is attached. An ESD also includes patentability claims charts: for each independent claim, citing specification support, limitation by limitation. 37 CFR §1.75(b)(4), soon to be known as the 5/25-totality rule, puts all applications in the same family, combined, under the 5/25 rule; where a family is for a set of claims that are ‘patentably indistinct,’ which is normal continuation practice. For all patents in a family, you only get five independent and 25 total claims without submitting detailed claim charts. This is a severe stricture.
“One may reasonably observe as understatement that Mr. Lemley’s long suit is not likely to be statistical prediction, probabilistically speaking, of course.”
—
Quotation of Mark Lemley from an article by Stuart Weinberg of Dow Jones, provided by Hal Wegner.
If you have to stay under 5/25, don’t get CIPs or menaingful CONs you will change your filing strategy enormously. Thus, to make these rules retroactive is unfair, and a taking.
“P.S. Rule 142(c) disappearing due to (mistaken) overwriting would perhaps be just like current Rule 704(c)(11) disappearing due to apparent (mistaken) overwriting.”
My mistake. Old 704(c)(11) doesn’t disappear with the new rules, but rather becomes 704(c)(12), per FR 46843, block 19.
Given the severe time constraints they were under, GSK’s brief was very good. However, I wish that GSK had noted that for any application that has already been published, they have lost forever the trade secret rights they had for any technology disclosed in the application. GSK gave up their trade secret rights in exchange for the provisional rights granted by the AIPA.
From the USPTO itself:
link to uspto.gov
“Prior to the AIPA, damages for infringement can begin accruing no earlier than the date a patent issues. Under provisions in the AIPA, inventors can obtain reasonable royalties from others who make, use, sell, or import the invention during the period between the time the patent application is published and the patent is granted. This new right may be invaluable during the formulation stage of new businesses and for independent inventors in need of investments. Filers can also request that applications be published earlier than 18 months, a procedure that offers inventors provisional rights at an earlier stage.”
By forcing to choose between cancelling claims to get under 5/25 or to file an ESD which will devalue the claims to which the ESD applies, the USPTO has clearly devalued GSK’s provisional rights. Effectively, the USPTO has changed the bargain they made with GSK when GSK allowed its application to be publish, thereby relinquishing their trade secret rights to the technology disclosed in the application.
Furthermore, any action GSK takes at this point: cancel claims, amend claims, make arguments in an ESD, etc. will potentially give rise to potential prosecution history estoppel issues during litigation.
Therefore, the new Claim and Continuation Rules will cause irreparable harm to GSK’s rights regarding the technology disclosed in the application.
Given the severe time constraints they were under, GSK’s brief was very good. However, I wish that GSK had noted that for any application that has already been published, they have lost forever the trade secret rights they had for any technology disclosed in the application. GSK gave up their trade secret rights in exchange for the provisional rights granted by the AIPA.
From the USPTO itself:
link to uspto.gov
“Prior to the AIPA, damages for infringement can begin accruing no earlier than the date a patent issues. Under provisions in the AIPA, inventors can obtain reasonable royalties from others who make, use, sell, or import the invention during the period between the time the patent application is published and the patent is granted. This new right may be invaluable during the formulation stage of new businesses and for independent inventors in need of investments. Filers can also request that applications be published earlier than 18 months, a procedure that offers inventors provisional rights at an earlier stage.”
By forcing to choose between cancelling claims to get under 5/25 or to file an ESD which will devalue the claims to which the ESD applies, the USPTO has clearly devalued GSK’s provisional rights. Effectively, the USPTO has changed the bargain they made with GSK when GSK allowed its application to be publish, thereby relinquishing their trade secret rights to the technology disclosed in the application.
Furthermore, any action GSK takes at this point: cancel claims, amend claims, make arguments in an ESD, etc. will potentially give rise to potential prosecution history estoppel issues during litigation.
Therefore, the new Claim and Continuation Rules will cause irreparable harm to GSK’s rights regarding the technology disclosed in the application.
Given the severe time constraints they were under, GSK’s brief was very good. However, I wish that GSK had noted that for any application that has already been published, they have lost forever the trade secret rights they had for any technology disclosed in the application. GSK gave up their trade secret rights in exchange for the provisional rights granted by the AIPA.
From the USPTO itself:
link to uspto.gov
“Prior to the AIPA, damages for infringement can begin accruing no earlier than the date a patent issues. Under provisions in the AIPA, inventors can obtain reasonable royalties from others who make, use, sell, or import the invention during the period between the time the patent application is published and the patent is granted. This new right may be invaluable during the formulation stage of new businesses and for independent inventors in need of investments. Filers can also request that applications be published earlier than 18 months, a procedure that offers inventors provisional rights at an earlier stage.”
By forcing to choose between cancelling claims to get under 5/25 or to file an ESD which will devalue the claims to which the ESD applies, the USPTO has clearly devalued GSK’s provisional rights. Effectively, the USPTO has changed the bargain they made with GSK when GSK allowed its application to be publish, thereby relinquishing their trade secret rights to the technology disclosed in the application.
Furthermore, any action GSK takes at this point: cancel claims, amend claims, make arguments in an ESD, etc. will potentially give rise to potential prosecution history estoppel issues during litigation.
Therefore, the new Claim and Continuation Rules will cause irreparable harm to GSK’s rights regarding the technology disclosed in the application.
johng
— a friend of mine told me that when he showed up for his first college final exam, he thought it was going to be the physics final when it turned out to be the calculus final
— I hope that PTO management feels the same way today as my friend felt when he sat down to take his calculus final
The “top news” at the PTO website is still the “China Roadshow” LOL. Do you think they are busy right now typing up a new one?
With respect to the PTO’s arguments that all of the amicus briefs and GSK’s suit was “untimely”, I know our firm went in with a charitable attitude about the new rules and a desire to comply with USPTO rules, which significantly delayed our eventual complete opposition to the new rules. Also, what about the issue that it took weeks of significant amounts of attorney time (on tope of our regular docket!) to (1) read the rules (2) begin to comprehend the rules (3) figure out the “gaps” in the rules (4) begin to try out the rules in hypotheticals (5) figure out a firm policy to how to address the new rules and advise clients with respect to same (6) draft said letter (7) begin to apply the rules to specific portfolios (8) identify and advise clients with respect to particular portfolios–no two portfolios are alike and require individualized recommendations?
Correction, Senator Schumer’s letter REQUESTS the PTO to delay implimentation.
The PLI website indicates that Senator Chuck Schumer has sent a letter to the PTO delaying implimentation of the rules pending an investigation.
GSK’s Reply Brief is EXCELLENT!
GSK nailed the PTO in all respects, including the PTO’s nonsense about having “sunk” a substantial investment into gearing up its computer systems to the Rule changes, and the full NINE hours of time devoted by the PTO’s staff in training.
The U.S. Attorney’s Office, for reasons only conceivable to it and the PTO, are frantically filing oppositions to every conceivable amici, which are almost as counterproductive as its surreply filings of earlier today.
The DOJ and PTO are now searching for some litgation “magic bullet” with the slew of dubious filings today, apparently, not recognizing that such filings are counterproductive to its (lost) cause!
“See PACER for a copy.”
Please, please post it, Dennis. I need something to distract me from this boring new app.
The GSK reply brief is VERY good.
See PACER for a copy.
Jim H.,
The safeguard clause of that section 123 also speaks volumes concerning the safeguards which the current rules do not provide:
Sec. 123 “…No such regulation may deny applicants an adequate opportunity to obtain claims for any invention disclosed in an application for patent.”
Tom Dodd,
HATS OFF to your effort and contribution! I know your contribution — along with another group I am associated with — had impact in getting this information into a footnote as we suggested!
Here is a quote from GSK’s Reply re PI:
“Also probative is the fact that, in 2005, the House considered vesting the PTO with authority to limit continuing applications, further evidencing that the PTO presently lacks such authority. See H.R. 2795, 109th Cong., § 123
(June 8, 2005) (“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 priorfiled application . . . .”).
YOURMOMMASAYS,
Here’s a cut-and-paste of one of the PTO’s filings:
Respectfully submitted,
CHUCK ROSENBERG
UNITED STATES ATTORNEY
By: /s/________________
LAUREN A. WETZLER
RALPH ANDREW PRICE JR.
R. JOSEPH SHER
Assistant United States Attorneys
Attorneys for All Defendants
Justin W. Williams U.S. Attorney’s Building
2100 Jamieson Avenue
Alexandria, Virginia 22314
Tel: (703) 299-3752
Fax: (703) 299-3983
Lauren.Wetzler@usdoj.gov
Is there a website that holds copies of the various filings?
I had been looking at IPWatchdog and a couple others, but they don’t have copies of the most recent filings. Also, Justia has documents only up to about Oct. 15th. Is there a better place, or shall I be resigned to getting a PACER log-in established?
Thanks.
YOURMOMMASAYS,
Don’t rely on this, but I believe there is a section of the DOJ that performs the litigation for administrative agencies.
The Wheelan quote (on video at KelleyDrye) seems to contradict the sur-reply of the PTO (filed by Dudas) in the GSK case (the sur-reply to the AIPLA).
I believe that most of this confusion could have been avoided had AIPLA simply affirmative articulated the fallicies of the rules early on. The fact that AIPLA waited so long to raise these issues makes me wonder if there should not be a shake-up of the upper management of AIPLA. This is definitely a case where better late than never certainly does not apply.
Why is the DOJ filing anything?
Edwin D. Schindler,
I see the following:
Docket No. 55
PTO’s Surrebuttal to AIPLA’s Reply
Docket Nos. 56 & 57 (same):
PTO’s Reply to GSK’s Oppo to Motion to Strike
Docket No. 58:
GSK’s Reply to PTO’s Oppo to Motion for PI
Tally: Two Replies, One surrebuttal
Concur?
My “correction” was incorrect!
The DOJ/PTO actually DID file a Surreply Brief on AIPLA’s motion for leave to file its amicus brief. The PTO simply termed the filing a “response.”
Correction: The DOJ/PTO filed a Surreply Brief “only” on its pending motion to strike the Manbeck Declaration.
No surreply has been filed in response to the AIPLA Reply Brief.
Still desperate for daylight at the PTO!
PTO is apparently freaking out!
The DOJ/PTO has just filed a surreply brief to AIPLA’ reply brief for leave to file its amicus brief and a surreply brief to GSK’s reply brief on the PTO’s motion to strike the Manbeck Declaration.
There’s always been some debate as to whether judges actually read reply briefs. Unless invited by the court, it seems doubtful that the surreplies will go very far!
The PTO’s perceived need to file the surreplies says a great deal about how it views its own dismal chances of success. Time to hide sharp objects and lock the upper floor windows at the PTO! 🙂
They can’t propose new rules which are laid on top of earlier proposed rules. I’m sure that if the new rules re: claims and continuations go into effect, that the Markush proposals will be revised to deal with that. However, it is tricky trying to read all the proposals collectively.
P.S. Rule 142(c) disappearing due to (mistaken) overwriting would perhaps be just like current Rule 704(c)(11) disappearing due to apparent (mistaken) overwriting.
Haven’t yet been able to digest what Rules 703 and 704 will be like without the current 704(c)(11) which will apparently go bye-bye on Nov. 1 if the new rules are implemented:
§ 1.704 Reduction of period of adjustment of patent term.
(c) Circumstances that constitute a failure of the applicant to engage in reasonable efforts to conclude processing or examination of an application also include the following circumstances, which will result in the following reduction of the period of adjustment set forth in § 1.703 to the extent that the periods are not overlapping:
(11) Further prosecution via a continuing application, in which case the period of adjustment set forth in § 1.703 shall not include any period that is prior to the actual filing date of the application that resulted in the patent.
Seems like there may be no loss of patent term extension by filing a continuation – perhaps the extensions just keep accruing?? 🙂
As they’ve always done in Chicago….
“However, in the Rules proposal of August 10, 2006 (Markush changes), section 142(c) mysteriously (or not?) disappears- the entire section 142(c) that created SRRs was overwritten and not re-inserted anywhere else.”
Thank you, Tom.
I really hate to stir the pot some more (truly I do!), but here’s another tidbit-
One of the few positive aspects of the C & C Rules was section 142(c), which allowed for suggested restriction requirements, which on its face would at least appear to mitigate some of the damaging effects of the 5/25 rule.
However, in the Rules proposal of August 10, 2006 (Markush changes), section 142(c) mysteriously (or not?) disappears- the entire section 142(c) that created SRRs was overwritten and not re-inserted anywhere else.
Anonexaminer-
Don’t know if you found a cite for my statement that PTO was pushing for Section 123, and don’t know if there is one.
The PTO support for proposed 123 became known at a Town Hall meeting at the NAS in early June 2005- the day after Rep Smith introduced HR 2795 in the House.
At that meeting, PTO reps and also a telecom company rep made arguments in favor of proposed Section 123- the PTO said it “was the only way to ease the backlog,” while the company rep statement was quite venomous, lashing out at the “evil patent trolls,” who “game the system to prevent products from coming to market.”
123 was barely a footnote at this meeting, and the proposed section disappeared without even a comment at the second draft that went to the House Subcommittee a few months later.
All of below is quoted from the article (Copyright PortfolioMedia, Inc.)
“As mentioned above, according to Rule 78(f)(3), where two or more commonly owned applications contain patentably indistinct claims, the Office MAY, without citing any statutory or judicial authority to support the “rejection”, require elimination of all patentably indistinct claims from all but one of the applications. Moreover, under 75(b)(4), even if two or more such applications are permitted to remain pending, if a first application contains five independent claims and twenty five total claims, the Office WILL NOT issue a patent to a commonly-owned co-pending second application if it contains at least one claim that is patentably indistinct from at least one claim in the first application.
Thus, Rules 78(f)(3) and 75(b)(4) can effectively act as an outright bar to obtaining a follow-on patent claiming an obvious variation of a previous discovery. This bar against obtaining such improvement patents is contrary to statute.
On three different occasions Congress has enacted legislation specifying when an applicant may obtain a patent claiming obvious variations of previous discoveries. In 1984, Congress amended 103 to disqualify events falling exclusively within 102(f) or (g) from use as prior art under 103. This exemption from prior art, which can now be found in subsection (c) of 103, was enlarged by the American Inventors Protection Act of 1999 (AIPA), to include a disqualification of obviousness rejections based on 102(e). In particular, 103(c) was amended to provide
(block quote) subject matter developed by another person, which qualifies as prior art only under one ore more of subsections (e), (f), or (g) of section 102 of this title, shall not preclude patentability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.
In 2004, Congress once again broadened the 103(c) exemption via the Cooperative Research and Technology Enhancement Act (CREATE Act). Under the CREATE Act, the meaning of “owned by the same person or subject to an obligation of assignment to the same person” appearing in 103(c) was extended to include situations where the invention under consideration was made pursuant to a written joint research agreement that had been entered into with the party who developed the prior art. (end block quote)
Thus, by the statutory authority provided by 103(c), a party can obviate an obviousness rejection based on subsections (e), (f), or (g) of 102 and obtain a patent to obvious variations of earlier discoveries provided, at the time the obvious variation was made, there was common ownership, an obligation of common ownership, or a written joint research agreement in place. Accordingly, based on the fact that the 103(c) exemption was not only enacted but also broadened twice by subsequent legislative enactments, it clearly follows that Congress envisioned that patent applicants are entitled by law to obtain issued patents directed to obvious variations of earlier discoveries where the conditions of 103(c) are met.
As discussed above, however, under Rule 78(f)(3), the Office has provided itself with absolute discretion in deciding whether a party will be permitted to maintain commonly owned separate applications with patentably indistinct claims. Moreover, even if such separate applications are permitted, the Office’s limit on the number of independent and total claims under Rule 75(b)(4) means an applicant who maintains five independent and twenty five total claims in one application will be completely barred from pursuing a second application containing one or more claims encompassing obvious subject matter. Importantly, these bars under Rules 78(f)(3) and 75(b)(4) apply even if an applicant otherwise would have been permitted to obtain separate patents via the §103(c) statutory exemption. Accordingly, it follows that Rules 78(f)(3) and 75(b)(4) run contrary to statute and should be repealed.
concerned practitioner,
Any chance you could provide some quotes under the “fair use” doctrine to those of us that don’t subscribe?
Check out this article on IP360 today “New Rules 75, 78 Unfairly Penalize Research Entities.” The article analyzes why the new rules are contrary to 103(c) and express Congressional intent.
link to ip.law360.com
anonexaminer,
Continuing my thoughts from my previous post…
Section 120 reads:
1) a second continuation application seeking priority from :
2) an original application, OR
3) a first application in a chain seeking priority to another intermediate application in the chain or the original application.
anonexaminer,
I do not read the term “an” in a numerical context, i.e., one, two, etc…, or in the context of singular v. plural. Instead, I read “an” as being able to substitute the term with “a first” and “a second.”
Edwin D. Schindler,
I appreciate your brevity, and I will use your thoughts to summarize my previous thoughts and arguments:
First, regarding
Had the PTO promulgated rules that adopt the “unexplained and unreasonable delay” standard of recent CAFC case law, and asked that a showing be made to “explain” why a continuation was being filed and that the filing was not “unreasonably delayed,” then the PTO would be within its statutory right, as defined by case law.
I agree. This is the point that I have been unsuccessful in articulating. I view this standard as a permissible “condition” on continuations practice which does not exceed Chevron-deference. I view the “could not have” standard (i.e., condition) imposed by the PTO — and as argued by GSK in its motion for PI — to be impermissible and exceeding Chevron-deference for the reasons stated by GSK.
Regarding,
Had the PTO indicated that it would grant a petition to file a third continuation under such circumstances, and sought to limit its denials to situations evidencing “prosection laches,” as the recent CAFC case law discusses, then there would likely be little in the way of complaint or judicial challenge to the PTO’s conduct.
I agree.
Regarding,
The rule in statutory construction – much to the disappointment of bureaucrats everywhere – is that a statute must affirmatively provide for such rule-making authority; silence on the issue does not vest such authority because a bar is absent.
I realize that the rule-making authority is granted in 35 USC § 2 (there may be others), and I agree that silence per se is not a grant or authority. In exercising the grant of such authority, the PTO may promulgate rules so as not to conflict with both statutory and case law. From above, the PTO may promulgate rules to condition continuations practice with standards developed by case law — but not these set of rules.
Edwin D. Schindler, I compliment you and your well-articulated reasoning.
“as Richard Feynman once said, ‘No one truly understands quantum mechanics,'”
Well, what a way to win an argument… by quoting Richard Feyman.
Didn’t he also say there’s plenty of room at the bottom? (Might be apropos here, though not in the way he intended it.)
link to zyvex.com
When is the hearing on Wednesday and how long before a ruling?
BTW, Dennis, when you first reported the GSK case you pondered why K&E, your former firm, brought this case when they don’t do prosecution. Due to the potential for conflicting out major prosecution clients, isn’t it rare for a prosecution shop to do litigation? To wit, the firm formerly known as Burns Doane…
Mr. Schindler, regarding:
“The absence of a bar to the excercise of agency rule-making authority in the plain meaning of statutary language does NOT mean that such rule-making is permissible because the statute is silent. The rule in statutory construction – much to the disappointment of bureaucrats everywhere – is that a statute must affirmatively provide for such rule-making authority; silence on the issue does not vest such authority because a bar is absent.”
I was just thinking about this. For example, what would prevent the PTO from requiring something like running a marathon first before filing, or that a person filing the papers must wear their underwear on the outside of their clothes? I know these examples are silly, but silence presents an infinite number of possible “requirements” by rule-making.
Also, what in God’s name is the PTO’s reasoning for preventing introduction copied claims in a continuation to provoke an interference?
AIPLA filed a splendid Reply Memorandum this evening in support of it being permitted to file and have considered its amicus brief.
The PTO, represented by the Department of Justice, complained that it was overwhelmed with GSK’s filings and those of the AIPLA. Tough!
If the PTO thinks it’s overwhelmed, it should try reading its own Rules!!
“Does this mean that the PTO is prohibited under 120 from promulgating future rules placing conditions on more than two continuations? In my opinion, no. The language on the face of 120 makes no such prohibition.”
I disagree! Had the PTO promulgated rules that adopt the “unexplained and unreasonable delay” standard of recent CAFC case law, and asked that a showing be made to “explain” why a continuation was being filed and that the filing was not “unreasonably delayed,” then the PTO would be within its statutory right, as defined by case law.
One perfectly valid reason for filing a continuation application would be to “copy” claims for provoking an interference. 35 U.S.C. §135(b)(1) and (2) provide a one-year statutory bar for copying claims, with a limited exception discussed most recently by the CAFC in In re Berger (2003).
Copying claims for provoking an inference is permitted by statute, which would seem to be a perfectly valid “explanation” for filing a continuation application. If filed within the statutory period of “repose” under §135(b), it would seem that no “unreasonable delay” would be possible, since an “unreasonable delay” is statutorily barred.
The PTO has indicated that it would NOT grant a petition for a third (or more) continuation application where the specific purpose was to copy claims for provoking an interference.
The PTO has also indicated that it would NOT grant a petition for a third (or more) continuation application in situations where a final Office Action indicates both allowed/allowable claims and rejected claims. The option of cancelling out the rejected claims and receiving a Notice of Allowance on the allowed/allowable claims, while continuing to prosecute the finally rejected claims in a continuation, would NOT be a basis for granting a petition for a third (or more) continuation. Presumably, it would also not be a basis for the granting of a petition for a second (or more) RCE. A statutory six-month period for response set by the final Office Action would prevent “unreasonable delay” and, the fact that the PTO did not allow all claims and issue a Notice of Allowance, rather than a final Office Action, certainly was not the choice, or preference, of the patent attorney or his client.
Had the PTO indicated that it would grant a petition to file a third continuation under such circumstances, and sought to limit its denials to situations evidencing “prosection laches,” as the recent CAFC case law discusses, then there would likely be little in the way of complaint or judicial challenge to the PTO’s conduct.
Then there are the incomprehensible rules regarding “patentably indistinct” claims: Inasmuch as case law establishes the law of obviousness-type double patenting and the use of a terminal disclaimer for claims that are patentably indistinct, but not identical in scope, the PTO acts contrary to case law by effective limiting, if not repealing, the doctrine of obviousness-type double patenting.
The 5/25 claim rule is also ridiculous: Since the statutory fee scheme contemplates “excess” claims and charges an additional fee for their pendency, but does not place an absolute number on either the number of independent claims or total claims, the PTO should not be permited to read any “number” limitation into the statute where one does not exist.
Asking whether §120, for example, contains language that prevents the PTO from imposing limits on continuation practice is an incorrect analysis, framed in the negative. The absence of a bar to the excercise of agency rule-making authority in the plain meaning of statutary language does NOT mean that such rule-making is permissible because the statute is silent. The rule in statutory construction – much to the disappointment of bureaucrats everywhere – is that a statute must affirmatively provide for such rule-making authority; silence on the issue does not vest such authority because a bar is absent.
The PTO will lose on Wednesday, because it could have properly taken an inch, but, instead, went for several thousand miles. Rather than propose “tweaking” the system in a manner clearly consistent with the case law, it “proposed” Rule changes that are so complicated, complex and convoluted that, as Richard Feynman once said, “No one truly understands quantum mechanics,” the repeated clarifications and explanations by the PTO evidence that: “No one, including the PTO, truly understands the PTO’s proposed Rule changes!”
Re Harm to the Public for an Injunction:
Granted I don’t understand OMB requirements in Rule Making, but the PTO statistics in the Final Rule notice seem to establish a substantial burden on the public (a low estimate?):
“reviewing the collection of information. OMB Number: 0651–0031.
Title: Patent Processing (Updating). Form Numbers: PTO/SB/08, PTO/SB/
17i, . . . .
Type of Review: Approved through September of 2007. Affected Public: Individuals or households, business or other for-profit institutions, not-for-profit institutions, farms, Federal Government and State, Local and Tribal Governments.
Estimated Number of Respondents: 2,508,139.
Estimated Time Per Response: 1 minute and 48 seconds to 24 hours.
Estimated Total Annual Burden Hours: 3,724,791 hours.”
Here is another gem of legislation previously proposed by the PTO regarding continuations and patentably indistinct applications:
United States Patent and Trademark Office Reauthorization Act, Fiscal Year 2003 (June 2002), available at
link to twiki.org
The mechanism here was extreme fees. The proposed fees would increase geometrically for applications with more than three independent claims, more than 20 claims in total, or more than two continuations (3rd continuation = $1000, 2nd = $2000, 3rd = $4000, etc). Crippling fees, starting at $10,680 per “offending” application, were proposed where applications contained claims that were not “patentably distinct” from those in a copending application. These fee increases were described by the USPTO as a solution to “discourage behavior that is crippling [the USPTO’s] ability to provide a quality and timely patent.” The fees were criticized by industry groups as “punitive” and “penaliz[ing] legitimate practices.”
Related legislative hearings at:
link to commdocs.house.gov
In retrospect, the proposed legislation appears to have been geared towards encouraging industry to pressure Congress to halt fee diversion from the USPTO. It was frankly acknowledged by the USPTO that the fees were designed to make up for $162M being diverted annually from the USPTO (one of the major causes of the backlog problem).
Jim H,
Lets consider a couple things. You are right about the 1) “an application”, 2) “the first application” and 3) “an application” sequence. It seems to refer to
1) the instant continuation application seeking priority from :
2) an original application, OR
3) an intermediate application in a chain seeking priority to another intermediate application in the chain or the original application.
Now, under the new rules, the second “an application” could only be construed (as a possible intermediary in a chain of continuation applications) to read as “one application” because no more than one application can continue from it (i.e. two cons total). BUT, the first “an application” (i.e. the present con seeking priority) could be read to be plural because two cons can seek priority to one original app.
Contrast this with Henriksen which would have had unlimited cons that could depended upon an original or a continuation of an original but no cases permitted to receive priority on a con of a con of an original.
See how the USPTO can’t make up their minds??? The proposed rules were also different than the final ones and the one suggested in Henriksen. I think, in Hogan, there was even maybe another interpretation of 120 by the USPTO. Now, plant this lack of consistency into the agency’s “reasonableness” with respect to promulgating the rule under Skidmore.
The rules are not fair to us older practitioners. We should be grandfathered in. Has anyone called ARRP about this?
The gods don’t like IDS spammers and continuations abusers. Thanks be to Odin for the rule package. Happy Samhain!
AnotherDisgustedPatentAttorney,
My comments have been directed to the language of section 120 and whether the PTO is entitled to Chevron-deference in a general sense.
If you believe the conditions imposed by the PTO in the rules are NOT entitled to Chevron-deference, I agree. I strongly favor a court’s injunction.
Does this mean that the PTO is prohibited under 120 from promulgating future rules placing conditions on more than two continuations? In my opinion, no. The language on the face of 120 makes no such prohibition.
“AnotherDisgustedPatentAttorney,
If you believe that the language on the face of section 120 prohibits conditional continuation practice, then we disagree.”
Jim H.,
Where did I say that?
I’ll try one more time. My contention is that, in fact, the “condition” imposed on filing additional (i.e., more than two) continuations is a prohibition, given that, according to the PTO’s commentary on the subject, it will be virtually impossible to make a showing that results in a granted petition to allow an additional continuation.
anonexaminer,
Enter 2795 in the search provided in the following link:
link to thomas.loc.gov
It should give you the information you seek.
Section 120 begins with “an” application. Then, in the same sentence towards the end, it references the “first” application or on “an” application. I count three (a first and two “an”s) separate applications using the “an” scenario.
However, how is placing a condition on more than two applications prohibited under 120? I do not see a prohibition on the face of section 120 that prohibits conditional continuation practice.
Now, I am aware of the case law stating that an application can not be restricted to the number of continuations, but in my opinion, restrictions are not the same as conditions.
I want to read the language of section 120 to give the applicant the right to an unfettered amount of continuations, but I do not see the language. Assuming that section 123 was not presented before the House, I would accept the PTO’s argument with respect to the interpretation of section 120 and Chevron-deference.
However, the PTO is not entitled to Chevron-deference to the current continuations practice rules that it has promulgated.
1 USC 1 includes
words importing the singular include and apply to several persons, parties, or things;
words importing the plural include the singular;
I’ll have more on this subject later. You know the USPTO wants the first “an application” to read either one or two, but the second “an application” can ONLY read as “one application” under the new rules.
Right, I see the comments from Dodd above. But, I’m working on a review article and need a real “cite” for this information. I’m not quite sure where I would find proof that the suggested the proposed statute.
anonexaminer,
See Tom Dodd’s comment above.
Hey Jim, Thanks – I see the proposed 123 in HR 2795, but how do we know that the agency lobbied for the redacted statute?
anonexaminer,
1 U.S.C. 1 states that “words importing the plural include the singular” but it states nothing about words importing the singular.
http://www.law.cornell.edu/uscode/html/uscode01/usc_sec_01_00000001—-000-.html
anonexaminer,
You may search for HR2795 for the 109th Congress using Thomas on the House of Representatives web site. The same information is provided with this link:
link to ibm.com
AnotherDisgustedPatentAttorney,
If you believe that the language on the face of section 120 prohibits conditional continuation practice, then we disagree.
YOURMOMMASAY,
First, my comments have been about continuations practice rules that have been promulgated. As for ESD, it cannot be allowed. Section 111 defines what an application is (specification, drawing, oath) and ESD is NOT defined to comprise an application. To agree with the ESD is to enlarge the scope of the definition of a patent application. Congress has expressly stated what conprises an application, and the PTO does not have Chevron-deference to enlarge it with an ESD.
I agree with what you have said with regards to the 101, 102, and 103 (and I would add 112). Now work that in with continuations. How do your arguments apply?
YOURMOMMASAY,
First, my comments have been about continuations practice rules that have been promulgated. As for ESD, it cannot be allowed. Section 111 defines what an application is (specification, drawing, oath) and ESD is defined to comprise an application. To agree with the ESD is to enlarge the scope of the defintion of a patent application.
I agree with what you have said with regards to the 101, 102, and 103 (and I would add 112). Now work that in with continuations. How do your arguments apply?
Jim H.,
You missed my point. My point was that the “condition” here (read the PTO’s discussion of what might be a satisfactory showing) is a de facto prohibition.
Can someone provide me a reference with respect to the suggestion that the PTO suggested the section 123 amendment?
Jim H. You got it all wrong. The USPTO has to issue a patent on any patent application filed, unless one of the stipulations set forth in 35 USC 102 arises, as modified by 103 and the claimed subject matter is statutory 35 USC 101. They can’t say we aren’t gonna examine it because you didn’t provide an ESD or you have too many claims or we don’t like your claim to priority. Christ man. Don’t you get it either. A patent application SHALL issue as a patent unless very limited circumstances occur.
AnotherDisgustedPatentAttorney,
The language of section 120 does not prevent the PTO from conditioning continuation practice. An applicant has the right to continuation practice, but this doesn’t mean that the PTO cannot request a justification for more than two. The PTO is entitled to Chevron-deference in developing procedures with respect to continuations practice on the face of 120.
However, these rules as promulgated deserve no deference. The PTO missed the target. Furthermore, the PTO should now be estopped due to the Congressional actions regarding the previously-proposed section 123.
Sorry, the above was supposed to be a response to notedwin’s commentary.
To Jim H and others:
Here is my analysis of the USPTO’s authority. Congress can give the USPTO either implicit or explicit authority to fill interpretive “gaps” of statutes. See Chevron. This authority can be either explicit (i.e. such as, in the proposed legislation giving EXPLICIT authority to interpret 120), or perhaps, implicit.
Furthermore, the type of authority (implicit/explicit) given by Congress is specific per statute. See Mead. So, the courts will need to look at if Congress has given either implicit, explicit, or no authority to interpret 120.
Arguments proceed as follows:
First – I would argue that the authority is certainly NOT EXPLICIT because the statutes simply don’t provide for it AND the proposed legislation is a good peek at what such authority WOULD look like. It does not exist, however. Hence, the arbitrary and capricious standard is out the window.
Second – 120 is “lock tight” (i.e. totally unambiguous); under Chevron, no deference is due to the USPTO. Furthermore, Congress has provided no explicit authority to interpret 120. The USPTO decided (ad hoc) to interpret the second “an application” in 120 as “ONE application”. However, this interpretation is NOT merited. For instance, as suggested in Henriksen, 1 USC 1 suggests that, in the USC, the word “an” can mean both the singular and the plural. That is, the pre-rule interpretation was appropriate. 35 USC 120 is not ambiguous on any level and Congress did not want the USPTO to “regulate” it is any terms.
Third – One can ask if Congress intended to IMPLY a “gap” for the USPTO to fill via regulations, but the legislative history behind 120 does not support this. If the courts think that the authority to interpret 120 was implicitly provided by Congress, a Skidmore “reasonable” type test applies. This is a less deferential test. One factor under Skidmore is the agency’s consistency in their interpretation of the statute it is interpreting. Now, think about it, how many times has the USPTO changed it’s position with respect to the number of continuations permitted under 120. 1) The argument set forth in Henriksen (i.e. grandparent, but not greatgrandparent, etc., 2) The proposed rules, and 3) The final rules. I think we could brainstorm some others, too.
I don’t really think that the substantive/procedural questions have any merit here folks.
“The PTO is not `preventing’ applicants from asserting late-presented claims — merely putting a condition on them by means of a petition.”
Yes, a condition that can almost never be satisfied. In fact, they are preventing filing of more than two continuations. To contend otherwise is disingenuous.
To NL, I’m deleting priority claims as I can, I’m hoping it’s retroactive. I don’t know for sure. With respect to deleting priority claims after allowance, that I believe would raise a substantial new question of patentability (since it changes the date of the search for prior art). If a prior patent to a child/grandchild etc. has issued, I don’t think that you can remove priority to the prior patent’s parents from the child/grandchild(or, you can, for term purposes, but it won’t change the family analysis from the standpoint of # of continuations)
Hey Jim H. I have this to say to you BAAAAAAA BAAAAAAA. Now please go back to your regularly scheduled programming. Sheeple phew!
SMACK DOWN
I no longer want just an injunction. I want a reprimand. Something embarassing for the record. A “smack down”. The guy who mentioed Gitmo and other scandals, this is not all that different. Sure, there is no torture etc. but we are seeing the effects of a government that acts unilaterally and with stated intent that is not the true intent.
SMACK DOWN
I no longer want just an injunction. I want a reprimand. Something embarassing for the record. A “smack down”. The guy who mentioed Gitmo and other scandals, this is not all that different. Sure, there is no torture etc. but we are seeing the effects of a government that acts unilaterally and with stated intent that is not the true intent.
SMACK DOWN
I no longer want just an injunction. I want a reprimand. Something embarassing for the record. A “smack down”. The guy who mentioed Gitmo and other scandals, this is not all that different. Sure, there is no torture etc. but we are seeing the effects of a government that acts unilaterally and with stated intent that is not the true intent.
Couple of questions re. deletion of priority claims (I hope this is the right place to post them):
o Does the deletion of a priority claim have a retroactive effect? In other words, is it as if the priority claim were never made? Consider the following scenario – Application “A” is filed and then application “B” is filed, claiming priority from application A. Applications A and B are taken up for prosecution. The Examiner finds very close art for Application B and the applicant decides he wants to abandon the application. The USPTO has already said that abandoning the CON (i.e. application “B”) will not allow the applicant to file 2 more CONs from application A, whether or not B is abandoned prior to or after examination. However, what if the applicant were to delete the priority claim prior to abandoning application B? Would application A then be entitled to two more CONs?
o Related question – can the priority claim be deleted at any point before/during/after prosecution (e.g. after allowance)?
Couple of questions re. deletion of priority claims (I hope this is the right place to post them):
o Does the deletion of a priority claim have a retroactive effect? In other words, is it as if the priority claim were never made? Consider the following scenario – Application “A” is filed and then application “B” is filed, claiming priority from application A. Applications A and B are taken up for prosecution. The Examiner finds very close art for Application B and the applicant decides he wants to abandon the application. The USPTO has already said that abandoning the CON (i.e. application “B”) will not allow the applicant to file 2 more CONs from application A, whether or not B is abandoned prior to or after examination. However, what if the applicant were to delete the priority claim prior to abandoning application B? Would application A then be entitled to two more CONs?
o Related question – can the priority claim be deleted at any point before/during/after prosecution (e.g. after allowance)?
Concerned Patent Citizen,
I am having difficulty agreeing with GSK’s position that the changes to § 120 are substantive. In fact, they being their argument assuming the changes are substantive without making the case that they are. The PTO is not “preventing” applicants from asserting late-presented claims — merely putting a condition on them by means of a petition.
Given that, I believe the rules should be permanently enjoined for other reasons, and one of these reasons is that the PTO — by presenting a proposed § 123 — two years ago — thought then that a law was needed to place any restriction or condition on continuation practice. Now that I’ve learned about § 123, it sure seems that the PTO thought then that 121 was substantive even though I am of the opinion that, on the face of 121, placing conditions on further continuations was permissible under Chevron.
Also, if you file an additional continuation beyond those that the new PTO rule allows, so that they do not recognized your priority claim and reject you on the basis of your own earlier publication of the subject matter of your application, why is that not substantive?
In the substantive vs procedural debate, the purpose of the rulemaking may have some role. If the purpose really is to cut down the backlog, that may sound like procedural.
If it is to prevent applicants from presenting claims late in the prosecution (like Whealan told the ABA.IPL section in Boston) how can that be anything but substantive?
Tom,
Jim H. here, and thank you.