The GSK Case: An Administrative Perspective

Rai_portraitBy, Arti K. Rai*

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The already voluminous discussion of GSK[1] has not focused sufficiently on the court’s reasons for concluding that the PTO continuation rules (for reasons of brevity, I focus here only on continuation rules) probably violate the patent statute.  This reasoning is important because the court ruled against GSK’s argument that the rules were a bad idea as a policy matter (or, in the language of administrative law, “arbitrary and capricious”).  The court’s reasoning about the alleged conflict between the statute and the rules contains several errors of administrative law. 

 

With respect to the prospective application of the continuation rules (the very thorny issue of retroactivity in administrative law is best left for another day), analysis of whether the rules are contrary to the patent statute turns on two issues that should be decided sequentially.  First, do the rules fall within the scope of the PTO’s procedural rulemaking authority?  Second, do the rules violate the statute?

 

One mistake in the court’s opinion is that it appears to assume that analysis of the second question can be done without a complete answer to the first.   After equivocating briefly on the first question, the court jumps immediately to the alleged inconsistency with section 120 of the Patent Act.  In agreeing that GSK has “raised serious concerns” about whether the restrictions on continuations conflict with the Act, the court’s opinion relies heavily on In re Henriksen.[2]  That 1968 decision by the CCPA overturned a PTO limit on the number of continuation applications entitled to an earlier filing date under Section 120.

 

But Judge Cacheris should not have avoided deciding the question of substance vs. procedure.  If the PTO’s rules are in fact procedural, then the question of alleged inconsistency with statutory language does not turn on a 1968 CCPA case that makes no mention of administrative law principles (and, indeed, was decided at a time before it was clear that the Administrative Procedure Act even applied to the PTO).  Rather, it turns on the enormous case law that the Supreme Court has developed under its 1984 decision in Chevron v. Natural Resources Defense Council.[3]  Under Chevron and its progeny, an agency acting pursuant to authority delegated to it by Congress (here, procedural rulemaking authority under Section 2(b)(2) of the Patent Act) is entitled to interpret its organic statute so long as Congress has not “directly spoken to the precise question at issue” (Chevron step 1) and the agency’s interpretation is reasonable (Chevron step 2).

 

Assuming that Chevron applies, it is far from clear that Section 120 “speaks directly” to the limits enunciated in the PTO’s continuation rules.  Even if we assume that Section 120 does speak directly to the issue of whether the PTO can impose a bright-line bar, the PTO has argued that it does not intend an absolute limit.  According to the PTO, it will evaluate requests for a third continuation application on a case-by-case basis. Importantly, the PTO interpretations of its own regulations are entitled to very strong deference under the Supreme Court decision in Bowles v. Seminole Rock.[4]  Seminole Rock deference, which was recently reaffirmed in the 1997 Supreme Court case Auer v. Robbins,  says that an agency interpretation of its own rule is “controlling unless plainly erroneous or inconsistent with the regulation.”[5]

 

Indeed, the very strong deference of Seminole Rock is relevant even if the rules in question are substantive and thus not entitled to the application of Chevron.  Yet the opinion by Judge Cacheris does not even cite Seminole Rock.

 

These are more than fine lawyerly arguments about details.  Given the highly uncertain prospects for patent reform, and the reality that Section 2(b)(2) already gives it some rulemaking authority, the PTO has an understandable desire to engage in “self-help.”  Its current and future efforts at self-help must be judged according to the appropriate legal standards.



* Professor, < ?xml:namespace prefix ="" st1 ns ="" "urn:schemas-microsoft-com:office:smarttags" />Duke Law School.  Professor Rai’s 2003 Columbia Law Review article on patent reform focused on the balance of power between the PTO and the Federal Circuit. Arti K. Rai, Engaging Facts and Policy: A Multi-Institutional Approach to Patent System Reform, 103 Colum. L. Rev. 1035 (2003).

 

Preferred citation: Arti K. Rai, The GSK Case: An Administrative Perspective, 2007 Patently-O Patent L.J. 36, https://patentlyo.com/lawjournal.

 

[1] Tafas v. Dudas, 2007 U.S. Dist. LEXIS 80474 (E.D. Va. Oct. 31, 2007).

[2] In re Henriksen, 399 F.2d 253 (C.C.P.A. 1968).

[3] Chevron U.S. A. Inc. v. Natural Resources Defense Council, 467 U.S. 837 (1984).

[4] Bowles v. Seminole Rock & Sand Co., 325 U.S. 410 (1945).

[5] Auer v. Robbins, 519 U.S. 452 (1997)

150 thoughts on “The GSK Case: An Administrative Perspective

  1. 150

    anon-
    GS level is 9.
    No EE bonus.
    40 hours of overtime a bi-week.

    Overtime cap is about $36 per hour.
    26 bi-weeks in a year.
    40 hours a week.
    70k Salary + (40*36*26) = 107k.

    Yeah right good sir anon, I’d like a pdf of your bank statement if you do not mind substantiating your claim, blackout where needed.

    Also, I’d like to add, that if, that is if, you can actually do this, it is because you are writing horrible OA’s in an art that has grossly misrepresented its time per disposal, gets rediculous apps, and are likely riding continuations all at the same time.

  2. 148

    Here’s probably the most direct reason why the District Court did not involve itself in the APA and why it is entirely immaterial:

    The PTO would not raise an objection to its perceived right to promulgate Rules governing PTO patent prosecution practice, and GSK did not challenge the PTO under the APA, because to have had the Rule changes enjoined for procedural reasons, rather than as a matter of statutory patent law, would not achieve permanent victory for GSK.

    Since the requirements of the APA are clearly not those relating to the Article III jurisdiction of the federal court, the District Court has neither the obligation, nor right, to consider an issue raised by neither of the parties for their own reasons, and, again, ultimately, the case will be decided on the sole basis of whether the proposed Rule changes are preempted by (conflict with) the patent statute.

  3. 147

    As a sidenote: I’ve brought an APA case against the PTO on one occasion, Heinl v. Godici, 143 F.Supp.2d 593 (E.D. Va. 2001).

    (Thomas Heinl was a German client of mine and I was lead counsel, though I am not listed as counsel on the published opinion; solely listed is local counsel from Lyon & Lyon.)

  4. 146

    No, no, I’m not “taking it to heart” (and I actually have to get some work done), however, there is no serious question that the PTO can issue regulations regarding, for example, claims. The very fact that claim structure must be a single sentence and that every claim element should have a proper antecedent basis, are just two examples of PTO regulations or internal rules regarding claims, which the PTO bases on 35 U.S.C. §112, second paragraph, as its statutory authority. These requirements of claim drafting are procedural, by virtue of the very fact that they to do not change the ultimate right to a patent or how the patentable subject matter is actually claimed.

    If the new continuation/claims rules were “arbitrary, capricious, [or] an abuse of discretion,” they would be “re-done” by the PTO in a manner that would avoid this pitfall.

    At the end of the day, the PTO can regulate procedures regarding claims and continuations, because it already does(!), and the final determination will be whether it does so contrary to law.

    The proposed rules are substantive by virtue of the very fact that, if a petition for a third continuation was not granted – and almost certainly would not be! – then the published version of the same application, either in the U.S. or, more likely, under the PCT, EPO or the law of a foreign country, then the applicant’s own published application would ultimately be cited against the applicant’s “continuation” under §102(b), thereby making it impossible to obtain a patent on the “continuation.” This is a substantive change, not a procedural one, and is inconsistent with law, which will be the standard applied in the GSK/Tafas litigation.

    Citing to 5 U.S.C. §706 is like citing to U.S. Const., Art. I, §8, cl. 8, and discussing the founding of the Republic. It’s there under everything, but it will not be material to the decision: GSK is not seriously contesting the PTO’s right to issue procedural regulations concerning claims and continuations or RCE’s, only changes that are substantive and affect the statutory right to a patent on an invention and how that invention is claimed.

    Tafas might be raising APA issues, but is wasting his time, since these issues will change nothing at the end of the day. Neither the District Court, CAFC nor, if it comes to it, the Supreme Court, is going to hold that the PTO acted contrary to 5 U.S.C. §706, but not contrary to Title 35, U.S.C. If the PTO loses, as it will, it will be exclusively because it promulgated Rules that conflict with the patent statute, and for this reason, the District Court’s Memorandum reads as it does at Pages 19 – 21.

    (As a practical matter, Tafas should seek dismissal of his case, without prejudice, since his presence is no longer needed, in view of GSK’s, and probably a hinderance.)

    Later . . .

  5. 145

    Edwin,

    I see that you are taking all this to heart.

    Let’s “step back” and look at the “law” that governs how a court “must” (shall) review the acts of an administrative agency:
    5 USC 706:

    § 706. Scope of review

    To the extent necessary to decision and when presented, the reviewing court shall decide all relevant questions of law, interpret constitutional and statutory provisions, and determine the meaning or applicability of the terms of an agency action. The reviewing court shall—
    (1) compel agency action unlawfully withheld or unreasonably delayed; and
    (2) hold unlawful and set aside agency action, findings, and conclusions found to be—
    (A) arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law;
    (B) contrary to constitutional right, power, privilege, or immunity;
    (C) in excess of statutory jurisdiction, authority, or limitations, or short of statutory right;
    (D) without observance of procedure required by law;
    (E) unsupported by substantial evidence in a case subject to sections 556 and 557 of this title or otherwise reviewed on the record of an agency hearing provided by statute; or
    (F) unwarranted by the facts to the extent that the facts are subject to trial de novo by the reviewing court.
    In making the foregoing determinations, the court shall review the whole record or those parts of it cited by a party, and due account shall be taken of the rule of prejudicial error.

  6. 144

    The Court’s Opinion explaining the grant of GSK’s motion for preliminary injunction, at Pages 19 – 21, clearly disposes of the PTO’s arguments under federal administrative law, and that the issue before the Court is strictly whether the PTO’s proposed Rules are inconsistent with the patent statute.

    The Court, in a respectful way, held that the PTO’s administrative law arguments were without legal merit.

  7. 143

    “Step Back” –

    It’s not a question of what’s “upsetting” or otherwise and, yes, I am familiar with the administrative case law cited in your posting, however, it is simply wrong to argue that there are no “absolutisms here.”

    It is a “absolutism” that no federal agency can promulgate regulations that conflict with either federal constitutional law or federal statutory law. Whether a regulation, as interpreted, may or may not, conflict with a higher body of law is a matter of judicial interpretation, however, it is an “absolutism” that the PTO cannot promulgate regulations – regardless of so-called “deference” – if those regulations conflict with the patent statute.

    Even the PTO does not argue otherwise: Instead, the PTO argues, quite unsuccessfully, that its proposed Rules on continuations, for example, are consistent with Symbol Technologies and related CAFC case law.

    GSK readily disposed of the PTO’s argument that it was entitled to “Chevron deference.” The District Court’s Opinion supporting its prelminary injunction order turns on the patent statute and the case law interpreting those statutes – not, in any way, shape or form – on whether the PTO acted consistently with the requirements of administrative law.

    The reason for this is fairly obvious: If the PTO failed to comply with administrative procedures, as defined by the APA, then the PTO would have simply withdrawn the proposed Rules and re-stated the process for their re-issue. This didn’t happen – and won’t, because the Rules changes are contrary to statute – and the entire judicial challenge turns on whether there is a conflict between the PTO’s proposed Rules and the patent statute.

    The GSK/Tafas case raises “substantial” issues of federal patent law and, for this reason, is unquestionably within the exclusive appellate jurisdiction of the CAFC.

    Putting to one side the dubious logic, if any, of Tafas seeking to take depositions from PTO officials, the only “material” issues in the GSK/Tafas judicial challenge pertain to: (a) interpreting the proposed Rules; (b) interpreting the patent law, Title 35, USC; and (c) determining whether a conflict between the two exists.

    I “appreciate” the reality that there are those, particularly in the “publish or perish” environment, who wish to opine about the administrative law and procedure that they perceive to exist in the GSK/Tajas case, however, no such issues exist. Tafas, for his part, is seemingly doing little more than giving the PTO an opportunity to “muddy” the record in the case, and, perhaps, searching for some personal “relevance,” after GSK entered the action and proceeded to gain what Tafas could not.

    In sum, PTO regulations, as an absolute matter of law, cannot conflict with the patent statute, and the GSK/Tafas challenge will be exclusively decided on whether any such conflict exists. Administrative law “buffs” will have to look elsewhere for their jollies!

  8. 142

    “Step Back” –

    “The “promulgation of rules” is an act of administrative agency law. It is what agencies do under the APA. They promulgate and they adjudicate.

    “I know it’s upsetting to find out that there is this whole branch of law out there that you may have not heard about before. 35 USC is not the be all and end all to all the law you need to know. Sorry. Now you’re going to start hearing all these strange noises: Skidmore, Mead, Chevron, substantial evidence rule, yadah, yadah yadah.”

    No, I don’t agree! If an agency’s regulations are in conflict with the statute under which it operates, then the agency’s rules are preempted by the statute. It does not matter what reason or deference the PTO, or any agency, is otherwise entitled to, particularly, when the statute, as held by the courts (CAFC) have ruled that the agency lacks substantive rule making authority.

    There is little doubt that the PTO can enact the proposed continuation/claims Rules as a matter of administrative law and procedure. This has been the PTO’s mantra. GSK, correctly, challenged the Rules, not as a procedural violation of the APA, regardless of how the particular claim was framed, but as being inconsistent with substantive patent law, as set forth by Title 35, USC.

    Chevon et al. have no relevance in the judicial challenges brought against the PTO, unless there is some suggestion that a federal agency has the “right” to act contrary to statute. Administrative law aside, this proposition would be a violation of the constitutional principle of “separation of powers.”

  9. 140

    Hitler’s patent law OK, but can Iraq perhaps go one better? After all, Iraqi civilisation is thousands of years old, and amongst Iraqis you can count many and many illustrious scientists. Just a question. Does that fortunate country now also have kindly bestowed on it all those patent law features, unique to USA, such as First to Invent, best mode and continuations (which correspondents here assert are what has made America great) in order that it too shall have a competitive edge over the rest of the world?

    If not, why not? As I recall, it was some famous US patent lawyer’s daughter who flew out there to write Iraq’s shiny new patent statute.

  10. 139

    I grabbed a few Bosch patent copies with swastikas that were being thrown out. I don’t know why, maybe morbid curiosity. When I was in the shoes and came across these, I used to wonder how things like patents carried on through the war years.

  11. 138

    There’s probably no comparison between Dudas and Hitler.

    The USPTO had in its examiners’ shoes one of the DOD reports on the first magnetic tape recorders that were secretly developed in Germany during WWII for use in propaganda dissemination. At that time, only had magnetic wire recorders that far inferior to their German counterparts in both sound quality and practical use.

    The quantity of German patents you used to see in the shoes with the emblem of the Third Reich (now blotted out from many official copies of the documents) was a testimony that despite his many and varied faults Hitler knew the value of protecting (and presumably rewarding) innovation. (In the 1940s, the U.S. also published “Alien Registrations” of foreign inventions for European countries that could no longer operate their patent systems effectively because of the war.)

  12. 137

    Actaully Hitler did alright by patent attorneys and he knew the value of patents. In fact it was Junkers who invented and patented in germany, some of the first jet engines. However, he was a socialist so Hitler simply took his patents, due to the political differences. Apparently, the patent system was good in germany, if however, you backed Hitler contiuents. Sounds kinda similar doesn’t it?

  13. 136

    Mark Protsik:

    You write that “the remedy is to seek amendment of the patent law.” I disagree. The remedy is for the PTO to withdraw the rules.

  14. 135

    I believe the Supreme Court cases are relevant [Field v Clark, 143 U.S. 649 (1892); In re Kollock, 165 U.S. 526 (1897); Butterfield v Stranahan, 192 U.S. 470 (1904); J.W. Hampton, Jr. & Co. v United States, 276 U.S. 394 (1928); A.L.A. Schechter Poultry Corp. v United States, 295 U.S. 495 (1935); Yakus v United States, 321 U.S. 414 (1944); American Power & Light Co. v. SEC, 329 U.S. 90 (1946); Mistretta v. United States, 488 U.S. 361 (1989)] in that, while they permit agency rulemaking, they also recognize limits to the agency-assigned responsibilities, which are defined by those standards and directives that are set forth in the law to which an agency’s rules must conform. I concur with Justice Scalia in Mistretta v US, 488 US 361 (1989) that there is not actually a delegation of legislative authority to an executive agency, but merely the assigning of responsibility to apply the law. Congress provides a framework of intelligible principles and general directives in its legislation, and an executive agency (such the PTO) is given the responsibility of fleshing these out, filling in the blanks as it were, provided it doesn’t directly contravene the law as enacted. Faithfully executing the laws is not legislation. I’m not sure whether the PTO rules are actually inconsistent with 35 USC 120 or 35 USC 131 or any other statute. There are reasonable arguments either way. But if they are inconsistent, then the PTO has exceeded the limits of its rulemaking authority. The remedy is to seek amendment of the patent law.

  15. 134

    Okay, since the thread has officially jumped the shark I might as well add that Hitler would have loved the new rules.

  16. 133

    I believe what Mr. Protsik is stating is a simple truism. The agencies of the Federal Government operate in violation of the Constitution. It matters not what the Supreme Court says, because it too is embodied as never intended by the original designs of the architects of the United Staets of America. Each judge would operate in a circuit of the United States to convene in Washington every so often to harmonize inconsistencies in the law. It other words it was never intended that the Justices of the Supreme Court would derive legal experience outside of the local districts from whence they came. Instead, we have Justices who have never had state law adjudicatory experience. So, in short, one may honestly question the competence of the Justices of the supreme court due to their lack of state law adjudicatory experience.
    Even in a Time magazine three weeks ago the front cover questioned the relevance of the Supreme Court of the United States.

  17. 132

    Mr. Protsik:

    The authority for the executive branch to engage in rulemaking having the force and effect of law via the delegation of legislative power from Congress was long ago recognized by the Supreme Court, though I must note that cases concerning this power by the Supreme Court have more twists and turns that my golf balls whenever I swing.

    My comment was meant to merely query how it is that this particular delegation of legislative power (assuming, of course, that the USPTO does have, as it asserts, some degree of substantive rulemaking power) came to be vested in the executive branch at a level well below that of the President.

  18. 131

    U.S. Constitution
    Art. I, Sec. 1: “All legislative Powers herein granted shall be vested in a Congress of the United States…”
    Art. II, Sec. 1: “The Executive Power shall be vested in a President of the United States…”
    Art. II, Sec. 3: “…he shall take Care that the Laws be faithfully executed…”

    My understanding is that neither 35 USC 2 nor the Administrative Procedures Act extend to giving the Executive Branch of our government authority to legislate. Such legislative power cannot be delegated by Congress, nor arrogantly assumed by the President or his officers. Except in those few areas (foreign affairs and the military) where the Constitution expressly gives the President shared authority with the Congress, the rulemaking authority is strictly limited to faithfully executing the Laws, which includes construing the intent of Congress and filling in those details essential to carrying out those laws. But it doesn’t go so far as enacting rules inconsistent with law, no matter what procedure is followed.

  19. 130

    Mr. Crouch and Ms. Rai:

    Just curious your views on the fact that rulemaking authority is conferred by 35 USC 2 directly to the PTO, and not to the Office of the President. I find it unusual that the authority to make rules having the force and effect of law (whether characterized as procedural or substantive or interpretive or legislative, etc.) appears to bypass the normal “chain of command”. In my experience dealing with other agencies I have noted the typical “delegation of legislative power” is to the Office of the President, with the extent to which the delegation can be sub-delegated downward being stated in the enabling statute.

    Again, just curious…

  20. 129

    Sorry Kevin… I accidentally linked to the House Bill… I hope you’re right about the Senate (though I know how the USPTO wants to “work” it). Yes, contact your Senators!

  21. 128

    “Perhaps we had all better call our Senators. S.1145 does not seem to have this provision (according to the IPO).”

    It most certainly is in the Calendar Version 348 of the Senate Bill read on September 10, 2007 and placed on the calendar September 11, 2007:

    link to frwebgate.access.gpo.gov

    One thing the USPTO intellectual elite know how to do is work Congress. When our laws start INCORPORATING LIES at the REQUEST or GOVERNMENTAL OFFICIALS, you can say GOOD NIGHT to the U.S.A.

  22. 127

    Whoa Mr. Schindler,

    Never a good idea to spout absolutisms here:
    “Further, the GSK case is strictly a patent law case – NOT an “administrative law” case.”

    (My sarcastic hypocrisy is intentional here 🙂

    The “promulgation of rules” is an act of administrative agency law. It is what agencies do under the APA. They promulgate and they adjudicate.

    I know it’s upsetting to find out that there is this whole branch of law out there that you may have not heard about before. 35 USC is not the be all and end all to all the law you need to know. Sorry. Now you’re going to start hearing all these strange noises: Skidmore, Mead, Chevron, substantial evidence rule, yadah, yadah yadah.

    Get used to it. It was going to be part of patent law ever since 1999 when the US Supreme Court declared in Zurko that the USPTO is an administrative agency subject to the APA just like all other agencies are.

  23. 126

    “It probably hasn’t gone unnoticed that the “big, evil drug companies” require patents for their continued existence ”

    You forgot to mention that if those big evil drug companies stop being profitable that we’ll all die within 10 years because nobody will have any incentive to develop the drugs that cure us from the illnesses caused by eating too much deep-fried macaroni and cheese.

    This is an important part of the Patents Make the World Go Round script!

    “All discussions regarding administrative law, or procedure, are either ignorant or advanced by those having a hidden agenda.”

    [rolls eyes]

    If the PTO had provided for one RCE per *application*, three or four continuations per application family, limited the claims to 50 instead of 25, dropped the silly ESD garbage, and allowed 9 months between the publication of the final rules and their implementation, I suspect that relatively few people would be flipping out on the 35 USC 120 issues.

  24. 125

    “I am not personally bothered that Prof. Rai is not a patent attorney. What does bother me, and I suspect riles many of the people attacking her here, is her arrogant presentation while at the same time making naive assumptions if not outright misstatements of law.”

    Well said!

    Further, the GSK case is strictly a patent law case – NOT an “administrative law” case. The entire issue is a legal one: Whether the PTO’s proposed continuation and claims Rules conflict with the patent statute, Title 35, U.S.C. Prof. Rai can frame this as an “administrative law” case, but that doesn’t make it so.

    The PTO has clear authority to promulgate Rules of Practice “not inconsistent with law.” The “law” in this case is the “patent law.”

    All discussions regarding administrative law, or procedure, are either ignorant or advanced by those having a hidden agenda.

    At present, patents are “politically incorrect.” It probably hasn’t gone unnoticed that the “big, evil drug companies” require patents for their continued existence and are at the forefront in challenging the PTO’s ridiculous proposed Rule changes.

    It is probably no coincidence that PhRMA and Elan, but not Microsoft, Intel or Google, have indicated a desire to file amicus briefs in support of GSK, a member of PhRMA. If patents are politically incorrect, then it can be expected that what eminates from “The Academy” will be hostile to patent holders and present roadblocks to proper patent prosecution.

  25. 124

    “I am not personally bothered that Prof. Rai is not a patent attorney. What does bother me, and I suspect riles many of the people attacking her here, is her arrogant presentation while at the same time making naive assumptions if not outright misstatements of law.

    If Prof. Rai is going to preach, she at least owes us the courtesy of doing some research and educating herself as to how this disfunctional system really works. Conveniently ignoring facts and making silly assumptions to promote an argument is not helpful.”

    Yes, just for once, I would like to see an academic article that addresses how the new rules and patent reform actually address the causes of poor quality patents and the examination backlog. The Patent Reform Act and the new rules do not exist in some hermetically sealed lab. They exist against the background of a dysfunctionally managed USPTO. But for the USPTO being mis-managed, many of the so-called “bad patents” would not have issued and there wouldn’t be a 700,000 application backlog, and USPTO management would not need to cover up its deficiencies by trying to distract the public, Congress and Law Professors with the new claim and continuation rules, IDS rules, Markush rules, Appeal Rules.

    Given the scathing review of USPTO management in the GAO report in October 2007:

    /media/docs/2008/08/d071102.pdf

    why would anyone, including a law professor, assume that the new rules were necessitated by abusive behavior on the part of the applicants and would address the root causes of the examination backlog and the issuance of bad patents by the USPTO?

    Given the Richard Belzer’s submission to OMB

    link to whitehouse.gov

    that details point by point how the USPTO “fudged the numbers” in estimating the cost to applicants of implementing the new rules, why would accept at face value anything the USPTO says regarding the new rules without looking for evidence to back up the USPTO’s claims?

    Where is the outrage among IP professors about how the USPTO trampled on both procedural and substantive due process in creating the final claim and continuation rules? The USPTO basically ignored the 500 comments on the new rules other than those comments that described how the new rules could be circumvented. The USPTO has argued that the new rules are need to decrease the examination backlog significantly, yet admits that continuations are only a small fraction of he backlog. During the last two years, has assumed that some version of the new rules were the “only solution” to the backlog and bad patent problems, despite ample evidence to the contrary (see the GAO report above, for example). The USPTO published “Final Rules” on August 21, 2007 are so different from the rules that were originally subject to comment, that even the USPTO doesn’t know what they mean, as evidenced by the various corrections the USPTO has had to make since the rules issued, including the OG Notice that was published this week.

    I’m sure others have their own favorite example of how the USPTO ignored the requirements of “due process” in creating the claim and continuation rules.

    Even if every one of Prof. Rai’s legal arguments is correct, how could anyone, who understood the background history of the USPTO rulemaking possibly say that “the PTO has an understandable desire to engage in “self-help.” No matter how bright Prof. Rai may be, this statement shows a complete ignorance of what has been happening at the USPTO for the last 15 years.

  26. 123

    Dear Real:

    I appreciate the ex post facto nature of the attempt. So I guess I’d just say that it is clear as mud what Congress wanted the statute to say, which impacts the Office’s presumption that they have the authority in the first place.

    Perhaps we had all better call our Senators. S.1145 does not seem to have this provision (according to the IPO).

  27. 122

    A fair question, but not one that has escaped the intellectual elite at the USPTO. You see, Congress isn’t “giving” them substantive rulemaking authority in the Reform Act, but rather only “clarifying” (like that word, Malcolm?) the rulemaking authority they’ve always had since AIPA of 1999. (And they got it past one house of Congress.)

    From the House Bill:

    SEC. 14. REGULATORY AUTHORITY.

    (a) Regulatory Authority- Section 2(c) is amended by adding at the end the following:

    `(6) The powers granted under paragraph (2) of subsection (b) include the authority to promulgate regulations to ensure the quality and timeliness of applications and their examination, including specifying circumstances under which an application for patent may claim the benefit under sections 120, 121 and 365(c) of the filing date of a prior filed application for patent.’.

    (b) Clarification- The amendment made by subsection (a) clarifies the scope of power granted to the United States Patent and Trademark Office by paragraph (2) of section 2(b) of title 35, United States Code, as in effect since the enactment of Public Law 106-113.

  28. 121

    Kevin:

    He did. I thought that Judge Cacheris more than amply covered the topic considering the circumstances and the fact that this was a PI. I too am looking forward to a more thorough opinion, but to suggest that the Judge committed a procedural error in not providing a “Cheveron analysis,” as interpreted by Prof. Rai, is just silly. If there was any legitimacy to that point of view the PTO would have appealed the decision the same day.

  29. 120

    “How does the Professor, or anyone else, refute the logic that Congress must not have intended to give the Office substantive rulemaking authority in its enabling statute, if Congress thinks they must affirmatively give it to them now?”

    A fair question.

  30. 119

    Rai:

    “Whether it is “reversible” error not to decide the question of Chevron step 0 is anybody’s guess. But it is questionable opinion writing when the agency is making that argument as its major argument.

    Deciding the procedure vs. substance question is also important for writing an opinion will be useful precedent for future cases.”

    This was a PI, remember? The court stated that it had a very serious concern whether the rules were procedural, among other things.

    I have every confidence the court will dot the i’s and cross the t’s in the final opinion. The bottom line is that the detailed analysis you demand is not necessary to issue a PI. The court found enough evidence to conclude that GSK would be likely to succeed on the merits. End of story.

    Professor, your posts remind me of perhaps the most important thing I learned in law school. There is always a counter argument. It may not be a good argument, but there is ample opportunity to blow smoke.

  31. 118

    More substantively, didn’t Judge Cacheris address the “outside the scope of the Patent Office’s authority” part of the issue by noting that Congress, with or without the PTO’s prompting, has attempted to affirmatively grant substantive rulemaking power to the Office since at least 2005? And that such a provision is part of HR1908, the latest patent “reform” measure before Congress? How does the Professor, or anyone else, refute the logic that Congress must not have intended to give the Office substantive rulemaking authority in its enabling statute, if Congress thinks they must affirmatively give it to them now? Particularly in a situation that is different than, say, Portollo Packaging, where the CAFC interpreted the statute and Congress afffirmatively changed the law to make it clear what their intent was.

    Which brings me back to the academic v. practitioner issue. Interesting discussion but seems premature at best.

  32. 117

    BigGuy:

    I am not personally bothered that Prof. Rai is not a patent attorney. What does bother me, and I suspect riles many of the people attacking her here, is her arrogant presentation while at the same time making naive assumptions if not outright misstatements of law.

    If Prof. Rai is going to preach, she at least owes us the courtesy of doing some research and educating herself as to how this disfunctional system really works. Conveniently ignoring facts and making silly assumptions to promote an argument is not helpful.

  33. 115

    Who cares, you seem upset. Try meditating on a cool evening breeze, outside in the mountains, where the crickets make a melodious sound, gently calling all of creation to a quieter, simpler, and kinder existence. It’s so good to just release all the stress, and let peace overcome all the troubles of today. See, isn’t it working already. Just close your eyes, friend, concentrate, that’s it… be at ease, steady, steady, close ’em, that’s good, uh oh, careful now or you’ll step in it, the new rules are like meadow muffins (you know, buffalo pancakes, wilson pie, cow patties).

  34. 114

    Ms. Rai urges the PTO should be afforded deference under Seminole Rock and cites Lacavera v. Dudas (CAFC 2006) as an example of when such deference was afforded.

    However, Lacavera is not on point. Dethmers v. Automatic Equipment (CAFC 2001) is on point and illustrates why courts should not defer to the PTO’s interpretation of how to implement 35 USC 120.

    Lacavera, a Canadian citizen and nonresident alien, sued the PTO because she wanted to become a registered agent or attorney but could not because of the PTO’s rules forbidding aliens from registering with the PTO. She lost because the CAFC deferred to the agency’s interpretation of 35 USC 2 authorizing the PTO to establish rules to govern the recognition and conduct of attorneys representing applicants at the PTO. The PTO’s rules related to the procedure of recognizing attorneys, and therefore affording deference to them was easy.

    In Dethmers, the PTO granted a reissue certificate based on a declaration filed in the reissue proceedings. At the relevant time, reissue declarations were governed by 37 CFR 1.175, which the CAFC had interpreted in Nupla v. ____. In Dethmers, the CAFC held that some claims of the reissued patent were invalid because the reissue declaration failed to meet the requirements of Rule 175. Importantly, the majority opinion did not give any deference to the fact that the PTO had interpreted its own Rule 175 as being satisfied by the declaration that was filed in the reissue proceedings. The issue of whether deference should have been granted under Seminole Rock was raised explicitly by Judge Dyk’s dissent, in the petition for re-hearing en banc, in the PTO’s amicus brief supporting en banc rehearing, and in the petition for cert. Yet, deference was not afforded to the PTO’s interpretation of Rule 175.

    The majority decision not to give deference can be justified as a holding that the PTO’s interpretation of Rule 175 is a substantive decision that would determine whether a reissue claims would be valid or invalid. This is quite different from giving deference to a decision whether to allow Canadians to practice before the PTO.

    The PTO’s continuation rules are interpretations of what is (or should) be required under 35 USC 120. Thus, the CON rules and the claim number rules affect substantive rights to protection under the patent laws and I believe they are more like the situation in Dethmers than in Lacavera.

    Of course, the climate is different now in 2007 than in 2001. Judge Dyk’s views of the role of traditional admin law were somewhat novel six years ago, but they have gained traction at the court. And even in 2001 there were five votes to hear Dethmers en banc. Judge Moore’s vote would make six, which could make the issue a close one.

    Nevertheless, I really think that Lacavera is a red herring here, and that there is strong authority to support a finding what the PTO is doing with its new rules is substantive and therefore not entitled to deference.

  35. 113

    “Therefore, regardless of any subtle substantive and procedural distinctions, the PTO has clearly acted contrary to the statutuory provisions and it has substituted its own interpretation of the statute for the clear intent of Congress. This it cannot do.”

    I think the analysis is slightly more subtle than that. For example, I believe the PTO could in full compliance with CAFC case law regarding 35 USC 120, implement a procedural review of continuation filings that would disallow continuations that involved prosecution laches of the type Lemelson’s patent ran afoul of. I believe the PTO could also do a review to make sure that the claims in a continuing application are not “unduly duplicative” of claims earlier in the chain, using some definition of “unduly duplicative” such as identical perhaps. To me that suggests that at a minimum the analysis requires at least some review of the actual procedures the PTO wants to implement.

    We know of course that the PTO wants to provide more strict limits on continuations than can be justified under the law, but we know that because we’ve looked at the rules and the PTOs interpretation of the rules, and not because the statute does not allow any scrutiny of priority claims by the PTO.

  36. 112

    To Kevin E. Noonan | Nov 04, 2007 at 10:55 PM

    “IF YOU DON’T LIKE THIS WEBPAGE, YOU DON’T HAVE TO READ IT! YOU SEEM UPSET THAT DENNIS IS NOT HELPING YOU ENOUGH, AS A PATENT PRACTITIONER. I GUESS YOU’LL JUST HAVE TO READ THE CASES ON YOUR OWN.”

  37. 111

    Chevron involved a regulatory agency (EPA) interpreting a term in a statute, the Clean Air Act.

    The Court stated the test.

    “When a court reviews an agency’s construction of the statute which it administers, it is confronted with two questions. First, always, is the question whether Congress has directly spoken to the precise question at issue. If the intent of Congress is clear, that is the end of the matter; for the court, as well as the agency, must give effect to the unambiguously expressed intent of Congress. If, however, the court determines Congress has not directly addressed the precise question at issue, the court does not simply impose its own construction on the statute, as would be necessary in the absence of an administrative interpretation. Rather, if the statute is silent or ambiguous with respect to the specific issue, the question for the court is whether the agency’s answer is based on a permissible construction of the statute.”

    The Court further stated the limits of the agency’s authority.

    “If Congress has explicitly left a gap for the agency to fill, there is an express delegation of authority to the agency to elucidate a specific provision of the statute by regulation. Such legislative regulations are given controlling weight unless they are arbitrary, capricious, or manifestly contrary to the statute. Sometimes the legislative delegation to an agency on a particular question is implicit, rather than explicit. In such a case, a court may not substitute its own construction of a statutory provision for a reasonable interpretation made by the administrator of an agency. We have long recognized that considerable weight should be accorded to an executive department’s construction of a statutory scheme it is entrusted to administer, and the principle of deference to administrative interpretations.”

    Clearly the agency’s authority to interpret a statute is limited in that such interpretation cannot be arbitrary, capricious, or manifestly contrary to the statute.

    Here the agency is promulgating a construction of the statute that is manifestly contrary to the statute according to the CCPA’s ruling of Congress’s intent regarding section 120. In In re Henricksen, the CCPA held, after examining the legislative history, that Congress intended that there be no limit to the number of applications in a chain under section 120. I quote from the case:

    “The absence of case law to the contrary prior to 1953 is still another factor to be considered in concluding that the decision of the board was erroneous. Insofar as we can determine from our independent research, and from the fruits of the research of the parties and the able briefs of amici, the case law contains no limitations on the transmission of the effective date of a first filing through a chain of copending applications.

    The decisions of the Supreme Court do not prescribe a result contrary to ours. From as early as Godfrey v. Eames, 68 U.S. 317 (1863), to Crown Cork & Seal Co. v. Gutmann Co., 304 U.S. 159, 37 USPQ 351 (1938), and General Talking Pictures Corp. v. Western Electric Co., 304 U.S. 175, 37 USPQ 357 (1938), the Supreme Court has not seemed to question the right of the later-filed application to rely on an earlier-filed application, nor has it questioned—although the point does not seem to have arisen—the right to rely on more than two successively preceding applications.

    No case has been cited to us, decided since the 1952 Act was passed, which leads to the result reached here by the majority of the board.”

    Therefore, regardless of any subtle substantive and procedural distinctions, the PTO has clearly acted contrary to the statutuory provisions and it has substituted its own interpretation of the statute for the clear intent of Congress. This it cannot do.

    “If the intent of Congress is clear, that is the end of the matter; for the court, as well as the agency, must give effect to the unambiguously expressed intent of Congress.”

  38. 110

    The sequence in which the rules are addressed is dependent upon how one views the Constitutional Republic. Like you, I view the first question as paramount, because I believe that the defacto position of Executive Agencies is that they have no authority to act. Therefore, the first thing we must ascertain is if they have authority to act. Thereafter, we determine whether their actions violate any statutes. If not, then we determine whether the executive agency acted within the scope of its authority, because even is the executive agency acts within the scope of its authority its regulations must yield to Congress. After we determine that the agency has acted within the scope of its authority, we must ascertain whether the agency’s action is in furtherance of its goals. Then we move to see whether the agency comported with the APA in advancing the regulation.

  39. 109

    “First, do the rules fall within the scope of the PTO’s procedural rulemaking authority? Second, do the rules violate the statute?”

    Bifurcating these questions seems problematic. If the PTO makes rules that violate the statute, sure they cannot be within the PTO’s rule making authority. Seems like the second question is more important than the first.

  40. 108

    The noticed depositions of Dudas and other PTO officials can only help the PTO!

    The issues involved are strictly legal ones, and raising irrelevant “factual” disputes will create a situation in which the PTO is entitled to deference. The PTO can probably not wait to “spin” its story at the depositions.

  41. 107

    “By lumping CIPs together with continuations and RCEs, the USPTO is plainly trampling all over the rights of applicants to receive separate, individualized consideration with respect to distinct potential inventions.”

    If the PTO wants to crank down on RCEs, they cannot succeed without cranking down on continuations and CIPs to prevent continuing applications from being used as RCE substitutes. In fact, they current rules invite you to use a continuation as an RCE when you run out of RCEs.

  42. 106

    Ms. Rai taught my “intro to IP” class about 9 years ago at USD, and I took admin. law from her husband. I have been a patent lawyer and IP litigator ever since. Looking back from the trenches, I remain convinced that these are two of the smartest folks from whom I’ve had the opportunity to learn. When it comes to opining on cutting-edge legal issues arising from the intersection of IP and admin law, these are the experts. One certainly need not agree with their opinions to benefit from their insightful analyses. Please cast your pearls this way again, Professor Rai. I hope you are well, and thank you for your article.

    And I agree with the comment that articles on this blog should not be arbitrarily constrained, especially when their purpose is legal analysis rather than simple news or announcements.

  43. 105

    Further to my comments at 7:23 on Nov 5, I further find curious, or more particularly, “dubious”, the USPTO’s having lumped different-specification continuation-in-part applications together with same-specification continuation and divisional applications for purposes of calculating whether the three-continuation limit has been reached.

    There is no good reason I can think of why this should be done.

    CIPs are by definition different from their respective parent applications, both in terms of the at least incrementally increased content of their disclosures, and the different subject matter of their claims (focusing on the new subject matter). By lumping CIPs together with continuations and RCEs, the USPTO is plainly trampling all over the rights of applicants to receive separate, individualized consideration with respect to distinct potential inventions.

    I believe the USPTO should be forced to keep things separate that clearly merit separate treatment. The present rules are only as complicated as they are because the USPTO has confounded itself by conflating multiple concepts and things that were never meant to be grouped together.

    To win the GSK case, the USPTO will need to convince the Article III judiciary that each and every CON, DIV, RCE, and CIP is but a part of the same pack of wild, interbreeding animals that only they can be trusted to control. But as I indicated above, it is relatively easy to demonstrate that these are actually biologically separate animals that can easily be cared for in an orderly way as long as the zoo is organized appropriately. In other words, there is no need whatsoever to elevate the USPTO from zookeeper to all-powerful deity deserving of Chevron-level deference.

  44. 104

    Dear step back,
    Re:
    “I’m with you in spirit, in your belief that inventors should receive property rights and just compensation for their contributions to society.
    “However, we need to stop repeating this nonsense about “Constitutional rights” to a patent. There is no such thing in the US Constitution.”

    I also agree with you in spirit, and I’d like to carry your Constitutional point further lest there be critical misunderstanding:
    The Patent Clause 8, in Article I, §8 of The Constitution, which has never been amended, reads (emphasis added): “The Congress shall have Power [whether or not]…
    “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;”

    Thus, Congress has Constitutional discretion – Congress may or may not – enact patent laws. However, if Congress elects to do so, as it has, it must grant “…the exclusive Right…” This is also consistent with the red ribbon cover of United States patents, which are “granted under the law” by the Director of the USPTO, with the following covenant:

    “Therefore, this United States Patent Grants to the person(s) having title to this patent THE RIGHT TO EXCLUDE OTHERS FROM MAKING, USING, OFFERING FOR SALE, OR SELLING THE INVENTION …” (emphasis added)

    Thus, a patent does not grant the patentee the right to make, use or sell his invention. Rather, a patent grants the patentee THE RIGHT TO EXCLUDE EVERYONE ELSE from making, using or selling his invention.

    The Exclusive Right Yes, But Only for a Limited Time. The Framers give Congress the means and the Power UP FRONT to regulate the “exclusive Right.” By including in Clause 8, “securing for limited Times,” Congress can pass patent statutes that grant more or less time to a patent, and, by statute, Congress has done so. And, also by statute, Congress has the Power to create different types of patents with different lifetimes, as they have done for Design Patents. Congress has also created Trademark statutes that live somewhere between Copyrights and Design patents.

    Thus, Congress has absolute Constitutional Power to administer our patent system, and it has rightly done so. Further, within the Constitution itself, one finds authority for Congress to exercise its Power to moderate “the exclusive Right” under certain constitutionally certified circumstances:

    “To regulate Commerce” (Article I, §8, Clause 3), to “provide for the common defense, promote the general Welfare” (the Preamble).

    Thus, in its body of antitrust statutes, Congress imposes certain limits when exercising a patent’s “exclusive Rights” in order to regulate Commerce. And eminent domain power may be exercised over a patent’s “exclusive Rights,” for national security and defense, as is consistent with the Preamble (e.g., military appropriations bills in peacetime and wartime routinely include allocations for patent royalties).

    35 USC 283, however, is in direct conflict with patent Clause 8:
    “The several courts … may grant injunctions in accordance with the principles of equity to prevent the violation of any right secured by patent, on such terms as the court deems reasonable.”

    35 USC 283 would cede discretion to “the several courts” to diminish the Power the Constitution gave Congress. Of course, a fundamental change of this nature may be made by formal amendment in accord with Article V, the procedure to amend the Constitution, but certainly not by mere statute. When such conflict exists, the Supremacy Clause, Article VI, says there is no contest — the Constitution wins.

    Most remarkably, in its eBay v MercExchange Decision, the Supreme Court made the mistake to rely, essentially solely, on what they called a presumption in 35 USC 283!

    “Indeed, the Patent Act itself indicates that patents shall have the attributes of personal property ‘[s]ubject to the provisions of this title,’ 35 U. S. C. §261, including, presumably, the provision that injunctive relief ‘may’ issue only ‘in accordance with the principles of equity,’ §283.” (the USSC eBay Opinion, page 3).

    This mistake is truly sad for the US economy. Whether intended or not intended, the implication of the faulty eBay Decision will plague American innovation and the IP profession henceforth. Put Simply in 25 Words, the Lopsided Net Result of the USSC’s eBay Decision is this:

    The Supremes’ eBay ruling reserves a patent’s “exclusive Right” for big businesses while denying a patent’s grant of “the exclusive Right” to self-employed inventors.

    A patent without the Right to stop infringement is like a revolver without ammunition. Without the Right to stop infringement, the eBay effect is to condone compulsory licensing, or even worse; the USSC’s eBay decision is a license to steal intellectual property from self-employed inventors.

    Thus, based merely on a faulty patent statute, the Supreme Court’s eBay v MercExchange ruling is a corruption of our Constitution. In attempting to defend the eBay Decision, some have pointed out that other corruptions to our Constitution have also occurred, as if that makes for binding precedent – – such arguments are nonsense! Each corruption becomes more threatening to our way of life. Our country and our patent system are on a slippery slop.

    Our Constitution is unrivaled and supreme, and essential to our freedom and democracy – – few would deny that. It is our duty, everyone’s duty, to tackle those corruptions, even when the Supreme Court makes a mistake and issues a faulty decision.

    My point, which is becoming increasingly important, is that we all should fight to regain our Constitutional footing every time we see a slip. By doing so, perhaps only by doing so, can we begin to reverse the increasing decline of our beloved country.

  45. 102

    Also Curious,

    I’m with you in spirit, in your belief that inventors should receive property rights and just compensation for their contributions to society.

    However, we need to stop repeating this nonsense about “Constitutional rights” to a patent. There is no such thing in the US Constitution.

    Article 1, section 8, clause 8 is one of the “enumerated powers” that vest exclusively in the US Congress the “power” (not the obligation”) 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;”

    Look here:
    link to law.cornell.edu

    Congress has elected to exercise this enumerated power by passing patent and copyright laws.

    One of the laws, 35 USC 131, says the Director “shall” cause an examination to take place.

    It doesn’t say the Director “may, if he feels like it” cause an examination to take place.

    Title 35 of the United States Code (USC) is not the only law that Congress passed. There is something called the Administrative Procedure Act (APA). See generally Title 5 of the USC and more specifically 5 USC 706.

    What we are talking about here (GSK v. Dudas) sits at the intersection between substantive patent law (35 USC) and administrative agency law (the APA).

    Not too many patent attorneys or agents know much about administrative agency law. You can see that in the every day decisions of the USPTO Board of Appeals. The attorneys/agents defend their clients with “opinion of counsel”, which is pretty much worthless. The Board of Appeals says so over and over again. But nobody listens.

    Not too many admin law attorneys know much about patent law. You can see that in Professor Rai’s opinion (no disrespect intended) that the CAFC resists the mandates of Zurko. That’s pure BS. If you study the actual decisions of the CAFC since In re Gartside, you will see that pretty much every patent applicant who fails to have “substantial evidence” on his or her side goes down in flames at the CAFC. Zurko requires the CAFC to give “substantial evidence” deference to findings of fact made by the BPAI during examinations of patents and the CAFC has been doing so.

  46. 101

    Everywhere’s lament that “We’ve only got on Patent Office” set me thinking. Europeans all have a choice of Patent Office, local or EPO. Most choose EPO. When it comes to litigation, Europeans also have a choice. They can litigate up to the Supreme Court in whichever European country they choose. Common law or civil law: take your pick. Meanwhile, in USA the CAFC is your only choice. Isn’t competition a wonderful thing?

  47. 100

    RE: “I appreciate the point that the Federal Circuit has shown resistance to the command in Zurko. (Indeed, I have a whole law review article in Georgetown about that . . .) However, Lacavera v. Dudas, a 2006 Federal Circuit case, explicitly applies Chevron to a case where the PTO argued that it was exercising its procedural rulemaking authority.”

    I am very familiar with the excellent Benjamin/Rai article, but given its lack of coverage (that I recall) related to Lacavera and that it published in 2007 whereas Lacavera was decided in early 2006, it seems that that article agreed that Lacavera does not provide much insight for a court trying to analyze the issue of deference to the PTO in a meaningful way. It has been some time since I read the article, however, and I could be missing something.

    RE (3) above: “I am not convinced that Seminole Rock is irrelevant . . . . [O]ne has to construe the regulation before one can determine if it conflicts with the statute.”

    Interpretation is necessary, but as the court in Seminole noted, “a court must necessarily look to the administrative construction of the regulation **if the meaning of the words used is in doubt.**” Perhaps the the scope of the ESD requirements was ambiguous, but the meaning words of the proposed regulations were clear and agreed upon–applicants would have to submit an ESD. Contrast this type of ambiguity with the arguments relating to the words of 35 U.S.C. 120 and the ambiguity of “highest price” in Seminole and the proposed regulations do not appear ambiguous under Seminole. Of course, the final answer just depends on your preference since “ambiguity” is a fuzzy and easily manipulated concept, but the low practical value added should excuse the GSK court’s decision not to cite Seminole Rock.

  48. 99

    so a client asks you to include three embodiments in the patent application which you are preparing for him

    and you reply that your firm only includes two embodiments at the most in the patent applications which they prepare for clients because the firm has a large backlog of cases

    the client replies that he is willing to pay more for the application and suggests that your firm hire additional patent attorneys

    you say that does not matter and tell him that if he wants you to include more than two embodiments that he must do a search and prepare a special disclosure document for you

    fortunately, the client can go to another firm

    we only have one patent office

  49. 98

    Also Curious:
    Finally someone is talking about the claim limitation and continuation limitations together as the should be. Not covered well in the briefs so far.

  50. 97

    Regardless of whether Chevron or Mead applies, the USPTO must comply US statutory law that obliges it to give merits consideration to patent applications lawfully filed. In the United States, the right of inventors to apply for patents is not the result of any statutory scheme, but rather is pursuant to a specific provision of the US Constitution that entitles inventors to letters patent protection on their inventions absent a showing by the government of a good reason such a letters patent should not issue. The U.S. Congress was therefore obliged to set up a process by which each and every lawfully filed application receives individualized consideration to determine whether any reasonable basis exists to refuse to a corresponding letters patent grant. Proceeding on the basis that the USPTO is similarly bound by this obligation, if at a given point in time the USPTO concludes that it must set a de-facto upper limit on the number of patent applications that may lawfully be filed in sequence based on a common specification, it would need to adopt a relatively liberal policy on the number of patent claims that may be submitted with each such patent application in order to avoid running afoul of the Constitution. Alternatively, and for the same reason, if at any given point in time the USPTO concludes that it must set a de-facto upper limit on the number of patent claims that may be submitted along with the as-filed version of a particular patent application, it would need to adopt a relatively liberal policy on the number of patent applications that may subsequently be submitted based on the same or similar disclosure to that of the initially-filed.

    Does anybody else agree with me that it would have been well within the mandate of the USPTO to impose either of these limits separately, consistent with the above-described “relief valves”?

  51. 96

    A, Yes. The entire Whealan video is available here:
    link to realserver.law.duke.edu
    and here
    link to realserver.law.duke.edu

    Mr. Whealan expressly concedes that the PTO was attempting to “make policy,” that the ESD is a poison pill that “under the current law of inequitable conduct, nobody’s going to want to do.” There are several more totally outrageous statements, which I will leave for your delight to discover.

    The one poor soul in these two videos with any practical “background and experience in patent law” (as opposed to purely academic claptrap), is Wendy Verlander. You can see her in the second session biting her lip, and only occasionally hinting that the ivory tower data-free nitwits (Rai, Dreyfuss, and Kahin) are talking complete nonsense.

    Points to Ponder… Thank you for the links, although I only got about a third of the way thru the first one before I started becoming very depressed. They actually Really Believe this stuff, and are apparently Teaching future practioners in the art and science of how to circumvent the rights of the holders of ostensibly validly granted patents. Scarey stuff…. Kahin was especially scarey, in his blithe dismissal of the value of new innovations, in the interest of *sharing them* with others, to avoid the IT industry having to suffer so painfully from all those nasty *Patent Trolls* that seem so peskily to insist that the IT guys need to Pay for willfully infringing patented inventions. Last I heard, the Constitution says that IP is considered to be *property*, much like the deed to a plot of land or a house, and if someone tries to take your *house*, they had better be prepared to pay for it, or they will be considered to be a theif. As regards trolls, does that mean that folks that buy and sell real estate for a profit are doing something *wrong* or reprehensible? An inquiring mind would really like to know…

    Thanks for the great forum Dennis… Also to know thine enemy is half the battle.

  52. 95

    “Of course, given some of the PTO’s statements, it may be that their “litigation” position that a third continuation app will be decided on a “case by case basis” fails Seminole. However, since Cacheris does explicitly discuss the conflicting positions on what the regulation means, Seminole should be noted. ”

    I believe most practioners are willing to forgive Judge Cacheris for not devling into Seminole for exactly this reason. That doesn’t excuse being rude though…

  53. 94

    Dennis,

    As an aside, Prof. Rai has had to resort to defending her original article by noting that she had to abbreviate her arguments to conform to your “strict word limits”. Given the already novel format you are (very usefully) promoting here for guest blog posts as “law journal” entries, the future success of this format relies on expert commentators not feeling like the format will put them at a disadvantage in explaining their analysis. I would have enjoyed reading Prof. Rai’s thoughtful commentary in a less hurried format, and the length that was given Casino & Kasdan for their article didn’t seem to frighten us private practice attorneys away from your blog. I hope you will loosen up your word limits for your guest experts. Thanks.

  54. 93

    An earlier post (step back, Nov 04, 2007 at 7:33pm) suggested that the PTO rulemaking might also be inconsistent with 35 USC 131 (“The Director shall cause an examination to be made of the application”) and thereby exceed the PTO’s rulemaking authority under 35 USC 2. However, whether or not this stututory section leaves the PTO little, if any, “wiggle room” to refuse to examine a continuing application depends on a number of judicial cases over the years that have restricted when res judicata may constitute a proper ground of rejection (see MPEP 706.03(w) for a list of relevant cases). These may have a bearing on whether the substance of the rulemaking is proper. I believe that the essence of the PTO’s argument boils down to denying that an applicant has any right to perpetual examination of his/her application. While I tend to agree with the PTO on that point, any rulemaking would still need to be consistent with the body of res judicata case law. If the PTO wishes to reverse this body of precedent, then 35 USC 131 itself may need to be amended.

  55. 92

    An earlier post (step back, Nov 04, 2007 at 7:33pm) suggested that the PTO rulemaking might also be inconsistent with 35 USC 131 (“The Director shall cause an examination to be made of the application”) and thereby exceed the PTO’s rulemaking authority under 35 USC 2. However, whether or not this stututory section leaves the PTO little, if any, “wiggle room” to refuse to examine a continuing application depends on a number of judicial cases over the years that have restricted when res judicata may constitute a proper ground of rejection (see MPEP 706.03(w) for a list of relevant cases). These may have a bearing on whether the substance of the rulemaking is proper. I believe that the essence of the PTO’s argument boils down to denying that an applicant has any right to perpetual examination of his/her application. While I tend to agree with the PTO on that point, any rulemaking would still need to be consistent with the body of res judicata case law. If the PTO wishes to reverse this body of precedent, then 35 USC 131 itself may need to be amended.

  56. 91

    A few thoughts:

    1) What I meant by the statement that the court “ruled against GSK” on the policy question was that it found GSK had not shown sufficient likelihood of success on the merits with respect to that question. So much of the case turns on administrative authority, not policy.

    (Given Dennis’s strict word limits, I needed to use shorthand.)

    2) I appreciate the point that the Federal Circuit has shown resistance to the command in Zurko. (Indeed, I have a whole law review article in Georgetown about that . . .) However, Lacavera v. Dudas, a 2006 Federal Circuit case, explicitly applies Chevron to a case where the PTO argued that it was exercising its procedural rulemaking authority. (And found the rule reasonable under Chevron step 2.)

    3) Although I think Chevron step 0 (i.e. Mead) is probably the more important point, I am not convinced that Seminole Rock is irrelevant. In order to determine conflict with the statute, one has to determine the meaning of the regulation. Recall that the Supreme Court opinion in Seminole Rock ended with:

    “We do not, of course, reach any question here as to the constitutionality or statutory validity of the regulation **as we have construed it** . . .” (my asterisks).

    As the Supreme Court indicates, if there is disagreement over what a regulation means, one has to construe the regulation before one can determine if it conflicts with the statute.

    Of course, given some of the PTO’s statements, it may be that their “litigation” position that a third continuation app will be decided on a “case by case basis” fails Seminole. However, since Cacheris does explicitly discuss the conflicting positions on what the regulation means, Seminole should be noted.

  57. 90

    Reading through the law review article and the arguments about whether the Patent Office’s new rules are procedural or not, lets look at the respective remedies for the issue regarding gaining another continuation.

    For example, the patent office states under the new rules that one may file a petition in order to get such a continuation established. The question therefore is how is the petition going to be analyzed?

    The patent office has basically stated that the bar for getting such a petition granted will be very difficult where the issue could not have been presented to the patent office prior in the previous responses.

    Arguably, such a requirement leads to a “foreseeability” analysis which would be a substantive issue, not a procedural issue. That is, how could I, in view of rules promulgated, predict an art rejection (substantive) or other type of rejection?

    Ok, let’s look at another component of the new rules which basically states that “related applications” (same inventor within 2 months) are assumed to be patentable indistinct unless the Applicant rebuts such an assumption. This is important for applying the 5/25 rule.

    The analysis for understanding what “patentably indistinct” would probably mean is the standard used to apply an obviousness double patenting rejection (provisional rejection). I don’t know about anybody else, but the Examiner will typically provide a claim chart to me identifying the respective elements of claims between two applications (or issued patent) to apply such a rejection.

    Under the new rules, such an analysis is not required because it is assumed that two applications falling under the “procedural rules” are in fact patentably indistinct. Yet, for the Examiner, the only way of asserting that two application are patentably indistinct is to conduct a claim analysis (a substantive analysis).

    Hence, without drawing many pixels in these two examples above, I think that the thought that the new rules are in fact procedural and can be upheld is kind of weak. That is that the rules produce tests that concern substantive issues of law evaluated against 35 U.S.C. 102, 103, and 112, in order to be applied effectively.

  58. 89

    Prof Rai,

    Thank you for backing me up on the Mead issue.

    I guess you are coming at this from a purely admin law perspective with little grounding in substantive patent law.

    35 USC 111 defines what constitutes an “application”.

    35 USC 131 says the USPTO “shall” examine the application if properly filed –no wiggle room

    35 USC 102 creates a statutory “entitlement” to a patent, the applicant is entitled to a patent unless–

    Because of this statutorily imposed entitlement, it is the initial burden of the USPTO to present a prima facie case of unpatentability based on the law (35 USC 102, 103, 112 primarily). The PTO’s job is to “examine” applications, not to legislate new laws that demote the progress of science by unsecuring from inventors the exclusive rights to their respective discoveries.

  59. 88

    Ms. Rai,

    Re: “For those of you who are interested in “real-world” experience…”, while many posts have in large part been based on emotion, there is an essence of truth in the sense that the rules will have to eventually be examined with particularity. Agreed, this is a case whose outcome will be determined by principles of Admin Law, but its factual underpinings require a detailed understanding of the vagaries of Title 35, 37 CFR, and, possibly, the MPEP.

    BTW, I do hope that as this matter progresses more portions of Title 35 are brought into play as they lend credence to the argument that the rules at issue impose substantive limitations contrary to statutory and case law.

  60. 87

    In response to Ms. Rai’s comment: “Indeed, the very strong deference of Seminole Rock is relevant even if the rules in question are substantive and thus not entitled to the application of Chevron. Yet the opinion by Judge Cacheris does not even cite Seminole Rock.”

    The judge did not cite Seminole for good reason–it appears to be irrelevant in this case.

    The court’s GSK opinion does not cite Seminole Rock as Ms. Rai suggests it should have because, as she points out, the court would have had to first decide that the rules were validly promulgated (i.e., whether they are substantive or procedural). The appropriate citation (that the court also missed) is United States v. Mead Corp., 533 U.S. 218, 150 L. Ed. 2d 292, 121 S. Ct. 2164, Syllabus (2001) (holding that “Administrative implementation of a particular statutory provision qualifies for Chevron deference when it appears that Congress delegated authority to the agency generally to make rules carrying the force of law, and that the agency interpretation claiming deference was promulgated in the exercise of such authority.”).

    Granted, Seminole “says that an agency interpretation of its own rule is “controlling unless plainly erroneous or inconsistent with the regulation.” However, Seminole deals with administrative interpretation of VALID agency regulations. “The dispute in [Seminole] centers about the meaning and applicability of [an agency’s] rule.” The Seminole court did not address the rule’s validity, stating that “[w]e do not, of course, reach any question here as to the constitutionality or statutory validity of the regulation.”

    No question that if the rules at issue in GSK are valid and if the PTO were interpreting them through application or otherwise, Seminole would be relevant. However, the issue in GSK is whether the rules are valid in the first place. This falls under Mead.

    As for Ms. Rai’s first point, that the court could have spent more time analyzing whether the rules are valid, there is another problem. Almost no case law guidance exists in this area because the Federal Circuit did not even recognize the PTO’s administrative agency status until the Supreme Court forced it to in Zurko. After that, the PTO’s powers have been generally minimized under the APA. See Zurko on remand (choosing to give the PTO the lesser of two possible modes of deference under the APA). Thus, whether the court reasoned through these issues in its opinion or not, it probably approximated the most likely Federal Circuit position. No doubt, the court’s final opinion will have to clearly decide this issue. Hopefully it will consider all of the relevant Supreme Court case law in its final decision.

    I appreciate Ms. Rai’s comment not because it is infallible, but because it raises awareness about issues of administrative law that every patent attorney is hopefully ready to argue on a client’s behalf.

  61. 86

    Professor Rai –

    I would note that you did say, “… the court ruled against GSK’s argument that the rules were a bad idea as a policy matter (or, in the language of administrative law, “arbitrary and capricious”)” and your recent post does not respond to any of the several challenges to that statement that were posted in reply.

  62. 85

    I love professors. They’re so analytical.

    You can always count on a professor to make sure good sound judgment doesn’t get in the way of stare decisis.

  63. 84

    Professor Rai:

    Thank you for your replies to the rather spirited postings by patent practitioners.

    The “agency’s view of how the rule is going to be applied” is that the PTO was unable to identify a single instance when a request for a third continuation would be automatically granted.

  64. 83

    To all those who have responded,

    1) Note that this post is intended to focus on **administrative** law. I express no opinion as to whether the rules are a good idea as a policy matter.

    The administrative law question is very important because it is relevant not simply to this case but also to any future cases in which the PTO acts via a claim that it is using procedural rulemaking authority. There have already been such cases, and there will no doubt be more.

    Post Dickinson v. Zurko, traditional principles of ad law apply to the PTO. So it’s important to get the ad law right.

    For those of you who are interested in “real-world” experience, I argued many administrative law cases as an attorney in private practice and also for the Department of Justice.

    2) The central PTO argument (not necessarily a winning argument, but the central argument) is that the rules are procedural; Congress gave it procedural rulemaking authority; and thus its rules should be evaluated under the Chevron framework.

    As Mead makes clear, the first step in this framework(Chevron step 0, as Professor Cass Sunstein of the University of Chicago Law School has called it) involves looking into whether the PTO’s claim is in fact correct.

    Contrary to some posts, not all statutes give agencies rulemaking authority. In fact, the issue of whether an agency has been given rulemaking authority, and is acting in the exercise of that rulemaking authority, is central.

    3) Whether it is “reversible” error not to decide the question of Chevron step 0 is anybody’s guess. But it is questionable opinion writing when the agency is making that argument as its major argument.

    Deciding the procedure vs. substance question is also important for writing an opinion will be useful precedent for future cases.

    At the PI stage, the hurriedness can perhaps be excused. But I certainly hope that Judge Cacheris addresses the question squarely later on.

    5) The point about procedural rulemaking not necessarily being subject to notice and comment is interesting. But under Mead notice and comment certainly helps the PTO’s claim that it passes Chevron step 0.

    6) The Seminole Rock point goes directly to the question of whether the rules conflict with the statute. If the court gives deference to the agency’s view of how the rule is going to be applied, it may reach a different conclusion about conflict than if it accepts the challenger’s view.

  65. 82

    I believe the key words regarding the PTO’s rulemaking authority granted in 35 USC 2(b)(2) are “not inconsistent with law”. The PTO’s rulemaking authority is not absolute and the substance/procedure distinction misses the whole point of the court’s preliminary holding. If the rule indeed violates 35 USC 120, and thus is “inconsistent with law”, then it automatically exceeds the granted authority. The PTO’s remedy to overturn a nearly 40 year old precedent to which had long acquiesed should have been to seek amendment of 35 USC 120 by Congress rather than to act unilaterally.

  66. 81

    Curious –
    As I recall, since the points were submitted in the same blog thread, there is a rebuttable presumption that the points are bloggedly indistinct. Accordingly, in order to get distinct replies, someone needs submit a Suggested Rethreadification Requirement and a showing as to why the points could not have been submitted in separate threads originally, or rebut the presumption of bloggedly indistinctiveness.

  67. 80

    Dennis:

    “Is it truly clear error for a district court to merge the analysis of substance/procedure and authority into a single step?”

    I would condition that as, “Is it truly clear error for a district court to merge the analysis of substance/procedure and authority into a single step, in the context of an emergency motion for preliminary injunction (mere hours prior to the irreparable harm taking effect)?”

  68. 79

    This was a nice reminder of my good fortune in taking Admin Pro from a professor with experience as a registered patent attorney and as an examiner.

  69. 78

    Dennis:

    There probably are six or so distinct points made in the comments above in response to Professor Rai’s post.

    I hope that Professor Rai will take the time to respond each of them

  70. 77

    ohmy: On that note, I should let you know that I gave Professor Rae a strict word limit. There are many relevant cases, statutes, and articles that would be cited in a longer piece — however those citations are not (in my view) appropriate for a Patently-O post.

    Your question still stands as a good one: Is it truly clear error for a district court to merge the analysis of substance/procedure and authority into a single step?

  71. 76

    Come to think of it, aren’t all agencies’s rulemaking authority granted via statues? Shouldn’t there basically be only one step, whether the agency’s action violated any statute?

  72. 75

    Rai stated: With respect to the prospective application of the continuation rules… analysis of whether the rules are contrary to the patent statute turns on two issues that should be decided sequentially. First, do the rules fall within the scope of the PTO’s procedural rulemaking authority? Second, do the rules violate the statute?

    What case HOLDS this and why was it not cited (if the case exists at all)? Why should the court not decide, first, whether the rules violate the statute? Or is Rai pulling this out of thin air. Pretty sloppy scholarship!

  73. 74

    One note: Whatever her views, Ms. Rai’s comments are helpful in that GSK needs to know if there are any holes in its arguments.

    Second note: Regarding the non-granting of petitions, is there any use in studying the “Chinese laundry” cases of San Fransisco? My memory of them is dim, but I thought there were some cases that held that San Fransisco’s zoning regulations, while fair as *written*, were *administered* in a way that was completely unfair (i.e., permits for laundries were simply never issued to Asians). It seems to me that the PTO’s own guidelines on the circumstances under which they wouldn’t grant a petition serve as evidence that the rules, while fair on their face, are not intended to be administered fairly. Furthermore, their examples actually interfere with an applicant’s ability to comply with other rules, e.g., no RCE to bring in late-discovered prior art prevents one from complying with Rule 56). Or that the presumption that same-day-filed applications are patentably indistinct prevents an applicant from complying with 35 USC 101 in the first place (without the aid of divisional practice).

  74. 73

    “”So, you’re going to call us whiney name callers in the future?”

    If it advances my argument…”

    BigGuy wins the Retort of the Month(TM) award!

    Look, Professor Rai surely has made some reasonable points and has also shown us where the PTO is likely to proceed with its arguments as the case moves forward. It’s not surprising that the judge’s opinion was lacking in some respects, given the rushed nature of the proceedings and the complicated facts.

    But it’s those facts that are going to bite the PTO in the behind as this moves forward because the facts are that the PTOs alleged “goals” are not rationally related to its rules, and the rules themselves were so poorly drafted that they were being re-written (or “clarified” as the PTO clumsily spun it) right up to the date of enactment.

  75. 72

    Malcolm:

    You are entitled to your opinions, as I am to mine. Write when you have something constructive (or at least amusing) to say.

  76. 71

    “I know you are a professor now, but continued emphasis on the academic rather than the practitioner risks reducing the relevance of this blog for actual patent attorneys. ”

    Lighten up, Noonan.

  77. 70

    TIMEOUT! I just saw that the Tafas lawyers have filed to depose Dudas and Doll! This should be good. Some accountability, finally?

  78. 69

    This strays a bit, but here is my question:
    Dear Simple Fix,

    Re:
    “End the fee diversion process and put the 2 billion or more dollars taken from patent office revenues back into the system. Go after the congressmen who took the money in the first place. Imagine how the system would be today if the funds were spent on office infrastructure.”

    ( Simple Fix’s comment was made on this thread:

    “Court Blocks PTO Rules on Eve of Effective Date …” on this link:
    https://patentlyo.com/patent/2007/10/court-blocks–1.html )

    Is $2 billion the real number?
    If so, why didn’t many Patently-O commenters pick up on this?
    It seems to me that Simple Fix hit a real sore spot underlying the PTO controversies.
    Simple Fix is on to something.

    Anyone have more info about this?

    Given the obvious pis-por performance of PTO Management in the past, PTO generated money could be / should be used in myriad way to help solve PTO problems, such as hiring out-side services to manage the PTO business and perform some of the examining work.

    Why do we seem to be ignoring Simple Fix’s ideas and suggestions?

  79. 67

    Mr. Whealan’s ideology is inimical to the national character of the United States Government. Never should we allow unelected individuals establish policy. If Congress can’t do it with the numbers they have, then maybe we are under-represented. I say we return to the original numbers of citizens per Congressman. We should have one Congressman for every 30,000 Americans. Then maybe there will be enough of them to address the needs of the nation. What we have here people, is yet another example of a group of government paid individuals who do not want to do their work. So the burden is upon the private individual. That is what these rules do. I say make the Congress do their job. Get enough Congressmen and then only they can promulgate regulations. If you have one one Congressman for every 30,000 citizens that would equation to about 30,000 Congressmen. With that many they would have time to pass the regulations needed. If we don’t like the regulations we could then throw the bums out. Here we can’t remove these people that we don’t like in the USPTO. This is simply unAmerican.

  80. 66

    Anon E. Mouse:
    I have been trying to focus the issue by drawing attention to the source of the problem instead of the symptom. We have successfully dismantled near all of FDR’s liberal socialism. The executive agencies are the last rubric of overly centralized government. It is the executive agencies in total that must be vitiated in their present form. We must seriously expand the judiciary and place ALL judicial functions of each executive agency under the direct control of the courts. Only then will problems such as these occur.
    If you focus on the reality of the driving force behind these regulations, it is nothing more than an attempt to fix the litigation problem in this country from a substantive approach. They are attempting to fix the litigation problem, but only with patent cases.
    If the companies have issues with litigation costs, then we should change litigation in this country. For example, the discovery rules, both old and the new e-discovery are simply ridiculous. Screw discovery in patent cases. Walk up with you patent look at the accused device you either infringe or not. Do it like the Europeans. For christ sake, don’t give BS powers to a clearly unconsitutional fourth branch of government we call executive agencies.
    So long as executive agencies exist in their present form, we are only a few steps of way from autocratic government.

  81. 65

    The legal arguments have yet to be made… after all, a TRO is an action in equity. Scholarly comments such as this are not particularly helpful from the patent bar’s perspective. The enjoined rules would cause serious long term harm to the US economy and as such, the commerce clause rules here.

  82. 63

    Real – I thought we were engaging in good-natured banter; I’m not interested in a fight.

    My suggestion that I would only call someone a whiney name caller if it advanced my argument was intended to be ironic – please see my original post regarding the fallacy of ad hominem arguments.

    Sigh.

  83. 61

    I get the feeling that Dennis Crouch and Arti Rai are shills of the Coalation for Patent Fairness (Intel, MS, HP, SAP, etc.).

  84. 60

    T-
    The PTO is not allowed to carry over money from FY to FY. It must use all of its money it gets in one fiscal year within that said fiscal year. The PTO is actually heading towards having less money overall because of the “quality initiatives” causing less patents to issue (thus less issue fees and less maintenance fees, where the PTO gets most of its income).

  85. 59

    Ms. Rai … not sure that the basic assumptions of your article are even correct. You refer to the patent statute, which statute?? Do you mean the ´52 Patent Act? Substance vs. Procedure?? Your analysis in not clear and actually complicates, if not obfuscates the issues. At this stage, the court was only to consider the 4 factors in deciding whether or not to issue a preliminay injunction; you know them, or should … No substantive patent law analysis needed … yet.

  86. 58

    Ms. Rai … not sure that the basic assumptions of your article are even correct. You refer to the patent statute, which statute?? Do you mean the ´52 Patent Act? Substance vs. Procedure?? Your analysis in not clear and actually complicates, if not obfuscates the issues. At this stage, the court was only to consider the 4 factors in deciding whether or not to issue a preliminay injunction; you know them, or should … No substantive patent law analysis needed … yet.

  87. 57

    Following up on a comment above, I don’t have a problem with this blog posting articles such as that of Prof. Rai, and other articles/news items that many of us would consider to advocate a viewpoint that is anti-patent (when I say anti-patent, I mean the viewpoint advocates changes that will make patents more difficult to obtain, more expensive, etc.). However, for better or for worse, some persons in the media etc. take this blog seriously as some sort of pulse of the in-the-know patent community. Maybe it’s my own paranoia, but it seems to me that the majority of articles that we see on this website tend to be anti-patent. I can see how the media etc. who view this website could get an anti-patent vibe (certainly not from viewing the reader comments, but from viewing the headlines and articles), which may be imputed on the regular readers of this blog by association. I certainly cannot believe that this is intended by Dennis, and I hope to see more articles from those who support the patent system in the future, so that the blog isn’t so one sided. There is plenty of such information out there on the web, particularly recently, as small tech, pharma, and others are starting to make their case against the current reform bill in the Senate.

  88. 56

    How on earth could it advance your argument:

    “Let’s act like reasonable advocates for our clients, rather than whiney name-callers.”

    Are you an unreasonable advocate, or do you just judge others by standards you don’t live by? We will all reap what we sow, eventually.

  89. 55

    real:

    Yes, I agree.

    The PTO’s position is that they were procedural and interpretive…I guess interpretive rules of procedure.

    All kidding aside, I’m pretty sure that there are rules that have been promulgated that would fall into that category.

    Prof. Rai is doing us a great service, as is Dennis for giving her a forum.

    This will be an Admin law case fought by Admin law lawyers. We patent folks will be most valuable filling in the underlying questions of fact and law–giving the admin folks the ammunition they need.

    Prof. Rai is giving us insight into the PTO’s case. We need her viewpoint.

  90. 54

    “So, you’re going to call us whiney name callers in the future?”

    If it advances my argument…

  91. 53

    “Real – When I said “Let’s act like reasonable advocates for our clients, rather than whiney name-callers,” I was speaking prospectively, not retroactively.”

    So, you’re going to call us whiney name callers in the future?

  92. 52

    NPE,
    if you’re a real examiner, I would like to know which technology area you work in and see some samples of your work. Doing such amount of overtime as you claim is certainly not the norm. In actuality, the norm is working a lot of VOLUNTARY overtime. Please don’t try to pump up your ego by posting such nonsense as if it’s the norm.

  93. 51

    Real – When I said “Let’s act like reasonable advocates for our clients, rather than whiney name-callers,” I was speaking prospectively, not retroactively. 😉

  94. 50

    Anon E. Mouse, 553(b) distinguishes between “interpretative rules” and “rules of agency organization, procedure.”

    553(d) only excepts interperative rules, not rules of agency organization, procedure.

    To say (as has been said in the FR notice) the USPTO could have effected the final rules without a 30 day prior-publication of final rules is (in my mind at least) ludicrous.

  95. 48

    I went to the PTO briefing at the Partnering in Patents meeting. My feeling was that no petitions will be granted on a case-by-case basis unless REALLY exceptional circumstances exist. It was pointed out at that meeting that of all the examples given by the PTO, not one of them actually led to the granting of a petition – can the PTO representative give one example where the petition would be granted? The question was conspicuously dodged. Futher I would strongly counsel clients against submitting an ESD.

    I’m very afraid that the same thing will happen to suggested restriction requirements: you file all your claims in a single application along with an SRR, but the PTO denies it, or limits the number of divisionals actually granted.
    .
    (Hey – at least she wasn’t one of the Duke 88)

    Dave

  96. 47

    “First with the salary discussion, in my second year, I am going to be earning over 100k (after overtime) with a bachelor degree.”

    NPE – by saying “in my second year”, are you saying that you are not in your second year yet? You suggest that you (would) have a $70k salary as a GS-9. This would mean that you are either a step 9 or step 10. Unless you are initially hired as a GS-9 step 9/10, you will not be able to get to such a GS level/step combination (except through step increases without grade promotion). For example, if you are hired as a GS-7 step 10, then upon promotion you will be a GS-9 step 7. (and then the following year, a GS-11 step 5)

    Also, by doing 40 hours of overtime each biweek, you are doing 150% of your expected production. Good for you if that’s no problem for you, but please do not make it out to appear as if that is the norm. I myself do not have trouble doing 50 hours of overtime per biweek but I know for certain that 50 hours is viewed as a great amount of overtime amongst my peers.

    Finally, you may come to find that trying to CONSISTENTLY produce 50% more than what you are expected to do (even if it is not too difficult to do so for a single biweek) may take a whole lot more discipline than expected.

  97. 46

    Folks,

    Enough with the attacks on Professor Rai. I find it disappointing that the same nonsense that passes for political discourse these days turns every discussion, even on this board, into a futile exercise. Please keep in mind that ad hominem arguments aren’t really arguments at all. Either Prof. Rai is correct, or she’s not. Whether she “loves the PTO” is besides the point.

    Likewise, whether Professor Rai has ever written a patent application is also beside the point. This case is about administrative law. How many of you are experts in that field? Yes, some of the details, such as whether the requirements of the ESD are so onerous as to be an illusory option, or whether the requirements are vague, might best be illuminated by practitioners. But the difference between “substantive” and “procedural”, and whether the PTO really has been authority sufficient to promulgate these rules, will be determined from considerations beyond whether or not these rules make you unhappy.

    Let’s act like reasonable advocates for our clients, rather than whiney name-callers.

  98. 45

    Why are these professors at the periphery of this business so eager to express such biased opinions? Is Professor Rai an old college chum of Whealan? Do they think this is a game? Geezus!

  99. 44

    P.S. and as T correctly pointed out, the “affect” in the transcript could have actually been “effect”, and hence her prejudice and the power grab she seems to promote could be even more damaging in the hands of a misbehaving agency.

  100. 43

    “At about the 1:05:27 mark, at the end of Solicitor Whelan’s remarks in this video: link to realserver.law.duke.edu , Professor Rai makes an interesting comment regarding the PTO’s power to make rules with respect to procedure and how procedure can effect ‘substance'”.”

    Here’s the transcript of Ms. Rai starting at 1:05:26:

    “…John’s [Whealan] presentation pointed out one thing which is very important is that the PTO does have, ummm it may not be quite like other administrative agencies, but it does have a fair amount of power with respect to procedure in particular, and procedure as we all know in our post legal-realist era can also affect substance, so ummm I’m delighted that the PTO is choosing to exercise its power in this way, my personal prejudice, I’m a big fan of having the PTO take more authority.”

    A big fan of having the PTO *take* more authority.

    Dennis, did you know about this “personal prejudice” before publishing the article in the Patently-O Patent Law Journal?

  101. 42

    MisterAnonymous
    If I am remembering the PTO’s comments correctly, there are currently 700,000 unexamined applications pending. Making a few assumptions and rounding down to $1000 per application in Filiing, Search and Examination fees, that means there is currently $700,000,000 in unused fees sitting in an accout somewhere, which could be used to hire examiners who would find reading and prosecuting patent applications interesting. That of course does not consider the billions in “maintenance” fees that are currently being collected on allowed patents or that would be collected if only the average 1/3 of those 700,000 applications were allowed.

    If McDonald’s has trouble keeping up with the demand for Happy Meals, they dont make you file a petition explaining why you didn’t or couldn’t have ordered extra fries earlier.

    They continue to ask you if “you want fries with that” and they build another restaurant.

    What happened to delighting the customer?

  102. 40

    real anonymous:

    5 usc 553(b):
    ———
    (b) General notice of proposed rule making shall be published in the Federal Register….

    Except when notice or hearing is required by statute, this subsection does not apply—
    (A) to interpretative rules, general statements of policy, or rules of agency organization, procedure, or practice; …
    ————

    that above part means no notice is required for the stuff listed in 553(b)(A) — that is, for rules of agency procedure, such as the New Rules (so sayeth the PTO).

    553(c) says “after the notice required by this section [do public comment]….”

    -there is no notice required, thus no comment required.

    553(d) says “the required publication of a substantive rule…” and “except….(2) interpretive rules….”

    -not substantive, so no required publication.

  103. 38

    Anon E. Mouse wrote:

    “Well, 553 has an exception to notice and comment for procedural rules–there’s no notice and comment needed for informal rulemaking regarding procedures under 553. The PTO cites to it in the final rules in the federal register. They say their rules are procedural, thus no notice and commment is necessary, but they do it any to be nice (just like a cat covering it up with kitty litter).

    But back to the statutes: did Congress kick the PTO over to 553 just to be in the exception in 553? That makes no sense.”

    I’m not an expert in admin law, but 5 USC 553(d) and 5 USC 553(e) don’t appear to have any exceptions for “procedural” rules, contrary to the USPTO assertions below.

    The USPTO’s cite take on 5 USC 553 at FR 46830 is:

    The changes being adopted in this notice do not change the substantive criteria of patentability and do not effectively foreclose the applicant’s opportunity to make a case on the merits (i.e., the changes being adopted in this final rule continue to provide patent applicants with numerous opportunities). Therefore, these rule changes involve interpretive rules, or rules of agency practice and procedure…. Accordingly, prior notice and an opportunity for public comment were not required pursuant to 5 U.S.C. 553(b)(A) (or any other law), and thirty day advance publication is not required pursuant to 5 U.S.C. 553(d) (or any other law). Nevertheless, the Office sought public comment on proposed changes to these rules of practice to obtain the benefit of such input prior to adopting the changes to the rules of practice in this final rule.

  104. 37

    “First with the salary discussion, in my second year, I am going to be earning over 100k (after overtime) with a bachelor degree.”

    I thought examiners were still probationary in their second year and weren’t allowed to work overtime, or does this vary by TC?

  105. 36

    FYI –

    At about the 1:05:27 mark, at the end of Solicitor Whelan’s remarks in this video: link to realserver.law.duke.edu , Professor Rai makes an interesting comment regarding the PTO’s power to make rules with respect to procedure and how procedure can effect “substance”.

  106. 35

    anon-
    GS level is 9.
    No EE bonus.
    40 hours of overtime a bi-week.

    Overtime cap is about $36 per hour.
    26 bi-weeks in a year.
    40 hours a week.
    70k Salary + (40*36*26) = 107k.

  107. 34

    The PTO promulgated these rules (as it will promulgate others) because under the current way of doing things there are too many claims spread across too many applications for its examiner’s to properly and comfortably examine. Yes, it could address this problem by hiring many more examiners, but that would require a lot of money, and that’s not likely to happen. Besides, even if it were to get the money to do that, it would still have a hard time retaining the people it has invested money in recruiting and training, for a reason that few at the PTO or in the Patent Bar ever acknowledge: the work isn’t just stressful, it is boring. Very, very boring. On the other hand, it requires fairly smart people to do properly, and smart people, being smart, generally don’t last long at boring jobs unless the jobs either 1. pay a decent, if modest salary AND are easy (consider that there are MENSA types out there delivering the mail) or 2. pay very, very well (e.g. investment banking).

    The job of patent examiner is boring (form paragraphs?) and stressful (production). You get slotted into a small area of technology, and that’s that. The pay isn’t terrible, but neither is it much of an inducement to stick it out for a full career. Hence the high attrition rate, which will always be a problem for jobs like these. One approach is to lower the stress level by rethinking (i.e., lowering) production requirements, and one way of doing that is to increase the hours/count. Reduce the number of claims that must be looked at and the number of attorney-submitted prior art references that must be considered, and presto! There’s wiggle room for increasing the hours per balanced disposal. I suspect that this, in the end, is the goal of the PTO’s current legislative and rule-making initiatives. Reduce the volume of claims coming in so that the examiners can be given more time in which to do their boring jobs.

  108. 33

    “I respectfully disagree; a good mix of the theoretical and practical is good for us practitioners.”

    Opampman, did you mean “theatrical and practical”? Either way, I would disagree. Its like two professors “dueling” with swords who never are likely to see a real battle… thinking they will be able to keep their swords sharp that way… when, actually, all it may be good for their egos.

    The theatrical presentations are easy mental stimulus for the folks on the sidelines (politicians) who would rather watch choreographed fake duels (with conveniently captioned subtitles and/or advertisements as the case may be) than have to face and consider and analyze and understand the real thing… which would be much more difficult. It’s no wonder the theatrical academia is well-received by their intended audience(s).

    As we now say, “Those who can, do….” But in the old days of apprenticeships, perhaps they understood teaching much better than we do today. (They certainly did at the USPTO, when after 2 weeks of PEIT, you would be apprenticed for the next 4 years. And in Va., you can still take the bar without going to law school if you are apprenticed.)

    (My apologies, Dennis, but the further you go away from the world of practice into the world of “fake duels”, you will necessarily become less relevant in the world of practice. Please don’t do it, Dennis. Thank you for Patently-O.)

  109. 32

    “First with the salary discussion, in my second year, I am going to be earning over 100k (after overtime) with a bachelor degree.”

    Please tell me how this is possible. What GS level are you? Are you getting the EE bonus? How many hours overtime are you working?

  110. 31

    Dear Professor

    I respectfully submit that far from “ruling against” GSK’s argument that the rules were a bad idea as a policy matter (or, in the language of administrative law, “arbitrary and capricious”), the court indicated that there was not enough information in the briefs to rule one way or another.

    I additionally submit that as soon as the court gets down to an analysis the nitty gritty, through-the-looking glass insanity of the new rules, the court will side with GSK, and the rest of the patent application filing community. Ignoring the “arbitrary” selection of 2 continuations, 5 independent claims and 25 total claims, please consider the following summary (by the PTO) of just one of the new rules:

    37 CFR 1.75(b)(1) (new) provides that an applicant must submit an examination support document (ESD) before the issuance of a first Office action on the merits if the application contains more than five independent claims or more than twenty-five total
    claims. 37 CFR 1.75(b)(1) also provides that an application may not be amended to contain more than five independent claims or more than twenty-five total claims if an ESD has not been submitted before the issuance of a first Office action on the merits in
    the application.

    Please also consider the video provided here:

    link to kelleydrye.com

    which clearly shows that the PTO understands that no one will or can file an ESD (for which the PTO graciously provided a 16 page outline available here: link to uspto.gov of things to do in an effort to comply with the ESD requirement).

    That aside, “new 37 CFR 1.75(b)(1)” would operate to prevent one from amending a patent application to place allowable dependent claims in independent form in order to allow the application to issue and capture for the inventor all the protection which the examiner concedes he/she is entitled.

    Accordingly, “new 37 CFR 1.75(b)(1)” prevents one from amending and application to include more than 5 independent claims if an onerous ESD was not filed prior to the mailing of the First Office Action on the Merits. Therefore, if one filed an original application with say 3 independent claims and say 17 dependent claims depending directly from various ones of the independent claims, all well within 5/25, and the independent claims are finally rejected, but the dependent claims are found to be allowable, 37 CFR 1.75(b)(1) would prevent one from placing all 17 dependent claims in independent form. Indeed 37 CFR 1.75(b)(1) would force one to to select only 5 allowable claims and dedicate the subject matter of the other 12 allowable claims to the public.

    I suppose the PTO might say that the inventor could (if he had a spare continuation left) file a continuation and an ESD, insanely duplicating the examiners search, to “support” the examination of claims already deemed to be allowable. However, that would involve paying application, search and examination fees for claims that have already been deemed to be allowable, not to mention the time, expense and other costs associated with the preparation and filing of the ESD. I submit that this shows that the new rules are arbitrary and capricious.

    Alternatively, the PTO might say that the inventor could file 2 continuations without an ESD in order to collect 10 of the 12 claims and only have to forgo the protection provided by 2 allowable claims. I submit that this also shows that the new rules are arbitrary and capricious.

    Of course, the situation would be aggravated if instead of 3 and 17, the original application included 1 independent claim which was ultimately finally rejected and 24 allowable directly dependent claims.

    Do you see a way for the court to find that these rules are not arbitrary and capricious?

    Thanks

  111. 30

    Oh boy, so many things wrong with this article. But first, I respect Arti Rai’s opinion and don’t want to chase her out of here. But…

    “But Judge Cacheris should not have avoided deciding the question of substance vs. procedure. If the PTO’s rules are in fact procedural…” — The rules are clearly both procedural AND substantive. They are procedural because they affect practice before the USPTO but also substantive because they deny the right of an applicant to claim priority after his quota of continuations are used up. Thus, the rules are clearly substantive. Matter closed.

    “Assuming that Chevron applies,…” — Chevron clearly doesn’t apply here because Congress never gave the USPTO power to make substantive rules. This was clearly argued by GSK and this isn’t a live issue either.

    “the PTO has argued that it does not intend an absolute limit. According to the PTO, it will evaluate requests for a third continuation application on a case-by-case basis” — The PTO enumerated the circumstances where a request for a third continuation will not be granted, and stated only in rare cases would the petition be granted. This is a defacto absolute limit. The petition requirement was a sham to avoid the holding in Henrickson.

    “Seminole Rock deference, which was recently reaffirmed in the 1997 Supreme Court case Auer v. Robbins, says that an agency interpretation of its OWN RULE is “controlling unless plainly erroneous or inconsistent with the regulation.” (emphasis added)” — 35 U.S.C. 120 is not the PTO’s “own rule” and is not subject to agency interpretation.

    GSK’s arguments are solid. While GSK did not succeed in showing the rules were “arbitrary and capricious,” this is more fact intensive and I suspect GSK will make a stronger showing of this upon discovery of USPTO internal communications (discovery of which, the USPTO will object to vigorously).

  112. 29

    My belief is that Arti Rai has never actually practiced patent law. Maybe someone through her an application when she was a clerk somewhere, but thats it. She is commentator needing an angle to make a name for herself and have herself be heard.

  113. 28

    Nice initiative, Dennis, to draw our attention back to this 2003 Paper on self-help. I am awed by the degree of self-help displayed by the EPO some years ago, in putting in place the Rules and procedures to manage and steadily eat up the backlog which in those days was out of control (but isn’t any more). No wonder the USPTO thought “I want some of that too”! But common law USA is not civil law Europe. If facts are oxygen, and 70% of the earth’s surface is aquatic, civil law courts have gills and common law judges have lungs. They perish in each others’ domains (civil solutions don’t work in a common law environment, and vice versa). I had always thought that the great merit of common law fact-finding is that it’s over when the first instance decides (whereas civil law appeal courts do fact-finding de novo). When Arti Rai points out that, in patent cases in USA today it’s the CAFC that is doing the heavy breathing, I think she performs a useful service, in pointing this out as the root problem that has to be addressed, if the USPTO backlog is to be beaten back. For as long as the facts are in issue till one gets to the CAFC, every Applicant and every prosecuting attorney will argue to the ends of the earth for yet one more continuation, and will be acting rationally when doing so. No wonder people are outraged, when told that their rational behaviour is unacceptable.

  114. 27

    Yet another professor who does not practice patent law chiming in!

    Read the statute: its pretty clear, particularly the part about “continuations”. Note the “s”. Read section 131. How can we analyze whether the USPTO had authority if what htey want is illegal?

    How would you come out whether USPTO can establish a slush fund to talk to aliens in outerspace? Would you go through the two step analysis? “We must, and I mean must, first decide whether the PTO had rulemaking authority to establish a slush fund. Well it does not say they can’t so lets go on to the second question, whether it contravenes the statute. Ah, Congress should have said “Don’t talk to space aliens.” So it is legal”

    The way you present your analysis that you know something for fact that a Judge, AIPLA, the Patent Bar and everyone else who know patent prosecution seems to miss is really arrogant and annoying. Do you even know what a continuation is? A real life example?

  115. 26

    “Dennis: I know you are a professor now, but continued emphasis on the academic rather than the practitioner risks reducing the relevance of this blog for actual patent attorneys.”

    I respectfully disagree; a good mix of the theoretical and practical is good for us practitioners. It’s like eating our vegetables. Bring it on, Dennis.

  116. 25

    Scholarly analysis, injudiciously referred to as “academic claptrap” above, is interesting but largely irrelevant to practicing Registrants, especially when it comes from a non-Registrant, whether in academia or the PTO front office. I think part of the solution is to turn the PTO back to seasoned patent attorneys and agents, not career hacks and political appointees. Just another opinion.

  117. 24

    Dennis:

    I know you are a professor now, but continued emphasis on the academic rather than the practitioner risks reducing the relevance of this blog for actual patent attorneys.

    And as much as I appreciate reading Professor Rai’s analysis, it is curious (in view of the furor Mr. Whealan’s remarks have caused on this blog) that it took Points to Ponder’s comment before we knew that the good professor introduced Mr. Whealon at the conference that has received so much attention.

  118. 23

    Lionel,

    I’m serious, and I honestly don’t work very hard. I got the job with a MS.

    -anonymousExaminer

  119. 22

    “Arti Rai heard Mr. Whealan’s remarks – she introduced him.”

    Thanks, Points to Ponder. Her introduction of him starts at approximately 47:50 in the first video. (She is first introduced at approximately 6:15, moderating a discussion, “Are you Afraid of Patent Trolls?”. She talks about “administrative” as opposed to legislative patent reform beginning at approximately 8:30.)

  120. 21

    This is what puzzles me. 35 USC 2 says that the PTO has the power to make procedural (not substantive) rules. But then it says that it must do its rulemaking according to notice and comment of the APA (5 USC 553).

    Well, 553 has an exception to notice and comment for procedural rules–there’s no notice and comment needed for informal rulemaking regarding procedures under 553. The PTO cites to it in the final rules in the federal register. They say their rules are procedural, thus no notice and commment is necessary, but they do it any to be nice (just like a cat covering it up with kitty litter).

    But back to the statutes: did Congress kick the PTO over to 553 just to be in the exception in 553? That makes no sense.

    Here’s the section of 35 USC 2:
    ———–
    (b) Specific Powers.— The Office—
    (1) shall adopt and use a seal of the Office….;
    (2) may establish regulations, not inconsistent with law, which—
    (A) shall govern the conduct of proceedings in the Office;
    (B) shall be made in accordance with section 553 of title 5;
    (C) shall facilitate and expedite the processing of patent applications, particularly those which can be filed, stored, processed, searched, and retrieved electronically, subject to the provisions of section 122 relating to the confidential status of applications; …;… .

    ——————

    What am I missing?

  121. 20

    First with the salary discussion, in my second year, I am going to be earning over 100k (after overtime) with a bachelor degree. Salary is not a real problem (and I was making ends meet with my 50k starting salary before). A lot of my cohorts that left were enticed by different jobs with less production requirements with a comparable (sometimes lesser, sometimes greater) salary. I believe only one out of ten examiners who left did so because of location, and that was simply because of a distaste of the area.

    Second, the 35 USC 131 argument does not seem to be a sound one for the continuation rules, as the Office would not have been denying the third continuation application, rather the Office would have denied the filing date. Therefore, the application must meet all of the other statutes without the priority date, in which case, the application would issue. On the other hand, 131 does seem to speak volumes against the ESD and the 5/25 rule.

  122. 19

    anon,

    As much as I agree Bush is incompentent, please keep your eye on the ball. The ball is the PTO, and we need to hit it with a bat. Hard.

    Counting on this to go away when the administration changes is attractive, but dangerous.

  123. 17

    re: Chevron….

    I thought the Fed. Cir. said in Merck (80 F.3d 1543) that Chevron deference is n/a to the PTO b/c they have only procedural rulemaking authority under 35 USC 2 (excepting some tiny little directly enumerated grants of substantive power):

    “Under Chevron, where Congress has authorized an agency to promulgate substantive rules under a statute it is charged with administering, we must uphold the agency’s interpretation of an ambiguity or omission in that statute if the interpretation is a reasonable one. Chevron, U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837, 842-45, 104 S.Ct. 2778, 2781-83, 81 L.Ed.2d 694 (1984). As the Seventh Circuit recently had occasion to note, however, “only statutory interpretations by agencies WITH RULEMAKING POWERS deserve substantial deference.” Atchison, Topeka and Santa Fe Ry. Co. v. Pena, 44 F.3d 437, 441 (7th Cir.1994) ( in banc ) (emphasis added), aff’d, 516 U.S. 152, 116 S.Ct. 595, 133 L.Ed.2d 535 (1996). See also 1 KENNETH CULP DAVIS AND RICHARD J. PIERCE, JR., ADMINISTRATIVE LAW TREATISE § 6.3 (1994); Michael Herz, Deference Running Riot: Separating Interpretation and Lawmaking Under Chevron, 6 Admin. L.J. Am. U. 187, 200-03 (1992).

    As we have previously held, the broadest of the PTO’s rulemaking powers-35 U.S.C. § 6(a)-authorizes the Commissioner to promulgate regulations directed only to “the conduct of proceedings in the [PTO]”; it does NOT grant the Commissioner the authority to issue substantive rules. Animal Legal Defense Fund v. Quigg, 932 F.2d 920, 930, 18 USPQ2d 1677, 1686 (Fed.Cir.1991).n6 Because Congress has not vested the Commissioner with any general substantive rulemaking power, the “Final Determination” at issue in this case cannot possibly have the “force and effect of law.” Chrysler Corp. v. Brown, 441 U.S. 281, 302, 99 S.Ct. 1705, 1718, 60 L.Ed.2d 208 (1979) (“[T]he exercise of quasi-legislative authority by governmental departments and agencies must be rooted in a grant of such power by the Congress and subject to limitations which that body imposes.”). Thus, the rule of controlling deference set forth in Chevron does not apply. Such deference as we owe to the PTO’s interpretive “Final Determination” regarding the interrelationship by the URAA and the Hatch-Waxman Act thus arises, not from the rule of Chevron, but solely from, inter alia, the thoroughness of its consideration and the validity of its reasoning, i.e., its basic power to persuade if lacking power to control. See E.E.O.C. v. Arabian American Oil Co., 499 U.S. 244, 257, 111 S.Ct. 1227, 1235, 113 L.Ed.2d 274 (1991); General Elec. Co. v. Gilbert, 429 U.S. 125, 140-46, 97 S.Ct. 401, 410-13, 50 L.Ed.2d 343 (1976); Skidmore v. Swift & Co., 323 U.S. 134, 140, 65 S.Ct. 161, 164, 89 L.Ed. 124 (1944).”

  124. 16

    anonymousExaminer,

    RU serious? Are these recent (the last 5 – 10 years)? Is your degree BS, MS, or PhD?

    If you could have started at over $50k I would have seriously considered joining back in the 90s, but they were hiring PhDs for less than that then and I have a BS (although I could have easily gotten a Masters).

  125. 15

    “My understanding is that as a practical matter ALL requests for third continuations would be denied.

    Fellow patent attorney colleagues, do you agree? ”

    Curious,

    I agree to the extent that the USPTO, to the best of my knowledge, has refused to give a single example of where a petition for a third continuation would be granted.

  126. 14

    I believe the real problem with the analysis is that everyone presumes that the rule of law is applicable here. We have an executive administration that does not believe there are any limits on its powers. This is plainly seen with the FDA executive agency. Bush could not get the immunity from product liability lawsuits passed by Congress. As a result, the FDA has now interpreted its rules so that the same occurs: pharmaceutical companies have been granted immunity from product liability lawsuits. I believe the question that we must all ask ourselves is do we want executive agencies to continue. I sumbit not. I believe that there is no enough democracy and/or accountability in the Federal Government. Every person of managerial rank in any executive agency should be subject to election. The present system is certainly a mess. This can be seen from the present FDA and USPTO.

  127. 13

    anonymousAgent,

    I don’t know a single examiner that makes as little as 60k. Examiners are doing OK these days. I made more than 100k in my second year. The attrition problems are not primarily driven by salary issues.

    anonymousExaminer

  128. 12

    A, Yes. The entire Whealan video is available here:
    link to realserver.law.duke.edu
    and here
    link to realserver.law.duke.edu

    Mr. Whealan expressly concedes that the PTO was attempting to “make policy,” that the ESD is a poison pill that “under the current law of inequitable conduct, nobody’s going to want to do.” There are several more totally outrageous statements, which I will leave for your delight to discover.

    The one poor soul in these two videos with any practical “background and experience in patent law” (as opposed to purely academic claptrap), is Wendy Verlander. You can see her in the second session biting her lip, and only occasionally hinting that the ivory tower data-free nitwits (Rai, Dreyfuss, and Kahin) are talking complete nonsense.

    Arti Rai heard Mr. Whealan’s remarks – she introduced him. Her remarks here in the lead article, that the PTO was acting entirely “procedurally,” are as disingenuous as anything the PTO itself put in the Notice of Final Rulemaking.

  129. 11

    “With respect to the prospective application of the continuation rules (the very thorny issue of retroactivity in administrative law is best left for another day), analysis of whether the rules are contrary to the patent statute turns on two issues that should be decided sequentially. First, do the rules fall within the scope of the PTO’s procedural rulemaking authority? Second, do the rules violate the statute?”

    I disagree. The issue should be decided concurrently because Section 2(b)(2) of Title 35 empowers the PTO to “establish regulations, not inconsistent with law”. Maybe APA law allows most agencies to interpret their organic statutes so long as Congress has not directly spoken to the precise question at issue. However, in this instance, Section 2(b)(2) specifies that the regulations may not be inconsistent with the law, which would include the entire body of case law. Accordingly, the PTO cannot pass regulations that are inconsistent with the case law.

  130. 10

    “Moreover, Chevron is not the be all and end all to administrative agency law. How about Mead deference?”

    Further, didn’t GSK properly point out that Chevron is innapplicable to judicial review of all PTO decisions, because the PTO lacks substantive rulemaking authority? I believe the PTO gets only “Adam’s Fruit” deference. (Maybe Mead and/or Skidmore deferrence too, but that doesn’t seem to help the PTO).

  131. 7

    I agree that 35 USC 120 was the wrong statute to emphasize.
    The statute of interest is 35 USC 131:

    “The Director **shall** cause an examination to be made of the application and the alleged new invention; and if on such examination it appears that the applicant is entitled to a patent under the law, the Director **shall** issue a patent therefor.”

    I don’t see anywhere between the “Shalls” some wiggle room for the Director to say, well OK, but only if this “application” is not a 3rd or later continuation. An application is an application, and it MUST be examined, and a patent MUST issue if the applicant is entitled “under law” (not under rules) to such patent for the alleged new invention. See also 35 USC 102 first sentence.

    Moreover, Chevron is not the be all and end all to administrative agency law. How about Mead deference?

    Here is some background info:
    link to law.whittier.edu

  132. 6

    Prof. Rai:

    Were the rules “procedural” to help the Patent Office reduce its backlog or were they to help Intel, Microsoft, etc. when accused of infringing patents issuing many years after the original filing date?

  133. 5

    P.S. Ms. Rai, I hope you saw the excellent video presentation on “self-help” given by Solicitor Whealan at:

    link to kelleydrye.com

    (Please watch the video entitled, “Whealen-making-policy.wmv”. Would this be what you are suggesting as the solution to our nations patent woes?)

  134. 4

    Ms. Rai, thank you for your article.

    Firstly, regarding your assertion that “analysis of whether the rules are contrary to the patent statute turns on two issues that should be decided sequentially”, didn’t the Court in Seminole Rock say:

    “We do not, of course, reach any question here as to the constitutionality or statutory validity of the regulation as we have construed it, matters that must in the first instance be presented to the Emergency Court of Appeals. Lockerty v. Phillips, 319 U.S. 182 , 63 S.Ct. 1019; Yakus v. United States, 321 U.S. 414, 427-431, 64 S.Ct. 660, 668-670”?

    It thus seems that issues of statutory validity of the rules would have been separate and distinct from the agency’s interpretations of its rules, and not conditioned thereon or foreclosed thereby.

    Secondly, your logic is difficult for me to follow. Particularly, your phraseology “turns on two issues that should be decided sequentially” does not make it clear whether you think the second question need be answered “conditioned on” or (in the alternative) “regardless of” the answer to the first (i.e. does the second question act as a limiter of the first question or as an alternative thereto in your analysis?)*

    If you were a practitioner, perhaps you would understand that the problem with the patent system today stems largely from the “self-help” that the USPTO has attempted to engage in in the past decade (e.g. appointing unqualified political players to top positions, looking to fictional “allowance error rates” for substantiation of ill-conceived office policy, attempting to embark on courses where essential agency functions such as the search are “outsourced” to contractors rather than improved, seeking to lobby Congress for ex-post support of rule changes rather than following the APA notice and comment procedures). Allowing more such “self-help” (with the emphasis on “self”) without addressing the clearly manifest agency problems (unqualified managers and dissatisfied examiners) will only ensure the destruction of the American patent system and American competiveness in the world market-place.

    *Perhaps you would clarify your logic for us. I thought a Patently-O commenter (agent007) framed the two relevant questions clearly, logicly, and succinctly, though I am not well-versed in administrative procedure:

    “1) Are these rule changes substantive as opposed to procedural? — YES

    2) Does the PTO have power to set policy via substantive rule making? — NO

    Case closed, PTO loses. This should take all of 5 minutes.”

    link to patentlyo.com

  135. 3

    Prof. Rai,
    You wrote: “the PTO has an understandable desire to engage in “self-help.” ”

    So you understand the USPTO’s motivation for doing this.

    Have you considered that there are OTHER OPTIONS for reducing the backlog other than the one the USPTO tried to foist on the patent community. NONE of these solutions were properly addressed by the USPTO.

    MANY of these solutions have been discussed on this blog and other patent blogs.

    Some examples:
    a) opening satellite offices to attract more examiners (YOU trying living on $60 K in Northern Virginia);
    b) delayed examination;
    c) raising fees (and concomitantly crediting Examiners for checking extra claims);
    ETC ETC.

    With all due respect to JDs and ivory-tower academics, this is REALLY a problem which requires the help of MBA’s and IT people with “real-world” experience running large IT-based organizations (and that’s what the PTO is). Also some management with proper “soft-skills” for managing PTO examiners wouldn’t hurt either.

    ANOTHER ISSUE –
    Prof. Rai – have you ever actually drafted a patent appliaction????? Prosecuted a patent application ??? (1-2 continuations are burned up immediately by the Examiner giving the “broadest reasonable interpretation of the claims” using defintions that noone in the art would ever use.

    Sincerely,
    AnonymousAgent

  136. 2

    Yes, I agree – this argument by the PTO that unlimited continuations are available, upon filing a simple petition, is a sham. Evaluating requests for a 3rd con on a case by case basis is a far cry from allowing con’s unconditionally.

    While I am very pleased, like 99.9999% of the rest of the patent bar, with the PI, I do wish the PTO would offer some guidance about what this means for any applications filed after Aug. 21 and Nov. 1, in the event the rules are upheld. Probably another notice, which is really no notice (like the Aug. 21 notice re: one more con), will issue sometime next year. But in the meantime, do we draft app’s to abide by the 5/25 rule or include SRR’s? I feel little bit in limbo right now. Of course, the PTO has screwed up so badly with the attempted implementation of these rules and its antagonism against patent applicants, that I don’t expect any guidance or assistance any time soon.

  137. 1

    Dear Ms. Rai:

    You write “the PTO has argued that it does not intend an absolute limit. According to the PTO, it will evaluate requests for a third continuation application on a case-by-case basis.”

    My understanding is that as a practical matter ALL requests for third continuations would be denied.

    Fellow patent attorney colleagues, do you agree?

Comments are closed.