PTO Publishes Comments on Proposed BPAI Rules

Because of the expected increase of appeals to the Board of Patent Appeals and Interferences (the “Board”), the Patent Office has proposed a new set of rules governing practice before the Board. [Proposed Rules]. The PTO received over fifty comments from the public — mostly negative.  As it turns out, the rules appear to primarily serve as a roadblock to appeals — either by raising costs or creating procedural stumbling blocks.  The extra rules are especially shocking when you consider that the vast majority of appeals filed never reach the BPAI. Rather, even after the applicant files an appeal brief, most cases are re-opened by the Examiner who either allows the case or re-opens prosection. [cite]

In its letter to the PTO, the AIPLA noted problems with the new rules:

Some of these new requirements … do not appear to address any specific problem being experienced by the Board, and would simply add additional formal requirements that would increase the burden and costs of preparing an appeal brief, and lead to even more disputes over compliance of an appeal brief with the many formalities already required.

Intellectual Ventures said it more forcefully:

The proposed new rules are onesided and will serve as a significant hurdle to a patent applicant in pursuing their statutory right of an appeal to the BPAI. Many of the proposed changes run counter to the patent statute and improperly attempt to transfer responsibilities and shift burdens of proof from the USPTO to applicants. … Since the agency is forcing more appeals, the appeal process should be reformed to make appeals easier and less expensive to prepare rather than make appeals more expensive and burdensome as in the proposal.

Some Examples:

  • Proposed Rule 41.37(q) and (r): would require applicants to identify for every argued claim where every claim limitation finds support in the specification and is illustrated in the drawings — even where a claim limitation is not at issue in the appeal. This requirement only raises the cost of preparing an appeal brief.
  • Proposed Rule 41.37(o)(7): Would require applicant to provide an explanation of patentability when obviousness is asserted. There may be some policy reasons for requiring this. However, under current law, the applicant is not required to prove patentability — rather, the applicant only needs to poke holes in the Examiner’s prima facie case of obviousness.  

In its comments, the Adams law firm of New Mexico noted a recent Patently-O posting on BPAI delay — and suggested that briefs should be submitted directly to the BPAI — not to examiners for their initial review.  

David Boundy – writing for CantorFitz – debated whether these rules are actually ‘procedural.’

When combined, the various limits imposed in the propped Appeal Rule accumulate to a substantive denial of an applicant’s right to a fair and efficient appellate review. Increased fonts [14 point], decreased page limits [25 pages], added material that must be included, no limits on the amount of material that an Examiner can present, and a draconian remedy for failing to address every point raised by an Examiner – all make one question the motivation for these proposed changes. At some point, a collection of “procedural” limits becomes so stringent that they amount to a “substantive” limit on the ability to prosecute an application.

A. Intellectual Property Organizations and Government Agencies

  1. American Bar Association (ABA) [PDF]
  2. American Intellectual Property Law Association (AIPLA) [PDF]
  3. Bar Association District Columbia (BADC) [PDF]
  4. Intellectual Property Owners Association (IPO) [PDF]
  6. Minnesota Intellectual Property Law Association (MIPLA) [PDF]
  7. National Association of Patent Practitioners (NAPP) [PDF]
  8. Washington State Patent Law Association [DOC]

B. Corporations and Associations

  1. 3M Innovative Properties Company (3M IPC) [PDF]
  2. Alkermes, Inc. [PDF]
  3. Amylin Pharmaceuticals, Inc. [PDF]
  4. Intellectual Ventures (IV) [PDF]
  5. Ceres [PDF]
  6. Cantor Fitzgerald L.P. [PDF]
  7. Eastman Kodak Company [PDF]
  8. Eli Lilly and Company [PDF]
  9. IBM Corporation [DOC]
  10. Microsoft Corporation [DOC]
  11. Wyeth [DOC]

C. Law Firm

  1. Adams Law Firm Co. [PDF]
  2. Greenblum & Bernstein, P.L.C. [PDF]

D. Individuals

  1. Aaronson, Larry [DOC]
  2. Alstadt, Lynn, J. [DOC]
  3. Baker, Daniel [DOC]
  4. Calvert, Ian, A. [DOC]
  5. Cermank, Adam, J. [DOC]
  6. Dolce, Marcus, P. [PDF]
  7. Golladay, James, E., II [PDF]
  8. Haynes, Michael [PDF]
  9. Hoover, Allen, E. [DOC]
  10. Hyatt, Gilbert P. (comments) [PDF]
  11. Hyatt, Gilbert P. (appendix) [PDF]
  12. Hyatt, Gilbert P. (comments) [PDF]
  13. Hyatt, Gilbert P. (appendix) [PDF]
  14. Hyatt, Gilbert P. [PDF]
  15. Jocke, Ralph, E. [PDF]
  16. Keegan, Robert, R. [DOC]
  17. Katznelson, Ron, D. [PDF]
  18. Marshall, Bob [DOC]
  19. Meirs, Raymond, C. Jr.. [DOC]
  20. Miller, Jerry, A. [PDF]
  21. Moore, Steven, J. [DOC]
  22. Moore, Steven, J. [DOC]
  23. Mullen, James, J. [PDF]
  24. Murashige, Kate, H. [PDF]
  25. Paul, Scott, D. [PDF]
  26. Reeves, Nancy, L. [DOC]
  27. Schideler, Blynn, L. [DOC]
  28. Steinkraus, Walter, J. [PDF]
  29. Svensson, Leonard [PDF]

104 thoughts on “PTO Publishes Comments on Proposed BPAI Rules

  1. 104

    “why doesn’t everyone address his argument rather than his person?”

    The answer, Einstein, is: this is about politics, not science or math.

  2. 103

    Having reviewed Mr. Hyatt’s comments, it is clear to me that he has a firm grasp of the “system” and his comments are on the mark (quite unlike the blather coming from senior management at the USPTO).

    Merely as an intellectual exercise, can anyone identify who among the senior management of the USPTO is registered to practice before the Office? Mr. Hyatt has been since 1975, but what about his “detractors” comprising the USPTO’s senior management?

  3. 101

    I just want to chime in and say that Mr. Hyatt’s practices are irrelevant to the accuracy of any comments he has made on the new rules. Whether he is a victim or a slimy manipulator of the patent system, why doesn’t everyone address his argument rather than his person?

  4. 99

    not in my district are there such juries … but, that too is besides the point, the patent office is not in the litigation prevention business. the courts have “judicious” provenance over that aspect of the system.

    and, again, so what? … the examiners are not a jury, they issue incomplete oas citing case law instead of clearly articulating positions for file histories so that others, competitors and examiners, alike, can see what the issues are.

    examiners becoming experts in search all the way through making cogent “patentability” arguments for 101, 102, 103 and 112 IS the REMEDY …

    im still waiting for you to express how an attorney bound by the patent bar and general practice can allow such rules to be promulgated while representing the best interests of the applicant? where is THAT good faith? where is THAT outrage?

    patents are instruments which attain value in a marketplace for competing terminology — so what? you think these arguments over value are made in a vacuum? give me a break. that which is of value seems to always rise to the top for lawyers to apportion “any” resulting wealth … im ALL for that, especially since it is clear that from any number of objective studies there has been no improvement post-gatt and anti-trust seems to have taken a back seat to other more pressing DoJ and Commerce Dept priorities.

    the OFFICE must be accountable to its own MPEP. what ever the make-up of the jury, if the inventor is left with just a shot at a trial, what exactly is the office doing to make the record clear so that justice is served and judges/juries/courts can issue consistent rulings?

    simply: who is driving this bus?

  5. 98

    “when does the argument reach a natural conclusion and a position is taken OBJECTIVELY!!”

    According to our legal system, the “natural” conclusion is a subjective one, i.e., a decision by a jury of your peers *or* 9 mostly white, male and elderly workaholic nerds.

  6. 97

    money, oh, money

    if you have a pioneer patent, what standard is required? that you give a little back to the government? what about a new industry or model or paradigm? (of the sort that was required to make a leap from vacuum tubes to intergrated circuits, when intel made watches?) well, that is what taxation is for. what about a monopoly over utilities or operating systems, is there a different standard of showing because an individual is asserting his rights over invention[s]?

    but your assertion that a pioneer is somehow acting outside of good faith (and, the standard there is what? the absence of bad faith?) when does the argument reach a natural conclusion and a position is taken OBJECTIVELY!! how many continuations were filed during other contentiously litigated patents? to whose benefit?

    if the government is trying to make an example of you whether terry schiavo or gilbert hyatt, the objective standard must be cleansed by transparency to ensure OBJECTIVITY.

  7. 95

    “properly filed application”

    That would be an application filed in good faith, right?

    Let’s say I file my spec and it’s basically a collection of rehashed Principles of Biochemistry, ten of the latest and hottest RNA interfence papers, and a bunch of claims about “altering expression” of this that and the other gene. There is no new data in the specification but there is surely some stuff that would past the now defunct strict-TSM obviousness test.

    Now I file 500 applications, funded by my Trust Fund. Then I go around and start asking for licenses, etc. (“please review the portfolio and call me”).

    Does this sound like “good faith” to you? Is this “proper”?

    I’m not asking whether I could “get away” with it because we know the answer to that. The question is: do the last couple hundred applications sound like “good faith” application filing to you? Is there nothing in the rules about filing in “good faith”?

  8. 93

    money … there you go again. you gonna call out farnsworth too? very small you must be.

    the point is that *our* government made the rules with presumably equitable judicial oversight. the legislature made a number of changes in the name of improvement — well, who is accountable now? who do the practitioners now represent? let them take a stand as a matter of ethical conduct and force the examiner to take a position on a properly filed application vis-a-vis their mpep. fairly simple.

    a patent is a GOVERNMENT SANCTIONED MONOPOLY– cant be sanitized any other way. it is and always will be about MONEY. make the examiner take a position! that is all that is asked. stop bullying the inventor.

  9. 92

    “he diligently and zealously pursued the protection that could be sought under the law at the time”

    So if I looked at all those applications and all those filings and petitions I won’t find a single example of one that wasn’t filed merely to confuse or delay? It’s just a picture perfect seamless example of good faith prosecution of “important inventions”?

    You’re serious?

  10. 91

    “I have no experience with Hyatt’s applications. There may be something here that indicates overreaching. But so far, it sure looks like he had some important inventions ”

    Name one.

  11. 90

    How does the proverb go?

    “The first to plead his case seems just, until another comes and examines him.”

    Well, two things:

    1) Since my Nov 10, 2007 at 09:06 PM post, I researched the GATT transitional rules, and don’t see any way that Hyatt could have used RCEs to “delay” prosecution of his applications (though there was a weird prohibition against the Office making restrictions that he may have availed himself of)… perhaps all he got was two extra after-final bites of the apple(s)… (I was actually hoping LL would correct me so I could learn)… and just now I read Hyatt’s comments. Which brings me to my second point, and the proverb.

    2) With no RCEs or continuations available to Hyatt, how can it be that 90% of over 200 cases are still pending 12 years later if there hasn’t been delay on the USPTO’s side, regardless of what Hyatt has done? (Of course, I could again be wrong about the RCEs… I still don’t think they’re good for the patent system, regardless.)

  12. 88

    Malcolm’s got his facts wrong again.

    Lemelson deliberately delayed prosecution of his applications and kept them secret.

    In contrast, Hyatt’s letters complain of deliberate delay by the Office. He says he’s been trying to get his applications examined. His letter points out a number of cases in which the Office has sat on the applications for two years, and in some cases up to seven. Enough of his applications are published that there cannot be a Lemelson-like surprise.

    So far it looks to me like the two situations are completely different. Hyatt’s situation is symptomatic of “Anonymous Chicken’s” observation that the Office has no respect for procedural rule of law, except when it can do so selectively – so far it looks to me like *that’s* the Hyatt problem.

    Here’s another contrast that I just don’t get, and would like someone to explain. “not gilbert p. hyatt | Nov 11, 2007 at 08:31 PM” says “hyatt cases really did eat up massive massive amounts of PTO resources.” Lazarus Long | Nov 10, 2007 at 06:09 PM notes “Around 2000 or 2001, it was calculated that [Hyatt] had spent around $4,000,000 just in office fees.” The PTO is a fee-for-service government function, and the fee levels were set at cost-recovery levels. (Yes, before 2004 they had gotten out of synch, but that’s not inventors’ fault.) Can someone explain why there’s something wrong in consuming examination resources that the applicant paid for? When there are a lot of claims, there are a lot of claim fees. Where’s the beef?

    I have no experience with Hyatt’s applications. There may be something here that indicates overreaching. But so far, it sure looks like he had some important inventions that were worth getting good patents on, he used the law as it existed at the time, he diligently and zealously pursued the protection that could be sought under the law at the time, and the PTO has been trying to screw him.

    Maybe there’s a contrary case to be made, but nobody in this thread has put together a case against Hyatt that makes any sense.

  13. 87

    § 10.102 Statements concerning officials. (a) A practitioner shall not knowingly make false statements of fact concerning the qualifications of a candidate for election or appointment to a judicial office or to a position in the Office. (b) A practitioner shall not knowingly make false accusations against a judge, other adjudicatory officer, or employee of the Office.

    Yes, follow that rule, but for you George, please understand what the law is too (many people gave their lives so you could have something much better than you may know):

    New York Times Co. v. Sullivan, 376 U.S. 254

    . . .

    The First Amendment, said Judge Learned Hand, “presupposes that right conclusions are more likely to be gathered out of a multitude of tongues than through any kind of authoritative selection. To many, this is, and always will be, folly, but we have staked upon it our all.” United States v. Associated Press, 52 F.Supp. 362, 372 (D.C.S.D.N.Y.1943). Mr. Justice Brandeis, in his concurring opinion in Whitney v. California, 274 U.S. 357, 375-376, gave the principle its classic formulation:

    Those who won our independence believed . . . that public discussion is a political duty, and that this should be a fundamental principle of the American government. They recognized the risks to which all human institutions are subject. But they knew that order cannot be secured merely through fear of punishment for its infraction; that it is hazardous to discourage thought, hope and imagination; that fear breeds repression; that repression breeds hate; that hate menaces stable government; that the path of safety lies in the opportunity to discuss freely supposed grievances and proposed remedies, and that the fitting remedy for evil counsels is good ones. Believing in the power of reason as applied through public discussion, they eschewed silence coerced by law–the argument of force in its worst form. Recognizing the occasional tyrannies of governing majorities, they amended the Constitution so that free speech and assembly should be guaranteed.

    Thus, we consider this case against the background of a profound national commitment to the principle that debate on public issues should be uninhibited, robust, and wide-open, and that it may well include vehement, caustic, and sometimes unpleasantly sharp attacks on government and public officials. See Terminiello v. Chicago, 337 U.S. 1, 4; De Jonge v. Oregon, 299 U.S. 353, [271] 365. The present advertisement, as an expression of grievance and protest on one of the major public issues of our time, would seem clearly to qualify for the constitutional protection. The question is whether it forfeits that protection by the falsity of some of its factual statements and by its alleged defamation of respondent.

    Authoritative interpretations of the First Amendment guarantees have consistently refused to recognize an exception for any test of truth–whether administered by judges, juries, or administrative officials–and especially one that puts the burden of proving truth on the speaker. Cf. Speiser v. Randall, 357 U.S. 513, 525-526. The constitutional protection does not turn upon “the truth, popularity, or social utility of the ideas and beliefs which are offered.” NAACP v. Button, 371 U.S. 415, 445. As Madison said, “Some degree of abuse is inseparable from the proper use of every thing, and in no instance is this more true than in that of the press.” 4 Elliot’s Debates on the Federal Constitution (1876), p. 571. In Cantwell v. Connecticut, 310 U.S. 296, 310, the Court declared:

    “In the realm of religious faith, and in that of political belief, sharp differences arise. In both fields, the tenets of one man may seem the rankest error to his neighbor. To persuade others to his own point of view, the pleader, as we know, at times resorts to exaggeration, to vilification of men who have been, or are, prominent in church or state, and even to false statement. But the people of this nation have ordained, in the light of history, that, in spite of the probability of excesses and abuses, these liberties are, in the long view, essential to enlightened opinion and right conduct on the part of the citizens of a democracy.”

    That erroneous statement is inevitable in free debate, and that it must be protected if the freedoms of expression [272] are to have the “breathing space” that they “need . . . to survive,” NAACP v. Button, 371 U.S. 415, 433, was also recognized by the Court of Appeals for the District of Columbia Circuit in Sweeney v. Patterson, 76 U.S.App.D.C. 23, 24, 128 F.2d 457, 458 (1942), cert. denied, 317 U.S. 678. Judge Edgerton spoke for a unanimous court which affirmed the dismissal of a Congressman’s libel suit based upon a newspaper article charging him with anti-Semitism in opposing a judicial appointment. He said:

    “Cases which impose liability for erroneous reports of the political conduct of officials reflect the obsolete doctrine that the governed must not criticize their governors. . . . The interest of the public here outweighs the interest of appellant or any other individual. The protection of the public requires not merely discussion, but information. Political conduct and views which some respectable people approve, and others condemn, are constantly imputed to Congressmen. Errors of fact, particularly in regard to a man’s mental states and processes, are inevitable. . . . Whatever is added to the field of libel is taken from the field of free debate.” [note 13]

    Injury to official reputation affords no more warrant for repressing speech that would otherwise be free than does factual error. Where judicial officers are involved, this Court has held that concern for the dignity and [273] reputation of the courts does not justify the punishment as criminal contempt of criticism of the judge or his decision. Bridges v. California, 314 U.S. 252. This is true even though the utterance contains “half-truths” and “misinformation.” Pennekamp v. Florida, 328 U.S. 331, 342, 343, n. 5, 345. Such repression can be justified, if at all, only by a clear and present danger of the obstruction of justice. See also Craig v. Harney, 331 U.S. 367; Wood v. Georgia, 370 U.S. 375. If judges are to be treated as “men of fortitude, able to thrive in a hardy climate,” Craig v. Harney, supra, 331 U.S. at 376, surely the same must be true of other government officials, such as elected city commissioners. [note 14] Criticism of their official conduct does not lose its constitutional protection merely because it is effective criticism, and hence diminishes their official reputations.

    If neither factual error nor defamatory content suffices to remove the constitutional shield from criticism of official conduct, the combination of the two elements is no less inadequate. This is the lesson to be drawn from the great controversy over the Sedition Act of 1798, 1 Stat. 596, which first crystallized a national awareness of the central meaning of the First Amendment. See Levy, Legacy of Suppression (1960), at 258 et seq.; Smith, Freedom’s Fetters (1956), at 426, 431, and passim. That statute made it a crime, punishable by a $5,000 fine and five years in prison, “if any person shall write, print, utter or publish . . . any false, scandalous and malicious [274] writing or writings against the government of the United States, or either house of the Congress . . . or the President . . . with intent to defame . . . or to bring them, or either of them, into contempt or disrepute; or to excite against them, or either or any of them, the hatred of the good people of the United States.” The Act allowed the defendant the defense of truth, and provided that the jury were to be judges both of the law and the facts. Despite these qualifications, the Act was vigorously condemned as unconstitutional in an attack joined in by Jefferson and Madison. In the famous Virginia Resolutions of 1798, the General Assembly of Virginia resolved that it

    “doth particularly protest against the palpable and alarming infractions of the Constitution in the two late cases of the “Alien and Sedition Acts,” passed at the last session of Congress. . . . [The Sedition Act] exercises . . . a power not delegated by the Constitution, but, on the contrary, expressly and positively forbidden by one of the amendments thereto–a power which, more than any other, ought to produce universal alarm because it is leveled against the right of freely examining public characters and measures, and of free communication among the people thereon, which has ever been justly deemed the only effectual guardian of every other right.” 4 Elliot’s Debates, supra, pp. 553-554.

    . . .

  14. 86


    I’m sure your post is accurate. Just wanted to remind you that PTO (mis)management is on the offensive. Don’t give them anything to shoot at.

    I think it’s highly unlikely that any practitioners are going to be “reported” to OED by any of the examiners for the simple reason that many examiners know they don’t obey the law, the rules, or the MPEP and they are not going to call any attention to that fact. Besides, there’d be no counters or other time for doing it. 🙂

    I just don’t want to see any of my colleagues having to waste their time defending themselves in some version of the Salem witch trials.

    We have the moral high ground. Let’s not concede it to PTO (mis)management.


  15. 85

    No false statements here JD. I would say repeated reopening of presecution after filing multiple briefs and strings of office actions would be evidence of unnecessary prosecution. And of course, it costs money to respond to each of those actions.

    But, I will abide by your advice.

  16. 84

    I would remind my friend JohnG, and everybody else posting, of 37 CFR 10.102(b).

    Keep in mind how off the deep end OED is at this point. IMO. 🙂

    Having said all that, as we all know, truth is the ultimate defense.

  17. 83

    In fact, “outing” bad examiners might be one way to get them to shape up, provided that the accusations of incompetence or malfeasance are backed up but the publicly available record. If I had the time I’d set up a “Bad examiner” blog, where I’d publicly laud the good examiners and blast the bad ones (and their supervisors).

  18. 82

    Disciplined for naming an ineffective examiner? On what grounds? The OA’s are all public record. As I don’t prosecute in any of those GAUs and don’t know these examiners, it would be useful to know the actual app numbers, but of course now, if Anonymous Chicken cites the apps in question, the named examiners might figure out who he is. So A.C., please feed us some app numbers to look at under a different name. Inquiring minds want to know!

  19. 81

    That one I named cost my former client tens of thousands of dollars of unnecessary prosecution. And most of our work with that client was funneled to him. It was depressing!
    <<< Not only shouldn't you be posting names of examiners you should probably be disciplined for doing so.

  20. 80

    Curious, what is the difference between others here bashing the likes of Dudas, Doll et al. and these other PTO employees? Do you think hidng it will make a difference with these individuals? That one I named cost my former client tens of thousands of dollars of unnecessary prosecution. And most of our work with that client was funneled to him. It was depressing!

  21. 79

    As tempting as it may be I don’t think that we should be posting the names of specific examiners.

    Dennis, do you agree?

  22. 78

    Inquiring Mind, the PTO will never take advice from outside. They have a completely different agenda. They could fix these problems, but they have no desire to do it.

    The only thing that will cure it would be to remove most of management. I say the same thing about the District of Columbia. Just about everyone must go. Rotten apples all over this agency.

  23. 76

    Lazarus Long –

    I’m pleased to hear that somewhere in the office someone is issuing Actions that “With EVERY limitation of every claim addressed in the prior art rejections. Often in excruciating detail. For the 112, 1’s, we go completely by the book. Make a complete analysis of the claim & spec. Point out what is shown and is lacking. Explain why all the (8? if I remember right) factors are considered and all point to a lack of written description/possession.” Can you PLEASE tell me how to get treated like Mr. Hyatt?

    Why should it take exceptional circumstances to get examination “by the book?” I frequently phone examiners and ask “Please turn to MPEP section so and so. It says the examiner must do such and such. I’ve asked you to do that a couple times. Is there some exception that I don’t know about? Some disagreement about the word ‘must’?” One time in four the examiner says “I don’t have to do that.” Problem examiners –
    – Richard Ellis in 2183
    – Ella Colbert in 3694
    – David Eng in 2155
    – Frantzy Poinvil in 3691
    – Meng-Ai An

    I NEVER get complete first actions. Less than 5%. I seldom get complete second actions. Over 60% of my cases go to third, and one to a FIFTH Action before I can get the examiner to pay attention to claim limitations that have been there big as a barn since day one. “Answer All Material Traversed” seems to be the thing that examiners most try to avoid.

    The reason applicants and examiners can’t come to agreement is that we’re playing two different games – we’re playing by the book, and examiners are playing “Why look up the rules if my management lets me make up the rules?” If every action set out findings on every claim limitation, and addressed every prima facie element of every rejection, the Office’s backlog would melt away in two quarters. If the examiner is right, I’d be able to see it. If the examiner is wrong, the examiner would be able to see it.

    The two biggest problems in the Office are:

    (a)examiners don’t get enough time to do it right the first time (or the second). The solution for the PTO is the same as for Detroit in the early 1980’s – slow the line down. Give the line production folks time to do it right the first time, and demand quality, so that you don’t have so many defects to catch at the end (appeal) and so many warranty claims (RCE’s).

    (b) Management refuses to enforce procedure. All too many examiners are right – they don’t have to follow procedure, because their management doesn’t enforce procedure. I had one T.C. Director tell me he fully recognized that he was incentivizing his examiners to break the rules by giving them counts even if he could see that they were breaking procedure, but in his view, procedure “doesn’t matter.”

    PTO, your problems are internally generated. Put your own house in order. THEN let’s see if there’s a remaining problem that needs to be solved.

  24. 75


    he correctly looks out for his *own* interests — they are *his* inventions up and until he exhausts his options for prosecution. but he pays his way. the rules should not change midgame for any applicant (regardless even of the opinions of other applicants!). his comments are correct.

    first gatt, then 1999 and now this series of eerily politicized attacks on the patent system. are the “patent list” yearly winners more innovative? ill repeat it again, off topic as it seems, how is this consistent with the direction being taken with regards to copyright protection?

    the patent office exists for inventors, who happen to be mostly individuals. it’s methods should be objective to the point of following it’s own mpep and issuing consistent OAs. that shouldn’t require any additional “improvement measures”.

  25. 74


    I’m not “keeping company” with Mr. Hyatt, but like I said, his comments are correct.

    You may not appreciate Mr. Hyatt’s “prosecution style,” and from the comments on this topic, it appears many don’t, but you can’t let that cloud your objectivity.

    Take his name off the comments and sign them “anonymous” and then please tell me what is incorrect about them.

    You won’t be able to. Nor will any of the other posters.


  26. 73

    We have the PTO going on several offensives to change rules in a ham-handed and unilateral fashion. Each time, the modus operandi of PTO management appears to disregard, even disdain, both the judiciary and the legislature, if not usurp the power of those government branches.

    This leads me to wonder if there are not larger notions of a unitary executive-branch being manifested in these policies, come what may, and without regard for the damage such actions may cause.

    Both the BPAI rules and the Nov. 1 rule change can be seen through this optic as a pattern of behavior by the PTO.

  27. 72

    We have the PTO going on several offensives to change rules in a ham-handed and unilateral fashion. Each time, the modus operandi of PTO management appears to disregard, even disdain, both the judiciary and the legislature, if not usurp the power of those government branches.

    This leads me to wonder if there are not larger notions of a unitary executive-branch being manifested in these policies, come what may, and without regard for the damage such actions may cause.

    Both the BPAI rules and the Nov. 1 rule change can be seen through this optic as a pattern of behavior by the PTO.

  28. 70

    “And the rules generally hit on two fronts: first, typically to gut small business or otherwise sandbag competition from the little guys against the big guys…”

    Why can’t the powers that be see that Google and Apple were once the “little guys” and that (as a country) we need the little guys?

    Without little guys, where will this country find its big guys in the future?

  29. 69

    It would be a mistake to underestimate Whealon, he’s switched to being a democrat now, and he has recognized that the path to director of pto is thru the a congressional ip committee. Plus he’s freaky and so blends well with the DNC core. Hopefully a third Clinton term will produce a strong director from pharma or 3m, or at least a person not purposefully grinding the pto organization (and patent rights) into the ground. Toupin of course, another BSA soul mate, also wants the job, but had too much baggage to get a committe slot and is not sharp enough for a DOJ slot/advancement. So we are stuck with him at PTO/OLP until retirement/change of admin.

    BTW, its not just pto that is ramming down new rules & regs to effect policy. And the rules generally hit on two fronts: first, typically to gut small business or otherwise sandbag competition from the little guys against the big guys or second, to expand the bureaucracy – which apparently is the bribe the bushies are having to make with the agencies to get the rules passed. FCC, DOJ, DOE, and on and on. This town needs a double or triple flush.

  30. 64

    Deep staffer:
    Now isn’t That an interesting turn of events! You could actually almost See his dim little brain trying to cope with all the dreck he was trying to *promulgate*, with the very brilliant Wendy Verlander apparently very puzzled about why they were trying to just make it up as they go along, with no regard for what the Constitution has to say about it. She made a Very compelling case, which can be seen towards the end of this video: link to or the lively discussion afterwards link to She is my hero (large sigh) Whealon tries to make his arrogant case about 3/4rs of the way thru the first video. BTW… I am currently putting together a coalition of indepenent inventors’ letter to the Senate leaders, which will hopefully include several hundred inventors. Got inventors? Tell them to contact Stan E. Delo
    Port Townsend, WA

  31. 63

    Mr. Hayden writes: “I read the proposed rules yesterday and was appalled. I am prosecuting cases with 80 claims (and no, I didn’t write them), and how you can get the appeal brief for such w/i the 25 page limit is beyond me, esp. with the requirement that there be one inch margins all the way around, that the type be double spaced, and the required font size. Interestingly, the appeal requirements are far, far, stricter than the application requirements, as to form.”

    I filed a brief on case with 45 pending and appealed claims. The argument section, with some copious double-dipping in case they don’t read the main argument the first time around, is 14 pages. The brief in total spans 31 pages — letter-size, 1″ margins, single-spaced 12-point font. The other 17 sheets are due to the current brief requirements. I can’t imagine writing a decent brief that complies with the proposed format.

  32. 62

    That seems to make some sense with International filings, which I have been considering lately… As in going straight to a PCT filing, and then choosing the US, as well as perhaps England, Germany, or maybe Australia/New Zealand should my research using a PPA seem to indicate which way to go. Right about now I tend to think I would like to keep my stuff Away from the PTO as long as I possibly can. Any ideas about the pendency if I go this direction? I suspect the PCT has it much more together than the PTO these days. As I seem to recall, I will have about 31 months before I absolutely Need to decide which way to jump as regards markets. Thanks for the very interesting perspective….

  33. 61

    @Stan E Delo: Whealon is most certainly part of the problem – he has left pto and is now in charge of shutting down congressional investigations of pto by sitting on the staff of the congressional IP subcommittee! In other words, the very one responsible for these rules is now over at congress. Of course, he replaced the deputy now at PTO that came over from the committee! as her reward for shutting down investigations the last round!

    Petitioning congress might be useful. Petitioning the public integrity section of the DOJ and the Adbramov task force sound more productive.

  34. 60


    Yes, it is an accomodation to “big corporations” and harmonization. For us, it’s no big deal, since when we file internationally we subject our ideas to publication anyway. While our corporation has the internal policy that we will not knowingly infringe the valid patents of others, it is impossible, without mandatory publication, for us to anticipate which research/investment paths to go down. For example, say we develop technology in-house, and in today’s market we are trying to bring this technology to market asap, we need to commit to a hundred million dollar investment to do so. How do we deal with an undisclosed patent which issues after we’ve made that commitment? Stop construction and breach our contracts? Be held over a barrel for outrageous licensing terms, which may make our ultimate products unprofitable? It’s a tough call. At least publication gives us some idea as to what we’ll be up against, and let’s us prepare for a design around, if possible.

  35. 59

    Another aspect that I find especially disturbing is the Mandatory Publication *feature*, such I will have completely blown away any possibility of being able to maintain Trade Secrets, as the whole world will see them, even if I am unable to aquire a Patent as much as a year and a half later. This may be a bit off topic, but I cannot understand the reasons behind Mandatory Publication. Are they just cutting a deal with large corporations, Harmoniztion, or whatever?? At least I could develop and try again if they hadn’t already given my invention away to the world for me, which for me amounts to Russian (or Chinese) Roulette with 2 or 3 bullets in the gun, instead of just one.

  36. 58

    Alun, we purchased petition software and were planning (hopefully) to use it to make our collective voices heard with regard to the next Director (after Jan. 20, 2009) having the requisite qualifications. Things are just a little too busy right now – perhaps that is why USPTO management is attempting to bombard us with one volley after another.

  37. 57

    “That doesn’t even speak to having my patent challenged for the whole lfe of the patent, at who knows What kind of expense. Seems pretty bleak to me, and might cause me to keep my inventions as trade secrets, which is a tenuous position at best.”

    In fact, I have begun advising my clients (within the corporation) to rethink the value of patenting as a whole. We inevitably teach more than we get in terms of protectable rights, and with existing patent validity being called into question by both KSR and the proposed patent reform bills, our concerns about infringing others’ patents have lessened considerably.

  38. 56

    YOU’RE FIRED, but before we permit you to leave you must wear this sign-board that states, “I am a pinhead” on your way out the door!

  39. 55

    Very well said in my opinion, and I believe the problem at the PTO derives from Dudas, and after watching the Patent Reform debate that included Whealon,(mentioned in the blog about J.D. Rei) I would suggest he is a major part of the problem as well. He was so arrogant in his presentation, it made me understand very clearly how entrenched the adversarial attitude of the PTO has become lately. Also you are right on the money, when you mention that individual inventors are being priced out of existence, especially if the Patent Reform is enacted. It will cost me $20,000 instead of about 5 for each of my several inventions, mostly because of the AQS document required. That doesn’t even speak to having my patent challenged for the whole lfe of the patent, at who knows What kind of expense. Seems pretty bleak to me, and might cause me to keep my inventions as trade secrets, which is a tenuous position at best.

  40. 54

    I think the biggest problem is that with bigger type, less pages and more verbiage, it may simply be impossible to write a compliant brief, and if we can we will be forced to leave things out. Perhaps we should request oral hearings on a routine basis? OTOH, can we discuss anything that isn’t in our brief?

  41. 53

    The best idea that I have seen is that we should petition for the PTO management to be replaced. There are a lot of web sites where you can set up petitions. What should we have the petition say?

  42. 52

    I see the real emphasis for these rules being the currently enjoined new continuation rules. I think that the reality once the dust settled and the continuation rules were in effect is that for many, an appeal after a final rejection would have been almost automatic. If you are dealing with a recalcitrant examiner, the logical progression would seem to have been in many cases to have appealed after the first Final, then RCE, and then appeal again at the next Final, etc. I would think that tens of thousands of additional appeals a year would have been likely.

    So, what to do? The USPTO can’t just eliminate appeals to the Board (because of the minor inconvenience of 35 USC, etc). So, the answer is to make them much more expensive and picky, with minor transgressions of these overly picky, etc. rules getting the appeal booted.

    I read the proposed rules yesterday and was appalled. I am prosecuting cases with 80 claims (and no, I didn’t write them), and how you can get the appeal brief for such w/i the 25 page limit is beyond me, esp. with the requirement that there be one inch margins all the way around, that the type be double spaced, and the required font size. Interestingly, the appeal requirements are far, far, stricter than the application requirements, as to form.

    And I not the least bit happy having to support stuff that is not really at issue. Maybe not the poison pill of the ESD, but close.

  43. 51

    I don’t really know anything about Mr. Hyatt, but I read his comments and they are absolutely correct.

  44. 50

    Dear agent007 & bierbelly,

    I’d like to expand on your earlier comments regarding the Constitution even though it strays a bit from the theme of this thread. Before doing so, I’ll make this general observation on the big picture:

    It appears to me that all three branches of government began not too long ago to openly ignore the Constitution, and therefore the very premise of the Constitution, the Checks and Balances between the three branches, has been seriously denigrated and or is no longer functional. Our country is on the way to becoming a totalitarian nation run by arrogant self-aggrandizing ignoramuses, big business lobbing interests, and or worse.

    Our American democracy is at risk not only from terrorists, who are as we speak religiously and relentlessly planning our demise, but our American democracy is at risk from the severe shortage in all three branches of American Statesmen who abide their Oath or Affirmation:

    Article VI, Clause 3 of our Constitution states:
    “The Senators and Representatives before mentioned, and the Members of the several State Legislatures, and all executive and judicial Officers, both of the United States and of the several States, shall be bound by Oath or Affirmation, to support this Constitution; but no religious Test shall ever be required as a Qualification to any Office or public Trust under the United States.”

    Aristotle said: “What the statesman is most anxious to produce is a certain moral character in his fellow citizens, namely a disposition to virtue and the performance of virtuous actions.”

    Getting back down to our immediate IP interests, the incompetent management of the PTO makes most Patently-O readers sick – – how can PTO management possibly motivate their Examiners and other staff to do a good job. According to the GAO’s September PTO report, PTO management couldn’t manage their way out of a paper bag. The GAO report can be found on this link:
    link to
    PTO Morass: GAO Report on the PTO:
    “Hiring Efforts Are Not Sufficient to Reduce the Patent Application Backlog”.


    Agent007 & bierbelly, regarding your earlier Constitutional comments, Congress is, as you know, bound by Article VI of the Constitution which states:

    Clause 2: “This Constitution, and the Laws of the United States which shall be made in Pursuance thereof … shall be the supreme Law of the Land…” (the “Supremacy clause”)

    Clause 3: “The Senators and Representatives before mentioned, and the Members of the several State Legislatures, and all executive and judicial Officers, both of the United States and of the several States, shall be bound by Oath or Affirmation, to support this Constitution; but no religious Test shall ever be required as a Qualification to any Office or public Trust under the United States.”

    There is no need guess what the Founders had in mind regarding what is loosely referred to as the “patent clause” in Article I:

    “Section 8: The Congress shall have Power … [Clause 8:] To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;”

    Upon careful consideration, the Founders’ intentions become crystal clear, concise and in fact comprehensive. The Founders said exactly everything they intended to say and no more (even without Einstein’s sage advice, the Founders “made the ‘patent clause’ as simple as possible, but not simpler”).

    Important underlying “patent clause” observations:

    FIRST: The words “patent,” “injunction” or “enjoin” do not appear in the Constitution.

    SECOND: Congress is not required to “To promote the Progress of Science and useful Arts…” under clause 8 (Congress has discretion to do so)

    THIRD: If Congress does elect to so “promote the Progress” it shall administer/legislate such promotion as it deems fit, with one proviso – – Congress must …

    FOURTH: grant to “Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”

    There are explicit exceptions to “the exclusive Right” within the Constitution that consist of the requirement to “provide for the common defense, promote the general Welfare” (the Preamble) and “To regulate Commerce” (Article I, §8, Clause 3) via anti-trust legislation.

    Beyond these exceptions, the Framers also gave Congress Constitutional Power to regulate “the exclusive Right,” and Congress has exercised that Power: For example, Congress has legislated different types of patents, trademarks and copyrights, each with different “limited Times.”

    More Constitutional “patent clause” details may be found on this link
    link to
    in my comment posted on Nov 06, 2007 at 08:30 AM

  45. 49

    “Bierbelly, my guess is the IPO is merely speaking the truth of present reality – any company today that relies solely on USPTO search and examination to obtain a patent which it hopes can be asserted in industry will (in many arts) be sorely disappointed more often than not.”

    Absolutely true, but what company of any size doesn’t do at least a reasonable modicum of a patentability search? And woe unto ye who don’t, if your patent is ever challenged…we all know that. What goes unsaid in all these analyses is that Rule 56 still applies, and always has. Why is more needed?

  46. 48

    Since there is widespread if not universal agreement that these proposed new appeal brief rules add unnecessary extensive paperwork requirements and costs, why doesnt someone object to the PTO, and at their OMB review and elswhere, that they violate the Federal Paperwork Reduction Act? [Or is that a toothless statute?]

  47. 47

    Bierbelly, my guess is the IPO is merely speaking the truth of present reality – any company today that relies solely on USPTO search and examination to obtain a patent which it hopes can be asserted in industry will (in many arts) be sorely disappointed more often than not.

    I don’t like it either, but I believe this *is* where we’re at. (We didn’t used to be here prior to the ’90, and my guess is we may never be able to go back to how it was. Going forward will be difficult, especially since the PTO does not know which direction to go at the moment.)

  48. 46

    “IPO PRESIDENT SPEAKS ON PATENT QUALITY — Today at the Trilateral Users Conference in Washington, DC, IPO President MARC ADLER gave a presentation on “Quality Patent Examination and Prosecution.” He said patent applicants “must take responsibility for quality patent preparation and prosecution and not rely solely on the [patent office] examiner.” He added that patent offices must not “depend solely on the applicant’s search and analysis.”


    This just came across in email. See, this pisses me off. The IPO is lending credence to the PTO’s massive dis-information campaign, rather than attacking it wholesale. Why are we supporting these guys? Are we really thinking they are helping with statements like this? It’s really time to stop coddling the PTO management, and take the gloves off.

  49. 45

    This is not just a Patent Office run amok;
    this is a PTO crossed over to the Dark Side.

    It’s going to be a close call as to who wins the Darth Vader of the Year award, Dudas or Cheney?

  50. 44

    In my short time at the Office, I recall some examiners gaming the system…hardly the majority. Instead of firing the examiners who were doing the dirt, “management” continually revised the internal rules so that everyone was affected. Great for morale.

  51. 43

    if the mpaa & riaa can get the dmca AND now the DoJ to focus on copyright, what compromise is necessary (dont see anyone fighting for the writers or artists or little guys though)???

    i dont see this “fight” stopping with a few go-arounds — it will continue … they get paid no matter what they do with their time … it is a classic Industry versus Inventor …

    the arguments that resonate :: china, employment, innovation, entrepreneurs, growth, immigration, too much government …

    folks who suffer the most (the clients who are looking at the estimated increase in costs & are NOT small entity) should be contacting reps and senators every day they can … unfortunately, it looks like many attys simply lack independent inventors and small start-ups … they’ve been costed out of the system and the next layer to go is the expense of prosecution for which all of these proposed rules share a very clear commonality. “too expensive to prosecute, so what we have less backlog?”

    without background and good faith, what is the negotiation? the battles/war has already begun … the SENATE S. 1145 is up for vote shortly — and Schumer & Feinstein are important votes (the likely reason the Schumer letter was provided but not edited to reflect the aug 21 rules package)

    go to (i have no affiliation) – you can have a hand delivered letter to the congress for 500 bucks or so … those go a long way and for a billable hour … well worth it

  52. 42

    “Almost nobody in Congress is interested in theoretical emanations from the pertinent Constitutional clause, or in guessing what the Founders may or may not have had in mind. Instead, Congress responds to lobbying and pressure from interested parties (which is essentially its function, after all).”

    Undoubtedly, you’re correct about Congress. I was thinking of an attack directed more at the press, at protecting the rights of the little inventor (does he exist anymore?) to obtain the rights granted by the Constitution and pull himself up by his bootstraps…you know, like Bill Gates did. ;^)

  53. 41

    Interesting. My take on this is almost exactly the opposite (except for Congress not listening to lawyers/agents, which is 100% correct).

    Almost nobody in Congress is interested in theoretical emanations from the pertinent Constitutional clause, or in guessing what the Founders may or may not have had in mind. Instead, Congress responds to lobbying and pressure from interested parties (which is essentially its function, after all).

    If Big Pharma and Big Tech can work out some kind of deal in Congress, we can all move on. Until then, we are stuck with a ringside seat at the political sausage factory, which is naturally unpleasant.

  54. 40

    IMHO, we’ll lose this round, if we “win” on the 5/25 and continuation issue. I think that somehow we need to take this to the constitutional level. What did the Founders mean, and are the currently proposed changes commensurate with their intentions. Invoking the constitution and the founders is the only real way to combat all this crap. Congress isn’t going to cry tears for “BIG PHARMA” or “BIG OIL” or whatever “BIG” industrial power might have enough patents filed to allege sufficient damages to warrant slam dunking the PTO on all these issues. They certainly aren’t going to listen to lawyers.

  55. 39

    “Words are power, and “pro-patent crowd” is saying “pro-monopoly.””

    I agree that it is unwise for people who want a good, fair patent system to self-identify as “pro-patent”. However, the suggested alternative of “pro-innovation” can also be made to cut both ways, so there is no easy answer on terminology.

  56. 38

    “how about proposing that fees be raised on excess claims and on continuation filings???”

    I don’t think increased fees is going to be regarded as sufficient in this political climate. Especially since that has already been tried with respect to claims, and it was shot down (back in the days when the PTO actually cared about feedback from the bar).

    Something more substantial than fees probably needs to go on the table.

  57. 35

    “We, applicants and attorneys, are the essential part of the patent system, can we just organize ourselves and show some power over the issue?”

    Just let me know when you are ready to make your move against PTO tyranny and its newest rules. I smell meat, red meat!

    I just viewed Braveheart for the umteenth time. It always gets my spirit on the uppity up while helping to relieve frustrations.

  58. 33

    From agent007:
    The “pro-patent crowd” (for want to a better term)….

    Words are power, and “pro-patent crowd” is saying “pro-monopoly.” That would be like people who believe a woman should be in control of her body call themselves “pro-baby-killers,” or people who believe life starts a conception call themselves “pro-slavery of women.”

    The term we should refer to ourselves as to make it clear to those who are not familiar with what is really happening is something more along the lines of “pro-innovation.” As a patent attorney for a small biotech start-up, we would not exist without patent applications. No one would ever give us a dime for research for finding new ways to fight cancer if they didn’t think there was a hope of return on their business investment. I am very afraid of the future of American innovation if the current PTO junta get their way. If China has stronger patent protection in 10 years than the US, guess where all the jobs will be?

    I hope the next administration does not believe they are above the law and know better than everyone else….

  59. 32

    To EG,

    I agree that it is difficult to imagine negotiating anything in good faith with the PTO top brass in this environment.

    However, even now, the attempt could well be politically useful, assuming it comes to a messy showdown in Congress.

    The “pro-patent crowd” (for want to a better term) is going to have to figure out what concessions to offer in political compromise, and what to extract from the office/opposition in return. Since some such compromise is likely inevitable, it can’t really hurt to run it by the PTO and have it ignored, then bring it back for real in Congress.

    That way it isn’t so easy to paint the pro-patent crowd as a bunch of intransigents who are adamant about unlimited claims and continuations. If that perception sticks, we will lose.

  60. 31

    I agree, George. And we should all contact the AIPLA, IPO, ABA and others of which we are members and encourage them to push for his resignation.

  61. 30

    To agent007,

    Thanks for you thoughts. Thinking that the PTO hierarchy is setting this up as “part of the plan” to “march into Congress” is too deep even for them. But you’re right that the testimony should come from the “major industry players, small companies, independent inventors, etc. (i.e., clients).” I would also include organizations like the IPO, IEEE, or even the AIPLA that have some credibility up on the Hill.

    To Patently Deferred:

    Yeah, it would take something to get Congress look at this mess, certainly this year. But I don’t see the GSK/Tafas suits getting resolved before next year at least, so may be early next year would be possible. Possibly we could get Senator Schumer to take some interest in holding hearings, given that he’s already suggested to Dudas to “slow down.” I’ve also got to believe that GSK winning the PI motion has woken up even Congress to the depth of this fiasco, and that if it continues (or if any further suits are filed), this will put it higher on Congress’ radar screen. Having an agency like the PTO under this sort of assault by everyone (and with no real support from the private sector) has got get Congress’ attention at some point.

  62. 29

    It’s time for Dudas to step down. And it is time that AIPLA, the IPO, ABA and others push for his immediate resignation.

  63. 28

    Patently Deterred:

    I think your proposal is very interesting. Pubilcity is what you need. Can you think of the downside, if any, of your proposal?

  64. 27


    I too would like to negotiate these Rule packages with the PTO hierarchy to work out something that reduces the backlog yet doesn’t straitjacket the examination process. Unfortunately, the current PTO hierarchy (unlike in the past) has shown absolutely no willingness to “negotiate” anything with the patent bar, applicants, patent owners or even their own examiining corps. Instead, the current PTO heirarchy has shown a complete willingness to proceed ahead with their agenda, ignore the patent bar, applicants and patent owners (or at most give lip service to what they say), play “fast and loose” with the APA process and OMB process, for patent owners and applicants to the “drastic step” of filing suit to enjoin the Continuation-Claim Limitation Rules package (something that I can’t recall every happening before, at least on this scale), and apparently expressing a willingness to fight these suits to the “bloody” end. That doesn’t suggest any willingness on their part to “negotiate” anything. In fact, they’ve so damaged the credibility and trust of the PTO that it may take years to get us back to where we can resolve such issues with any degree of civility. Believe me, my heart is broken over where we are now because this isn’t a good situation. But “giving in” to such draconian and ill-considered Rules enacted in gross violation of the APA and the rule of law would be worse yet for the examination process (our brothers and sisters in the examining corps included).

  65. 26

    It’s entirely possible that this mess is “part of the plan” and that they march into Congress with the following answers:

    1) The patent bar objects to all changes to the system. You should ignore them too.

    2) We tried to do it under the current law, and it looks like it isn’t going to work. Give us the power and we’ll fix things.

    3) Give us the power and we will fix things.

    4) The bar is giving spin, and we’re telling it how it is.

    If the $$$ and votes are present in Congress to support this agenda, PTO management won’t be sweating bullets. After all, Congress has a certain tendency to buy into the “give us power and we’ll fix things” act.

    Congressional testimony from members of the patent bar isn’t going to do much good. The way to fight this mindset in Congress is to get testimony from major industry players, small companies, independent inventors, etc. (i.e., clients).

  66. 25

    EG – my proposal is at least half serious. I’m all behind your idea, but you’ll have to explain to me how you, me, anyone can make Congress do what you propose. Absent some Congressional means, I’d say that we should start with things we can control.

  67. 24

    To those who suggest a “filing strike”, I’ve got a better idea: have Congress ask the PTO hierarchy to show up before them to testify and explain: (1) why the PTO has essentially ignored the overwhelming and vocal opposition by the patent bar to these Rule packages; (2) why GSK/Tafas were successful in getting implementation of the Continuation-Claim Limitation Rules enjoined; (3) how the proposed Appeal, Markush and IDS Rule packages comply with the patent statutes, case law, APA process and OMB process; (4) why the PTO wasn’t up front with the patent bar and OMB as to the collective effect of these Rule packages; (5) etc. (in case someone else has something else they want to add to this list). One thing I can guarantee is that the PTO hierarchy doesn’t want to be called onto the carpet to explain this Rules package fiasco and will sweat bullets if asked to do so by Congress. Peterlin might have been able to “sweet talk” Congress about the teleworking initiative, but the PTO heirarchy would have a much harder time “explaining away” this Rules package fiasco, especially if Congress also makes it known that the affected patent bar will be invited to testify as well.

  68. 23

    My main concern at this point is not the details of any particular rule package. Instead, we seem to be drifting into a situation of open warfare between the patent bar (and applicants) and the office.

    It may be time for some real negotiations between office and bar (e.g., with one or more of the professional organizations negotiating on behalf of the bar), with the aim of finding a more reasonable way to address the concerns of the office.

    The present approach of the PTO ramming rule changes through in a high-handed manner and playing lawsuit lottery with the results is beyond ridiculous. Legislation at this level of detail is also a scary proposition in general, due to unintended consequences issues.

    These negotiations would not be easy. The bar probably would have to accept substantive claims and continuation limits (claim limits per application, not per family as proposed). In return, the office should be obliged to remove ESD-like practice entirely from the rules, and also agree to make no other rules requiring Applicant to set forth an affirmative case for patentability. The first-instance burden of making a case for unpatentability should remain with the office (unless, of course, that part of the statute is changed).

    Presently, petitions to make special on most grounds require an ESD-like document, and that requirement should be removed. Expedited examination is a matter of scheduling, as opposed to the time taken to perform the work, so there is no real justification for the ESD even in that context.

    Of course, the negotiations would also need to deal with many other issues (e.g., IDS practice), but I would be content with a deal along the lines above.

  69. 21

    real – my proposal, albeit flippant, is not about teaching anyone a lesson, and my focus is absolutely not on examiners. Rather, it’s about sending a signal to PTO management that their customers are seriously, gravely concerned about the various proposed rules. Further, such direct action by the PTO’s customers has an organic nature that no brief or comment can match.

  70. 20


    The “screaming” by the patent lawyers here goes beyond just changing the system. What we have here is a concerted effort by the PTO hierarchy not only to strait jacket the examination process, but to not be upfront about what was really intended by them, and to play “fast and loose” with the APA and the OMB review process. I’ve been involved with the PTO for around 40 years, 30 of them as a patent attorney, and I’ve never seen this much arrogance from the PTO hierarchy (or this much animosity from the patent bar). Sure, we patent attorneys have voiced our concerns about prior Rules packages (and we usually worked out with the PTO hierarchy how to deal with these concerns). But what we have now is a PTO hierarchy that has an agenda and it frankly doesn’t care (or listen to) what the patent bar or its own examining corps says is a poorly thought out Rules package.

  71. 19

    Wait, filing strike people, do I have this right – we’re going to teach them a lesson by giving them less work to do? Isn’t that what they want from all this? If you give them a day off for issuing three new sets of rules, won’t we have six new sets next month, if not more?

  72. 18

    David Boundy’s comments are excellent. Open his submission, hit the print button on your toolbar and select pages 76-80. Great discussion of the law of “new grounds of rejection.” We’re all gonna need to know that.

    The suggestions from the Adams firm are simply genius. Genius. Do yourself a favor and read them. I don’t want to spoil the fun for you.

  73. 17

    David Boundy’s comments are excellent. Open his submission, hit the print button on your toolbar and select pages 76-80. Great discussion of the law of “new grounds of rejection.” We’re all gonna need to know that.

    The suggestions from the Adams firm are simply genius. Genius. Do yourself a favor and read them. I don’t want to spoil the fun for you.

  74. 16

    Dennis, I am going to disagree with you here. Sure, most appeals never reach the BPAI. But even more district court cases never reach trial. The procedural requirements of the Federal Rules of Civil Procedure are not meaningless stumbling blocks just because most cases settle. Over 90% of the time, you are conducting discovery, taking depositions, and submitting pre-trial filings in preparation for a trial that will never occur. And many appeals are never decided, either. That also does not make the Federal Rules of Appellate Procedure meaningless.

    As for the fact that most of the comments are negative; most comments on any proposed regulation are negative. All that means is that the regulations hurt a particular consistuency.

    At the end of the day, whether the rules are good or bad depends on whether they are good or bad. The fact that patent laywers scream about any and every change to the system shows only that the current rules are profitable for patent lawyers. (with apologies to the Chief Justice)

  75. 15

    Patently Deterred:

    I think it ( a one day filing strike) is a wonderful idea. It will certainly get the attention of the media and creat attention.

    Do we have other supports?

  76. 14

    The new appeal rules were of course designed to discourage appeals. This is consistent with the current USPTO leadership’s “strategy” to reduce the backlog: force applicants to abandon their applications. For every abandoned application, that is one new application that can be examined. Brilliant strategy. Forget about the inventor and his hard work, that isn’t important to the USPTO.

    While there aren’t slam-dunk grounds (as with the continuation rules) to challenge the IDS and appeals rules in court, perhaps with enough noise, the OMB will finally lose their rubber stamper. I’m also surprised that Tafas and GSK didn’t name the OMB in their suit as well, couldn’t they have? That might have given OMB more reason to think twice about rubber stamping anything in the future.

  77. 13

    jk – what do you think about a one day filing strike, where nothing (where legal and ethical, of course) is filed at the PTO? Yes, it’s probably a little too low brow for organizations like the AIPLA, but I bet it would get the PTO’s attention.

  78. 12

    Everyone should send proposed questions to be asked during deposition of Dudas and Doll to the attorneys who will conduct the deposition. Remember that we outnumber them. Just focus our endeavours upon the depositions. It is there where the REAL story will be brought about. For instance, do we have any bloggers who are experts a deposing for RICO violations. I really, really, want to know the level of cooperation between agents of the USPTO and Congress and the Coalition for Patent Fairness or whatever it was called.

  79. 11

    I simply got fed up by the PTO. This is the only organization I know that complains about having too many business and too many “customers” and try to keep its door closed. Dudas can quit if he doesn’t like his job.

    We, applicants and attorneys, are the essential part of the patent system, can we just organize ourselves and show some power over the issue?

  80. 10

    Yes, the proposed BPAI rules are yet another insult to everyones intelligence / rational due process.

    I especially appreciate the comments of Mr. Dolce. By suggesting that the USPTO Examiner have an equal burden for each of the proposed new brief rules, he exposes how completely ridiculous they are. Can anybody imagine an Examiner having to do all that every time one of their rejections was appealed? It would be the end of Examiner rejections. period.

    The flip side of course (the end of applicant appeals), is the transparent goal of these illogical proposed rules.

  81. 9

    The continuation rules were generally supported by the software industry and the DOJ. I don’t see any corresponding support here.

    Who supports these even within the USPTO?

  82. 8

    The plot thickens. After your read Katznelson’s comments on the Appeal Rules, and the detailed analysis he provides on how these Appeal Rules are intertwined with the Continuation Rules, etc., it’s hard to believe that the PTO hiearchy hasn’t “gamed” the recent rule-making it’s done. What I see here is a potential “domino effect” where each of these Rule packages is tainted by the collective effect these Rule packages would have, if implemented, that could be raised in any subsequent court challenges to these Rule packages. Given what has already happened in the GSK/Tafas suits, and the generally adverse comments on these Rule packages, it would be hard for the judge to ignore this collective “taint”.

  83. 6

    LoL anon, good one. It would work, but for the fact that PTO management is staffed by a bunch of primitive screw heads. Or maybe the federal government decided that they should fight a war they really can win – a war on patents.

  84. 5

    And this is how the USPTO planned to “accommodate” the expected increase in appeals once the new rules were in place.

    I just don’t understand where this anti patent mentality is coming from.

  85. 4

    Well, well, well, I have a funny feeling that when the court issues a summary judgement order in favor of GSK there will be a great deal of findings that elucidate procedural from substantive changes wrought by regulations. As it stands now, the validity of the IDS rules are specious in view of Cacheris’ analysis of the ESD requirements. I suspect that the appeal rules will fail, as well. I think we need two more lawsuits directed to these new rules. Alternatively, why can’t we just consider these rules are being from the same author and regulatorially indistinct so that the court can consider them to be one regulatory endeavour and require the USPTO to show why all of them should be allowed:)

  86. 3

    I think Boundy states an excellent point – the PTO’s various “procedural” rule changes, when viewed as a whole, show a clear effort to seriously deter, if not maim, patent prosecution in the US by attacking, or at least contracting, an applicant’s due process rights at every turn.

  87. 2

    In the above list of comments, the real story behind the propsed Appeal Rules and what the PTO concealed from OMB and the public is presented at

    Also in the list of comments, see the connection to PTO practices alleged in the Tafs/GSK case at

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