“And that’s why they win. Substantive effects of procedural rules don’t make them substantive. No matter how much you really really want them to.”
If I say it often enough, I’ll believe it.
If I say it often enough, I’ll believe it.
If I say it often enough, I’ll believe it.
If I say it often enough, I’ll believe it.
If I say it often enough, I’ll believe it.
Pass me another drink.
66
“but B has to deal with the new rules and cannot get a patent, B loses.”
Dealing with the new rules means he cannot get a patent? W T F? Where does that come from? If he has a valid claim to the species and claims it then he can certainly get a patent on it. It only takes one claim.
“If you “F” everyone you really hurt innovation across the board.”
Everyone’s getting fed a bit by the new rules. Some more than others. As to the small corp I fail to see why making them compete with the big dogs is out of the ordinary. They’ll have to judge when to file just like the big guys.
“When you make it too difficult for small and mid-sized companies to acquire patents on their technology (or impossible),”
How do the new rules make it difficult to claim what you want to protect? Answer: they don’t. You merely have some competition thrown in the mix as I just described.
“Second, less innovation hurts everyone. ”
We already know that innovation comes in two sizes. Worthless and worthwhile. The innovation that gets taken down by the new rules is likely to be 99% worthless. The one percent loss, meh, to make an omelet you have to…
“The big issue in the trial is whether the PTO can make substantive rules contrary to statute. ”
And that’s why they win. Substantive effects of procedural rules don’t make them substantive. No matter how much you really really want them to.
65
“It seems to me that some standard claim drafting perhaps backed up by an expert 132 declaration as to what the claim terms mean to a person of ordinary skill in the art would eliminate the ambiguity problem. I don’t see any real need for them to appeal this to the CAFC. Anyone disagree?”
I’m not sure which case you’re referring to (the BPAI case on another thread, perhaps?), but I’ll disagree anyway. If you’re going to file a 132 affidavit from an expert, you might as well ask the PTO to preemptively stamp “INVALID” on the face of the patent. In my experience, patent litigators LOVE 132 affidavits.
64
Getting back to the subject at hand, much as I would like to pile on here, the facts of this case look complicated and a careful analysis of the decision in light of the prosecution history etc. would be needed to really figure out what is going on. I think I will save that until I get a rejection that cites this.
In the meantime, I wonder how important these particular claims are to the applicant, Seiko Epson. It seems to me that some standard claim drafting perhaps backed up by an expert 132 declaration as to what the claim terms mean to a person of ordinary skill in the art would eliminate the ambiguity problem. I don’t see any real need for them to appeal this to the CAFC.
Anyone disagree?
63
Rules? We don’t need no stinkin rules.
62
6K still doesn’t seem to understand the importance of patent protection, for both pharmaceutical companies that have millions of dollars invested in research and for smaller companies.
When you make it too difficult for small and mid-sized companies to acquire patents on their technology (or impossible), they may end up out of business. Little Corp cannot compete with Big Corp if Big Corp can reproduce Little Corp’s products with impunity.
61
“If the filing practice fs you then it also will f your competitor” 6
6: two problems with your argument
(a) present applications have to compete against previous applications. e.g. A files a very broad application directed to a genus. B identifies a valuable species within the genus Since neither A nor B can practice the invention on the species, they will have to come to a deal. However, if A files first under the old rules but B has to deal with the new rules and cannot get a patent, B loses. Thus, the temporal distinction hurts B and helps A.
(b) If you “F” everyone you really hurt innovation across the board. First, you hurt small companies that rely heavily on IP rights in favor of big companies. Wonder why are the big software companies in favor of the rules?
Second, less innovation hurts everyone. A lot of drugs are invented by small players, universities etc, and then go to big pharma for their later development.
(c) The big issue in the trial is whether the PTO can make substantive rules contrary to statute. The fact that the PTO might want to make such rules does not mean that they have the right to do so: even really really wanting it doesnt get you the pony.
60
“These are two necessarily contrary statements.”
What’s contrary about them? They’re on two seperate aspects of the same issue.
“Your ignorance is amazing. That’s too late in the game. Why would you spend millions upon millions of dollars on clinical trials if you have no chance of a patent right. You can’t recoup any research costs. ”
My ignorance? Lol, no, I’m looking beyond the surface of the issue that you can’t seem to get past. Look at it this way. First ask yourself, why is it too late in the game? Why do you have no chance at a patent right? Because someone else filed first I’m assuming is what you’re talking about, or perhaps a publication came out. Assuming we’re talking about them filing first, then they’re in the same boat as you are. They will have filed too soon and won’t be able to recoup the costs. They would stand to gain nothing from doing so, so they’ll wait to file also. Then it boils down to who’s willing to disclose first.
“No one is asking for 10,000 claims.”
No, they’re asking for infinite claims. And I saw an app with 6k the other day, I’d bet there is someone with 10k claims.
“e6k- I might suggest that you use non-pharma examples/hypotheticals when attacking the patent system and current patent practice.”
I’m hardly attacking it, what they’re doing is fine atm. But if the rules go into effect then I’m saying that the world will not end, and neither will big pharma.
I should state:
Here is the issue. If the rules go into effect then it is hard to know what to claim in your ~75 alloted claims at the PREFERRED time of filing/prosecuting in pharma cases. This is understandable. However, there is nobody making you file then. There is nobody making your competitors file then. If the filing practice fs you then it also will f your competitor. So neither of you will want to file. It then becomes a game of who gives in and files and accepts a “shorter” patent life in exchange for the exclusive right. So what? The world doesn’t end, competition between firms doesn’t end. And if some boink in a University lab can and does come up with the same thing you just supposedly spent millions on, then maybe you shouldn’t have spent millions on it eh? Maybe you should have just waited for his paper to come out and called it a day. (LOL)
In any event, assuming it does take 10 years to get everything sorted out and ready for production. You get TWENTY. That’s a juicy 20 years. Not only do you get that, you get that with patent term restoration. 20-10 still leaves you a juicy 10 years even if you get no restoration. What’s the big deal with that? Explain to me that.
59
e6k- I might suggest that you use non-pharma examples/hypotheticals when attacking the patent system and current patent practice.
58
“Or, they should simply file right before having to disclose to the FDA, not as soon as humanly possible as they are now.”
Your ignorance is amazing. That’s too late in the game. Why would you spend millions upon millions of dollars on clinical trials if you have no chance of a patent right. You can’t recoup any research costs. The FDA oversight….just a little, tiny oversight.
57
“If your product is such that people can copy it from just getting their hands on one… they buy, then tough cookies, maybe you should have filed for a patent on it before you went to market.”
AND
“then the whole issue seems to boil down to them filing too soon because they know that other companies are out there that might beat them to the punch.”
Talk about throwing it to the wall and seeing if something sticks. These are two necessarily contrary statements. I also think you are confusing patentability with the FDA approval process. The nature of the pharma industry is that is takes a good 10 years or so, and sometimes more depending upon the therapy, to identify a species that might come to market from the genus or sub-genus you discover AFTER you do a series of expreiments that actually demonstrate patentability.
This is all confounded by academics who are often publishing in the same gamespace because their jobs depend upon the number of publications they have. The art in the space is highly dense and complex.
The whole point is that the industry is nothing like any other industry.
No one is asking for 10,000 claims. They are asking for a rules package that doesn’t require clarivoyance to practice without committing inequitable conduct.
56
(you kinda missed that one – trade secret protection is not available for the active ingredient in FDA approved drugs)
Indeed. So basically that’s the issue. Well they should just take that up with the FDA. Or, they should simply file right before having to disclose to the FDA, not as soon as humanly possible as they are now.
“Also, while you may do your best to search the prior art before filing, you may miss one or two compounds that fall within the genus, so you want dependent claims to protect the most promising compounds in case the genus claim goes by the wayside. (That’s entry-level patent practitioner instruction, something you may get someday if you leave the patent office and try to contribute to society by protecting new and useful inventions.”
I already know that. I also know that drafting in such a manner does nothing other than scream out to everyone that you don’t really regard any of it as your invention, you just hope that something in there is. Pathetic. But setting such a problem under 112 aside for the moment lets move on.
“Here there’s a huge lag between the time you have to file for the patent and the time product comes to market. If a company can’t get at least 7 or 8 years of exclusivity, it’s probably not going to bother developing the drug. Dunno about you, 6, but I think new drug development is a good thing – plenty of diseases out there that haven’t been conquered yet, and some that we thought were conquered (like strep) that are making a comeback.”
I agree developing drugs is a good thing. But the thing that I don’t understand is the blatant contradiction you gloss over. Apparently there are usually firms competing for a given project that they’re both trying to scoop the other on. And there can be only one patent as you well know. At least for any one given claim, we’ll limit ourselves to that atm assuming that one of the claims is the most important. But in your scenario all those firms that don’t win the patent race tried to develop the drug and they didn’t get the patent. Sounds to me like competition drives those other companies to innovate, not the exclusivity since it’s obvious that only one of them is going to get it, but yet they both tried to get it, when they could have easily both diversified their interests so that they weren’t both working on the same project. Disregarding the competition, why not let the pharmas have some other sort of incentive that actually makes sense for all parties. Like allowing them to work together on a project and then just letting them price fix a bit to make up the difference that they would have made under the patent scheme. Then both of the companies might be able to benefit, the research might go quicker, they save themselves thousands or millions in legal fees, and the office isn’t inundated under 1000’s of worthless claims being filed just for the chance that one might be worth something.
“I’m 99.9% sure you won’t get it.”
There’s nothing more to “get”, there was only one thing you brought up that I hadn’t considered, the FDA. And I understand what you’re saying, and it’s just chasing your arse around the room by basing your whole premise on them needing the exclusivity. Are you trying to tell me that big pharma would simply disappear? Somehow I doubt big pharma would disappear, or substantially be diminished, after these rules. I think you have a case of the chicken littles if you say they would.
But, for the record, one other thing. Why not simply file applications such as app 1, genus, app 2 species 1-75, app 3 species 76-150 and simply avoid the whole issue? Unless of course the species are obvious over one another. If they’re not, simply tell us why they’re not and you can file as many related apps as you want to without having a problem with the presumption made about them.
55
Nice points, SJE. I wonder how sharply the number of bogus rejections would drop if examiners got docked some pay for making a baseless rejection. (But then who would decide?)
54
Good post, Time to Deep – thanks.
53
Re: 6’s comments regarding Pharma claims.
Convincing the PTO that a claim is enabled often requires post-filing evidence. i.e. the claim IS enabled as of filing, but the PTO doesnt believe you. If the PTO denies you the time to get such evidence, then it is denying you a substantive right under cover of procedure.
Another is that the PTO wants to instill a rule 11-like regime on prosecution, but only wants it to apply one way. This is completely unworkable with the present quality of PTO examination. Just this week I had to 1. explain to an examiner the difference between nanometers and micrometers (and which one is bigger), 2. and educate another examiner on 102(e) and 3. ask why new grounds of rejection are being raised on the original claims after 8 rounds of prosecution. If the PTO had been before a court, it would not have been allowed to make any of these rejections and would have been at least liable for sanctions.
52
Dennis – you imply that my refusal to pursue a court action to remedy the 1,000 dollar late fee is my way of showing that I believe the rule to be reasonable.
Truth is very simple. Always.
There are 10,000 wrongs, and my not addressing any one is no more an assertion of my agreement with the wrong as it is an assertion that the wrong does not exist.
51
Hoo boy 6, you’re right you don’t understand $quat about the pharma business. Not that that’s ever stopped you from running your mouth before. No time to write a treatise here, but just to touch on the major points:
Innovative pharma companies have to file first, to avoid being scooped by a competitor (that much you seem to have grasped), and to enable them to initiate clinical trials without fear of creating a 102 bar against themselves (you kinda missed that one – trade secret protection is not available for the active ingredient in FDA approved drugs). While there may be a few lead candidates out of several hundred compounds synthesized at the time of filing, it may turn out that a different one of the genus is the best compound, e.g. because it has the fewest side-effect. Anyway it won’t be until after years of clinical trials that you (a) know which one is going to be the commercial product and (b) get FDA approval to market your product. So to keep competitors at bay, you demonstrate and claim a genus that shows some particular utility, usually binding to some particular receptor at some particular affinity.
Also, while you may do your best to search the prior art before filing, you may miss one or two compounds that fall within the genus, so you want dependent claims to protect the most promising compounds in case the genus claim goes by the wayside. (That’s entry-level patent practitioner instruction, something you may get someday if you leave the patent office and try to contribute to society by protecting new and useful inventions.) Also, the original use a company is thinking of may not pan out, but a secondary use might (think sildenafil citrate, aka V*i*a*g*r*a, which was originally tested as heart medication), so you may need a later generation patent to cover the use that the FDA eventually approves. In the pharma field invention isn’t static, and the patent system (so far at least) allows applicants a certain amount of room to adapt as new information comes to light.
So to sum up, b/c of FDA regulation, the nature of the beast here is very different from working in silicon, where the product can come to market fast. Here there’s a huge lag between the time you have to file for the patent and the time product comes to market. If a company can’t get at least 7 or 8 years of exclusivity, it’s probably not going to bother developing the drug. Dunno about you, 6, but I think new drug development is a good thing – plenty of diseases out there that haven’t been conquered yet, and some that we thought were conquered (like strep) that are making a comeback.
And for the record, we need generic companies too to keep prices low when the exclusivity runs out (and to keep on the pressure to make sure the exclusivity given to the innovators isn’t too long).
Now that I’ve written the above, I’m not sure why – I’m 99.9% sure you won’t get it. Good thing you’re not in GAU 1600. And I suggest that if you don’t like the current pharma regime in the USA, which owes a tremendous amount to the patent system and Waxman-Hatch, you move to somewhere where the patent system is weaker or non-existent and see how well you fare – let me know how easily you can come by high quality meds in Botswana.
50
Hi five 6,
Re: “The thing that I do not understand…”
With all due respect, there are in fact myriad things you do not understand.
Me too. One difference is that I know it.
49
“In other words, why spend upwards of 500 million dollars or more in some cases to develop a product to be copied by generic companies in a year?”
The thing that I do not understand about the pharma claiming scheme is this. Given that they invent a genus compound that has several thousand/million species in it, along with the methods of using it, and maybe some apparati to use with it, why can they not merely claim the genus, and the method, and the apprati? Sounds like 3 claims to me. If the claim is valid then so be it. If it’s not because of art, then it’s not, so what? If the problem is that they’re wanting 10000 claims to cover what they’ve come up with in its entirety by spelling out each individual twist and turn in deps and more inds etc because they don’t know which of it will be useful then why don’t they just put off filing? If the problem here that what they’re doing is filing before they’ve actually found what is useful about the compound then the whole issue seems to boil down to them filing too soon because they know that other companies are out there that might beat them to the punch. If that is the case, then why are we so worried about them getting a patent if the industry doesn’t even need someone to get a patent in order to spur the research along?
You guys arguing that there is no reason to invest so much money when someone can just copy your work makes no sense. If you file a patent on what you want to protect and claim it properly and validly then you’re all set to go. Nobody is making them file for a patent, if they don’t want to then fine. If the issue is merely them wanting to file way early before they are even know why they want to protect something then that’s hardly an issue at all. If you don’t like how the patent system works, then don’t use it, go trade secret. If your product is such that people can copy it from just getting their hands on one they buy, then tough cookies, maybe you should have filed for a patent on it before you went to market or otherwise disclose it. If someone beat you to the punch patenting it, then tough cookies again, learn to keep secrets if they stole it from you, or else remind yourself that someone else came up with it the same as you did and merely excersized their statutory right.
48
“That’s funny, I noticed a whole sht ton of straws grasped in the above GSK/Tafas arguments portion of the above mp3.”
This is completely inaccurate. My impression of the GSK attorney argument was that it had very simple reasons for why the rules should be shot down. In fact, he tended to repeat himself a few times and did not really go off on any tangents even though the justices gave him ample opportunity to do so.
I think what was funny on many levels was Toupin on the “crippling effects” of the rule with respect to pharma companies. In other words, why spend upwards of 500 million dollars or more in some cases to develop a product to be copied by generic companies in a year? His response was tantamount to “we’ve considered them, trust us and the budgeting office…”
I mean, seriously. After all of this time you better have at least a half-baked, chirping point to throw back. I guess the answer was better than his response to the effect the rules may have on patent term restoration. Response? What is patent term restoration?
Let’s talk about real incentive for innovation in this country. What a joke.
47
“I don’t know anybody who thinks it’s reasonable to pay 1,000 for an “extension” of time during the statutory period. ”
Well then, you should challenge that “rule” or “fee” in court, it is obviously substantive. Before the rule it was a well settled policy, or even a well settled interpretation of a statute, that the applicant had a “right” to respond to an OA at any time during the 6 mo period. Thus, this rule runs counter to the existing policy/law that was in place at the time of its enactment. Also, I agree with you, it isn’t reasonable, but I do say that it was reasonable enough for the bar and clients to not have it struck down on fallacious grounds to prop up their biz.
I would spell out the basis for my opinions, but I’ve spent the better part of entire threads doing so already. Look through the archives, you’ll see me.
“There’s only one straw in the game ”
That’s funny, I noticed a whole sht ton of straws grasped in the above GSK/Tafas arguments portion of the above mp3.
“Just because you smack your wife and she doesn’t call the cops doesn’t mean you were reasonable. ”
“You” was obviously reasonable enough. To the wife, the fact that life will continue on without you in jail, and you staying with her were things she desired more than taking the trouble to call you out on an action that hurt her. Don’t get me wrong, I’m not excusing beating your wife or your husband, but people have to be responsible for their own circumstances. In the case of the abusive husband, you leave him, get a job if you have to. In the case of the 1000$ fee, the government setup a system to help you solve your own problem called the courts. I feel like I’m lecturing kindergarten.
46
Good question PL. I’m curious too.
45
slightly off topic, but since the above posters brought up the new BPAI rules, does anyone know of a sample appeal brief available online that is in accordance with the new rules? This would be super helpful since I am working on some appeal briefs now (and won’t have them filed in time).
44
Get real.
“The rules on the books have been agreed upon as being reasonable.”
Nonsense. Just because you smack your wife and she doesn’t call the cops doesn’t mean you were reasonable.
I don’t know anybody who thinks it’s reasonable to pay 1,000 for an “extension” of time during the statutory period.
“But since the bar takes issue with these, they’re grasping for every straw they can.”
Huh? There’s only one straw in the game – the only recourse was to file suit, so they did. They had one option, they took it.
“It does seem likely that the rules will not go into effect, but if the CAFC upholds the judgment about the rules being “substantive” it will be folly.”
Dennis, I’ve told you before, the whole system is screwed no matter what. At the end of the day, rule changes that don’t involve changing the reward system for Examiners won’t change anything.
43
6,
Your opinion is welcome, but your reasons for your opinion are even more welcome. Why don’t you support your argument with facts?
Otherwise, you sound like a disgruntled examiner aimlessly issuing rejections of claims without a Marzocchi to stand on.
42
“Imagine spending $10,000,000+ on an illegal rules package against the wishes of almost the entire patent bar that would have had a minimal effect on the backlog anyway. $10,000,000 could have hired 125+ examiners to help work on the backlog.”
Exactly.
Is this John Love’s baby? Nothing like handing the reigns of rule-making authority to the PTO-lifer. My favorite element of this whole package is the comment section of the Federal Register where the PTO has essentially non-responsive arguments after concerned groups ask questions like “wouldn’t implementation be cost prohibitive to applicants?”
incredible.
41
“Anyone know why the new BPAI rules aren’t viewed as being substantive as well”
They’re substantive, just like half of the other rules on the books. It just so happens this rule threatened the very existence of some of the bigger client’s patent game so everyone is making a bigger stink. Basically it’s a fight between the office and the bar/clients as to what is reasonable. The rules on the books have been agreed upon as being reasonable. But since the bar takes issue with these, they’re grasping for every straw they can and hoping the judiciary backs them up where they ought not. It does seem likely that the rules will not go into effect, but if the CAFC upholds the judgment about the rules being “substantive” it will be folly.
40
Anyone know why the new BPAI rules aren’t viewed as being substantive as well?
If so; why no fight over them?
39
Anyone know why the new BPAI rules aren’t viewed as being substantive as well?
If so; why no fight over them?
38
I was just curious about the responses of Toupin and Desmarais to the judges–why not give a short answer, followed by a description of the case law? (e.g., “No, it’s not; as this court held in…) All of the answers by both of these attorneys seemed to start with a discussion of a case and it wasn’t clear (at least to me) where they were going with it until later in the answer. Is this a tactic to delay being cut off by the judges or something? It seems to make the arguments being made much less clear, but perhaps that’s because I am less familiar with the cases being cited. But unless everyone was in perfect agreement with the interpretation of all the cases (which they clearly were not), this would seem to be an important technique to clarify exactly what point was being made.
37
Dear Mr. Obama:
Come January, please remove Mr. Doll, Dudas, + friends ASAP. If you weren’t convinced before, these oral arguments prove the stupidity of the current USPTO leadership. Imagine spending $10,000,000+ on an illegal rules package against the wishes of almost the entire patent bar that would have had a minimal effect on the backlog anyway. $10,000,000 could have hired 125+ examiners to help work on the backlog.
36
Toupin PWNED!
I almost feel kind of sorry for him. But not really
You guys are tough! The Federal Circuit is no cake walk. The judges are very courteous and often brilliant … but it’s three often-brilliant minds against one, and they rarely let a presenter stick to the script, each line of questioning coming from a different direction.
It sure makes for good entertainment though 🙂
Are these audios available for any unsealed CAFC hearings ?
31
True, Toupin was not nearly as polished as the other more experienced appellate attorneys. However, I don’t believe the court was particularly concerned with the oral talents of the various mouthpieces. Based on the legal arguments presented, the PTO’s case was shot down several times by the court on many fronts. Too bad malicious prosecution does not apply in this context.
30
…I wonder, does 6 have two clones…
29
If 6 turns out to be 9, I don’t mind.
28
“From :Examiner 6K” to “E6k” to 6k to 6?
???…???…???, What is going on…” JK
Number 6 is “The Prisoner”
– he must be Patrick McGoohan, LOL!
I’m loving this mp3. The judges tore Toupin to pieces. 120 and 112 is getting down to the nub of the matter. They are pretty convincing in pointing out that the PTO are trying to change those sections of the statute.
27
Does this case even matter? It seems like much ado about a small thing
26
“Who is the government pigeon who negotiated the PTO’s contract with STIC?”
Apparently it’s the database that is charging us, the STIC people are just paid a salary. It’s the use of the database that is so expensive.
25
“For starters he has a better understanding of the law than the majority of the lawyers that were present there. That in an of itself should probably carry the day, but failing that, maybe he’s really good looking? ”
I was there and know many of the other lawyers who were present. If Mr. Toupin has a better understanding of the law than the majority of the lawyers there, he did a very poor job of demonstrating that knowledge.
Judge Rader appeared to be particularly skeptical of the PTO’s arguments (the looks on his face do not really come through in the mp3). I think that the Bogese argument is a loser based on the Judges’ questioning, and Rader seemed genuinely concerned about the practical effect of the ESD. Although I am very hesitant to make predictions based on the way the argument appeared to go (I have been WAY wrong before), it definitely looked bad for the PTO.
Toupin’s not that good looking either.
24
LOL. The lawyer for the PTO isn’t very smooth. I’ve heard law students doing better oral arguments.
23
Three cheers for Dr. Tafas and GSK and their lawyers, Kelley Drye and Kirkland & Ellis, who rode point on this case and beat back this outrageous power grab by the PTO!!!
22
“the STIC database searches that I can and do request on a whim in cases that involve chemical compounds can easily cost 1000$ for a 10 second search”
Who is the government pigeon who negotiated the PTO’s contract with STIC?
21
Ya mon, father xmas should lay the present on us!
20
“He said the doctrine of retroactivity did not apply because the rules had no retroactive effect. ”
I could write out a transcript but I cannot find any such a statement made by the man in the file above. He does say that the doctrine does not apply because the applicants have a chance to adjust the application to comply. In other words: They are retroactive, but the doctrine of retroactivity which might lead to the rules being held invalid does not apply to this situation because the applicants have a chance to comply with the rules. In other words, since every applicant has the ability to comply with the rules in every single case in existence then the doctrine does not apply.
There is nothing hard about stating what is simply a matter of fact and a legal determination based on that fact with a straight face.
“And you know this, how?”
First I assume you, one blogger lawyer that I know was going, and the 2 lawyers from the opposing side were the only lawyers in attendance. After that, it’s a simple analysis. 🙂
“While this panel dunked Tupin in a “blood-bath,” ”
I’m not sure where you get that impression from. The only thing that even could be imagined as having shown that the judges did not seriously consider everything he said was the part about sending himself to electronics, which while funny in the context, is pretty ridiculous if these rules do go into effect. I imagine there will be more than a few lawyers who will eventually advise an ESD on large pharma cases. They’ll likely be cases that are clearly well beyond the prior art, but be that as it may, they will exist, because those companies will still want 1000 claims for an invention.
Oh, and guys we were talking about the cost of examining an application awhile back. I just found out that the STIC database searches that I can and do request on a whim in cases that involve chemical compounds can easily cost 1000$ for a 10 second search. One claim, 1000$ for a simple 10 second database search on a compound. Imagine a claim with more than a few compounds.
I should add, the searcher messed up the initial search, so we did another, bam, 2k$ for 20 seconds of searching, one application.
19
From :Examiner 6K” to “E6k” to 6k to 6?
???…???…???, What is going on…
18
“Toupin = 6”
As Slashdot says, “+5 Insightful.”
I might have added, “6 = Toupin, Toupin’s wife, Toupin’s mom, Toupin’s clerk?, etc.”
Anyone else expect a quick, short opinion? Early Christmas present?
17
“Toupin = 6”
I think Malcolm is onto something with this observation.
16
“Can someone please post who the judges were? Thanks”
Prost, Rader and Bryson. While this panel dunked Tupin in a “blood-bath,” I can only wonder what it would have been like with someone like Michel, Newman or even Lourie.
15
“Can someone please post who the judges were”
Bryson, Prost and Rader.
14
“They established right after he made that comment that he was referring to some doctrine of retroactivity not being applicable, not that they were not retroactive.”
He said the doctrine of retroactivity did not apply because the rules had no retroactive effect. Like I said, I was impressed he could make such a silly argument with a straight face.
“For starters he has a better understanding of the law than the majority of the lawyers that were present there.”
And you know this, how?
“That in an of itself should probably carry the day”
He probably should have argued that. He had a better chance of convincing Rader, Bryson and Prost with that than the silly arguments he did make.
If Mr. Toupin were not such bully with his “These rules are going into effect whether the patent bar likes it or not” attitude, I might have felt sorry for him being embarrassed in front of the whole court room.
Payback’s a …
13
As I predicted, the panel started pounding Toupin right from the outset. This oral argument alone also confirms my prediction that this Federal Circuit panel is going to affirm Cacheris’ decision, and toss this Rule package. The only question is how much credibility the USPTO will retain with the Federal Circuit after the “smoke clears” on this case.
12
Toupin = 6
11
Ok, having listened to the entire argument, Mr. Toupin (government’s lawyer) was clearly the least prepared, least eloquent, and least persuasive. 6’s argument that “he has a better understanding of the law than the majority of the lawyers that were present there” is pretty much unknowable since we have no way of knowing the skill of the other lawyers in the room. The judges did seem to be on top of their game and so did the other advocates representing the appellants.
Also, 6 is correct that “they established right after [Mr. Toupin] made that comment that he was referring to some doctrine of retroactivity not being applicable.” But, this still clearly missed the point since “responding” will still result in filing the “expedited SUICIDE document.” That’s the hilarious part. True, it doesn’t automatically disqualify those applications, but it will have the same effect. Clearly not directly on point (and probably why it was mentioned in a sentence), but dang close.
10
Can someone please post who the judges were? Thanks.
9
“One of Mr. Toupin’s more hilarious explanations was that the rules are not retroactive because applicants will be given an opportunity to comply with the new rules. So the fact that you filed the app 2 years ago with 50 claims fully expecting an examination, but now you’re not going to get one unless you file an ESD is not retroactive. His ability to argue that nonsense with a straight face was impressive.”
They established right after he made that comment that he was referring to some doctrine of retroactivity not being applicable, not that they were not retroactive.
8
“I’ll bite: Why would he electronic companies want him as a lawyer, either?”
For starters he has a better understanding of the law than the majority of the lawyers that were present there. That in an of itself should probably carry the day, but failing that, maybe he’s really good looking?
7
“I suspect that the reason there was no real lawyer on the gov’t side (Dept of Justice) at the Federal Circuit today is because DOJ was unwilling to defend the PTO.”
I don’t think any of the career folks over at DOJ wanted this sure fire loser on their resume.
One of Mr. Toupin’s more hilarious explanations was that the rules are not retroactive because applicants will be given an opportunity to comply with the new rules. So the fact that you filed the app 2 years ago with 50 claims fully expecting an examination, but now you’re not going to get one unless you file an ESD is not retroactive. His ability to argue that nonsense with a straight face was impressive.
6
I’ve been in a couple conversations with Mr. Toupin. He is clearly the second least knowledgeable lawyer (above a 3rd year), or else shamelessly willing to say things that he knows are not true, or (most charitably) most willing to say things for which he has no basis, of any lawyer I’ve EVER met. (The top entry on that list is John Love, Deputy Comm’r for examination policy.)
The PTO’s legal competence was on full display again today.
I suspect that the reason there was no real lawyer on the gov’t side (Dept of Justice) at the Federal Circuit today is because DOJ was unwilling to defend the PTO.
5
I’ll bite: Why would he electronic companies want him as a lawyer, either?
4
After discussing the risk of inequitable conduct, the judge asked whether the lawyer would advise a pharma company that they should file more than 25 claims and supplying all the additional information (also asking about risking multiple applications). Lawyer answered, “yes, I would.”
Judge: “I bet you’re not going to be hired by very many pharma companies.”
…
“I think you just sent yourself to the electronic companies.”
HILARIOUS!
3
downloading… fingers crossing… come on GSK, be persuasive!
does anyone else here “Tafas v. Dudas” as “Tappas v. Doodies?”
2
Saweet
1
I think I shall enjoy a nice single malt scotch tonight while enjoying the “lulz” (as our esteemed colleague 6k would say) no doubt contained in that mp3 file.
“And that’s why they win. Substantive effects of procedural rules don’t make them substantive. No matter how much you really really want them to.”
If I say it often enough, I’ll believe it.
If I say it often enough, I’ll believe it.
If I say it often enough, I’ll believe it.
If I say it often enough, I’ll believe it.
If I say it often enough, I’ll believe it.
Pass me another drink.
“but B has to deal with the new rules and cannot get a patent, B loses.”
Dealing with the new rules means he cannot get a patent? W T F? Where does that come from? If he has a valid claim to the species and claims it then he can certainly get a patent on it. It only takes one claim.
“If you “F” everyone you really hurt innovation across the board.”
Everyone’s getting fed a bit by the new rules. Some more than others. As to the small corp I fail to see why making them compete with the big dogs is out of the ordinary. They’ll have to judge when to file just like the big guys.
“When you make it too difficult for small and mid-sized companies to acquire patents on their technology (or impossible),”
How do the new rules make it difficult to claim what you want to protect? Answer: they don’t. You merely have some competition thrown in the mix as I just described.
“Second, less innovation hurts everyone. ”
We already know that innovation comes in two sizes. Worthless and worthwhile. The innovation that gets taken down by the new rules is likely to be 99% worthless. The one percent loss, meh, to make an omelet you have to…
“The big issue in the trial is whether the PTO can make substantive rules contrary to statute. ”
And that’s why they win. Substantive effects of procedural rules don’t make them substantive. No matter how much you really really want them to.
“It seems to me that some standard claim drafting perhaps backed up by an expert 132 declaration as to what the claim terms mean to a person of ordinary skill in the art would eliminate the ambiguity problem. I don’t see any real need for them to appeal this to the CAFC. Anyone disagree?”
I’m not sure which case you’re referring to (the BPAI case on another thread, perhaps?), but I’ll disagree anyway. If you’re going to file a 132 affidavit from an expert, you might as well ask the PTO to preemptively stamp “INVALID” on the face of the patent. In my experience, patent litigators LOVE 132 affidavits.
Getting back to the subject at hand, much as I would like to pile on here, the facts of this case look complicated and a careful analysis of the decision in light of the prosecution history etc. would be needed to really figure out what is going on. I think I will save that until I get a rejection that cites this.
In the meantime, I wonder how important these particular claims are to the applicant, Seiko Epson. It seems to me that some standard claim drafting perhaps backed up by an expert 132 declaration as to what the claim terms mean to a person of ordinary skill in the art would eliminate the ambiguity problem. I don’t see any real need for them to appeal this to the CAFC.
Anyone disagree?
Rules? We don’t need no stinkin rules.
6K still doesn’t seem to understand the importance of patent protection, for both pharmaceutical companies that have millions of dollars invested in research and for smaller companies.
When you make it too difficult for small and mid-sized companies to acquire patents on their technology (or impossible), they may end up out of business. Little Corp cannot compete with Big Corp if Big Corp can reproduce Little Corp’s products with impunity.
“If the filing practice fs you then it also will f your competitor” 6
6: two problems with your argument
(a) present applications have to compete against previous applications. e.g. A files a very broad application directed to a genus. B identifies a valuable species within the genus Since neither A nor B can practice the invention on the species, they will have to come to a deal. However, if A files first under the old rules but B has to deal with the new rules and cannot get a patent, B loses. Thus, the temporal distinction hurts B and helps A.
(b) If you “F” everyone you really hurt innovation across the board. First, you hurt small companies that rely heavily on IP rights in favor of big companies. Wonder why are the big software companies in favor of the rules?
Second, less innovation hurts everyone. A lot of drugs are invented by small players, universities etc, and then go to big pharma for their later development.
(c) The big issue in the trial is whether the PTO can make substantive rules contrary to statute. The fact that the PTO might want to make such rules does not mean that they have the right to do so: even really really wanting it doesnt get you the pony.
“These are two necessarily contrary statements.”
What’s contrary about them? They’re on two seperate aspects of the same issue.
“Your ignorance is amazing. That’s too late in the game. Why would you spend millions upon millions of dollars on clinical trials if you have no chance of a patent right. You can’t recoup any research costs. ”
My ignorance? Lol, no, I’m looking beyond the surface of the issue that you can’t seem to get past. Look at it this way. First ask yourself, why is it too late in the game? Why do you have no chance at a patent right? Because someone else filed first I’m assuming is what you’re talking about, or perhaps a publication came out. Assuming we’re talking about them filing first, then they’re in the same boat as you are. They will have filed too soon and won’t be able to recoup the costs. They would stand to gain nothing from doing so, so they’ll wait to file also. Then it boils down to who’s willing to disclose first.
“No one is asking for 10,000 claims.”
No, they’re asking for infinite claims. And I saw an app with 6k the other day, I’d bet there is someone with 10k claims.
“e6k- I might suggest that you use non-pharma examples/hypotheticals when attacking the patent system and current patent practice.”
I’m hardly attacking it, what they’re doing is fine atm. But if the rules go into effect then I’m saying that the world will not end, and neither will big pharma.
I should state:
Here is the issue. If the rules go into effect then it is hard to know what to claim in your ~75 alloted claims at the PREFERRED time of filing/prosecuting in pharma cases. This is understandable. However, there is nobody making you file then. There is nobody making your competitors file then. If the filing practice fs you then it also will f your competitor. So neither of you will want to file. It then becomes a game of who gives in and files and accepts a “shorter” patent life in exchange for the exclusive right. So what? The world doesn’t end, competition between firms doesn’t end. And if some boink in a University lab can and does come up with the same thing you just supposedly spent millions on, then maybe you shouldn’t have spent millions on it eh? Maybe you should have just waited for his paper to come out and called it a day. (LOL)
In any event, assuming it does take 10 years to get everything sorted out and ready for production. You get TWENTY. That’s a juicy 20 years. Not only do you get that, you get that with patent term restoration. 20-10 still leaves you a juicy 10 years even if you get no restoration. What’s the big deal with that? Explain to me that.
e6k- I might suggest that you use non-pharma examples/hypotheticals when attacking the patent system and current patent practice.
“Or, they should simply file right before having to disclose to the FDA, not as soon as humanly possible as they are now.”
Your ignorance is amazing. That’s too late in the game. Why would you spend millions upon millions of dollars on clinical trials if you have no chance of a patent right. You can’t recoup any research costs. The FDA oversight….just a little, tiny oversight.
“If your product is such that people can copy it from just getting their hands on one… they buy, then tough cookies, maybe you should have filed for a patent on it before you went to market.”
AND
“then the whole issue seems to boil down to them filing too soon because they know that other companies are out there that might beat them to the punch.”
Talk about throwing it to the wall and seeing if something sticks. These are two necessarily contrary statements. I also think you are confusing patentability with the FDA approval process. The nature of the pharma industry is that is takes a good 10 years or so, and sometimes more depending upon the therapy, to identify a species that might come to market from the genus or sub-genus you discover AFTER you do a series of expreiments that actually demonstrate patentability.
This is all confounded by academics who are often publishing in the same gamespace because their jobs depend upon the number of publications they have. The art in the space is highly dense and complex.
The whole point is that the industry is nothing like any other industry.
No one is asking for 10,000 claims. They are asking for a rules package that doesn’t require clarivoyance to practice without committing inequitable conduct.
(you kinda missed that one – trade secret protection is not available for the active ingredient in FDA approved drugs)
Indeed. So basically that’s the issue. Well they should just take that up with the FDA. Or, they should simply file right before having to disclose to the FDA, not as soon as humanly possible as they are now.
“Also, while you may do your best to search the prior art before filing, you may miss one or two compounds that fall within the genus, so you want dependent claims to protect the most promising compounds in case the genus claim goes by the wayside. (That’s entry-level patent practitioner instruction, something you may get someday if you leave the patent office and try to contribute to society by protecting new and useful inventions.”
I already know that. I also know that drafting in such a manner does nothing other than scream out to everyone that you don’t really regard any of it as your invention, you just hope that something in there is. Pathetic. But setting such a problem under 112 aside for the moment lets move on.
“Here there’s a huge lag between the time you have to file for the patent and the time product comes to market. If a company can’t get at least 7 or 8 years of exclusivity, it’s probably not going to bother developing the drug. Dunno about you, 6, but I think new drug development is a good thing – plenty of diseases out there that haven’t been conquered yet, and some that we thought were conquered (like strep) that are making a comeback.”
I agree developing drugs is a good thing. But the thing that I don’t understand is the blatant contradiction you gloss over. Apparently there are usually firms competing for a given project that they’re both trying to scoop the other on. And there can be only one patent as you well know. At least for any one given claim, we’ll limit ourselves to that atm assuming that one of the claims is the most important. But in your scenario all those firms that don’t win the patent race tried to develop the drug and they didn’t get the patent. Sounds to me like competition drives those other companies to innovate, not the exclusivity since it’s obvious that only one of them is going to get it, but yet they both tried to get it, when they could have easily both diversified their interests so that they weren’t both working on the same project. Disregarding the competition, why not let the pharmas have some other sort of incentive that actually makes sense for all parties. Like allowing them to work together on a project and then just letting them price fix a bit to make up the difference that they would have made under the patent scheme. Then both of the companies might be able to benefit, the research might go quicker, they save themselves thousands or millions in legal fees, and the office isn’t inundated under 1000’s of worthless claims being filed just for the chance that one might be worth something.
“I’m 99.9% sure you won’t get it.”
There’s nothing more to “get”, there was only one thing you brought up that I hadn’t considered, the FDA. And I understand what you’re saying, and it’s just chasing your arse around the room by basing your whole premise on them needing the exclusivity. Are you trying to tell me that big pharma would simply disappear? Somehow I doubt big pharma would disappear, or substantially be diminished, after these rules. I think you have a case of the chicken littles if you say they would.
But, for the record, one other thing. Why not simply file applications such as app 1, genus, app 2 species 1-75, app 3 species 76-150 and simply avoid the whole issue? Unless of course the species are obvious over one another. If they’re not, simply tell us why they’re not and you can file as many related apps as you want to without having a problem with the presumption made about them.
Nice points, SJE. I wonder how sharply the number of bogus rejections would drop if examiners got docked some pay for making a baseless rejection. (But then who would decide?)
Good post, Time to Deep – thanks.
Re: 6’s comments regarding Pharma claims.
Convincing the PTO that a claim is enabled often requires post-filing evidence. i.e. the claim IS enabled as of filing, but the PTO doesnt believe you. If the PTO denies you the time to get such evidence, then it is denying you a substantive right under cover of procedure.
Another is that the PTO wants to instill a rule 11-like regime on prosecution, but only wants it to apply one way. This is completely unworkable with the present quality of PTO examination. Just this week I had to 1. explain to an examiner the difference between nanometers and micrometers (and which one is bigger), 2. and educate another examiner on 102(e) and 3. ask why new grounds of rejection are being raised on the original claims after 8 rounds of prosecution. If the PTO had been before a court, it would not have been allowed to make any of these rejections and would have been at least liable for sanctions.
Dennis – you imply that my refusal to pursue a court action to remedy the 1,000 dollar late fee is my way of showing that I believe the rule to be reasonable.
Truth is very simple. Always.
There are 10,000 wrongs, and my not addressing any one is no more an assertion of my agreement with the wrong as it is an assertion that the wrong does not exist.
Hoo boy 6, you’re right you don’t understand $quat about the pharma business. Not that that’s ever stopped you from running your mouth before. No time to write a treatise here, but just to touch on the major points:
Innovative pharma companies have to file first, to avoid being scooped by a competitor (that much you seem to have grasped), and to enable them to initiate clinical trials without fear of creating a 102 bar against themselves (you kinda missed that one – trade secret protection is not available for the active ingredient in FDA approved drugs). While there may be a few lead candidates out of several hundred compounds synthesized at the time of filing, it may turn out that a different one of the genus is the best compound, e.g. because it has the fewest side-effect. Anyway it won’t be until after years of clinical trials that you (a) know which one is going to be the commercial product and (b) get FDA approval to market your product. So to keep competitors at bay, you demonstrate and claim a genus that shows some particular utility, usually binding to some particular receptor at some particular affinity.
Also, while you may do your best to search the prior art before filing, you may miss one or two compounds that fall within the genus, so you want dependent claims to protect the most promising compounds in case the genus claim goes by the wayside. (That’s entry-level patent practitioner instruction, something you may get someday if you leave the patent office and try to contribute to society by protecting new and useful inventions.) Also, the original use a company is thinking of may not pan out, but a secondary use might (think sildenafil citrate, aka V*i*a*g*r*a, which was originally tested as heart medication), so you may need a later generation patent to cover the use that the FDA eventually approves. In the pharma field invention isn’t static, and the patent system (so far at least) allows applicants a certain amount of room to adapt as new information comes to light.
So to sum up, b/c of FDA regulation, the nature of the beast here is very different from working in silicon, where the product can come to market fast. Here there’s a huge lag between the time you have to file for the patent and the time product comes to market. If a company can’t get at least 7 or 8 years of exclusivity, it’s probably not going to bother developing the drug. Dunno about you, 6, but I think new drug development is a good thing – plenty of diseases out there that haven’t been conquered yet, and some that we thought were conquered (like strep) that are making a comeback.
And for the record, we need generic companies too to keep prices low when the exclusivity runs out (and to keep on the pressure to make sure the exclusivity given to the innovators isn’t too long).
Now that I’ve written the above, I’m not sure why – I’m 99.9% sure you won’t get it. Good thing you’re not in GAU 1600. And I suggest that if you don’t like the current pharma regime in the USA, which owes a tremendous amount to the patent system and Waxman-Hatch, you move to somewhere where the patent system is weaker or non-existent and see how well you fare – let me know how easily you can come by high quality meds in Botswana.
Hi five 6,
Re: “The thing that I do not understand…”
With all due respect, there are in fact myriad things you do not understand.
Me too. One difference is that I know it.
“In other words, why spend upwards of 500 million dollars or more in some cases to develop a product to be copied by generic companies in a year?”
The thing that I do not understand about the pharma claiming scheme is this. Given that they invent a genus compound that has several thousand/million species in it, along with the methods of using it, and maybe some apparati to use with it, why can they not merely claim the genus, and the method, and the apprati? Sounds like 3 claims to me. If the claim is valid then so be it. If it’s not because of art, then it’s not, so what? If the problem is that they’re wanting 10000 claims to cover what they’ve come up with in its entirety by spelling out each individual twist and turn in deps and more inds etc because they don’t know which of it will be useful then why don’t they just put off filing? If the problem here that what they’re doing is filing before they’ve actually found what is useful about the compound then the whole issue seems to boil down to them filing too soon because they know that other companies are out there that might beat them to the punch. If that is the case, then why are we so worried about them getting a patent if the industry doesn’t even need someone to get a patent in order to spur the research along?
You guys arguing that there is no reason to invest so much money when someone can just copy your work makes no sense. If you file a patent on what you want to protect and claim it properly and validly then you’re all set to go. Nobody is making them file for a patent, if they don’t want to then fine. If the issue is merely them wanting to file way early before they are even know why they want to protect something then that’s hardly an issue at all. If you don’t like how the patent system works, then don’t use it, go trade secret. If your product is such that people can copy it from just getting their hands on one they buy, then tough cookies, maybe you should have filed for a patent on it before you went to market or otherwise disclose it. If someone beat you to the punch patenting it, then tough cookies again, learn to keep secrets if they stole it from you, or else remind yourself that someone else came up with it the same as you did and merely excersized their statutory right.
“That’s funny, I noticed a whole sht ton of straws grasped in the above GSK/Tafas arguments portion of the above mp3.”
This is completely inaccurate. My impression of the GSK attorney argument was that it had very simple reasons for why the rules should be shot down. In fact, he tended to repeat himself a few times and did not really go off on any tangents even though the justices gave him ample opportunity to do so.
I think what was funny on many levels was Toupin on the “crippling effects” of the rule with respect to pharma companies. In other words, why spend upwards of 500 million dollars or more in some cases to develop a product to be copied by generic companies in a year? His response was tantamount to “we’ve considered them, trust us and the budgeting office…”
I mean, seriously. After all of this time you better have at least a half-baked, chirping point to throw back. I guess the answer was better than his response to the effect the rules may have on patent term restoration. Response? What is patent term restoration?
Let’s talk about real incentive for innovation in this country. What a joke.
“I don’t know anybody who thinks it’s reasonable to pay 1,000 for an “extension” of time during the statutory period. ”
Well then, you should challenge that “rule” or “fee” in court, it is obviously substantive. Before the rule it was a well settled policy, or even a well settled interpretation of a statute, that the applicant had a “right” to respond to an OA at any time during the 6 mo period. Thus, this rule runs counter to the existing policy/law that was in place at the time of its enactment. Also, I agree with you, it isn’t reasonable, but I do say that it was reasonable enough for the bar and clients to not have it struck down on fallacious grounds to prop up their biz.
I would spell out the basis for my opinions, but I’ve spent the better part of entire threads doing so already. Look through the archives, you’ll see me.
“There’s only one straw in the game ”
That’s funny, I noticed a whole sht ton of straws grasped in the above GSK/Tafas arguments portion of the above mp3.
“Just because you smack your wife and she doesn’t call the cops doesn’t mean you were reasonable. ”
“You” was obviously reasonable enough. To the wife, the fact that life will continue on without you in jail, and you staying with her were things she desired more than taking the trouble to call you out on an action that hurt her. Don’t get me wrong, I’m not excusing beating your wife or your husband, but people have to be responsible for their own circumstances. In the case of the abusive husband, you leave him, get a job if you have to. In the case of the 1000$ fee, the government setup a system to help you solve your own problem called the courts. I feel like I’m lecturing kindergarten.
Good question PL. I’m curious too.
slightly off topic, but since the above posters brought up the new BPAI rules, does anyone know of a sample appeal brief available online that is in accordance with the new rules? This would be super helpful since I am working on some appeal briefs now (and won’t have them filed in time).
Get real.
“The rules on the books have been agreed upon as being reasonable.”
Nonsense. Just because you smack your wife and she doesn’t call the cops doesn’t mean you were reasonable.
I don’t know anybody who thinks it’s reasonable to pay 1,000 for an “extension” of time during the statutory period.
“But since the bar takes issue with these, they’re grasping for every straw they can.”
Huh? There’s only one straw in the game – the only recourse was to file suit, so they did. They had one option, they took it.
“It does seem likely that the rules will not go into effect, but if the CAFC upholds the judgment about the rules being “substantive” it will be folly.”
Dennis, I’ve told you before, the whole system is screwed no matter what. At the end of the day, rule changes that don’t involve changing the reward system for Examiners won’t change anything.
6,
Your opinion is welcome, but your reasons for your opinion are even more welcome. Why don’t you support your argument with facts?
Otherwise, you sound like a disgruntled examiner aimlessly issuing rejections of claims without a Marzocchi to stand on.
“Imagine spending $10,000,000+ on an illegal rules package against the wishes of almost the entire patent bar that would have had a minimal effect on the backlog anyway. $10,000,000 could have hired 125+ examiners to help work on the backlog.”
Exactly.
Is this John Love’s baby? Nothing like handing the reigns of rule-making authority to the PTO-lifer. My favorite element of this whole package is the comment section of the Federal Register where the PTO has essentially non-responsive arguments after concerned groups ask questions like “wouldn’t implementation be cost prohibitive to applicants?”
incredible.
“Anyone know why the new BPAI rules aren’t viewed as being substantive as well”
They’re substantive, just like half of the other rules on the books. It just so happens this rule threatened the very existence of some of the bigger client’s patent game so everyone is making a bigger stink. Basically it’s a fight between the office and the bar/clients as to what is reasonable. The rules on the books have been agreed upon as being reasonable. But since the bar takes issue with these, they’re grasping for every straw they can and hoping the judiciary backs them up where they ought not. It does seem likely that the rules will not go into effect, but if the CAFC upholds the judgment about the rules being “substantive” it will be folly.
Anyone know why the new BPAI rules aren’t viewed as being substantive as well?
If so; why no fight over them?
Anyone know why the new BPAI rules aren’t viewed as being substantive as well?
If so; why no fight over them?
I was just curious about the responses of Toupin and Desmarais to the judges–why not give a short answer, followed by a description of the case law? (e.g., “No, it’s not; as this court held in…) All of the answers by both of these attorneys seemed to start with a discussion of a case and it wasn’t clear (at least to me) where they were going with it until later in the answer. Is this a tactic to delay being cut off by the judges or something? It seems to make the arguments being made much less clear, but perhaps that’s because I am less familiar with the cases being cited. But unless everyone was in perfect agreement with the interpretation of all the cases (which they clearly were not), this would seem to be an important technique to clarify exactly what point was being made.
Dear Mr. Obama:
Come January, please remove Mr. Doll, Dudas, + friends ASAP. If you weren’t convinced before, these oral arguments prove the stupidity of the current USPTO leadership. Imagine spending $10,000,000+ on an illegal rules package against the wishes of almost the entire patent bar that would have had a minimal effect on the backlog anyway. $10,000,000 could have hired 125+ examiners to help work on the backlog.
Toupin PWNED!
I almost feel kind of sorry for him. But not really
Don’t mention it. Glad to help.
For Bilski audio, enter in Caption “Bilski” on this link:
link to oralarguments.cafc.uscourts.gov
CAFC Bilski Opinion:
link to cafc.uscourts.gov
thanks — next step is to find an easy way to index … or someone else who’s already done so … I tried for Bilski’s and couldn’t find.
Yes:
link to cafc.uscourts.gov
Click “Audio of Oral Arguments”
You guys are tough! The Federal Circuit is no cake walk. The judges are very courteous and often brilliant … but it’s three often-brilliant minds against one, and they rarely let a presenter stick to the script, each line of questioning coming from a different direction.
It sure makes for good entertainment though 🙂
Are these audios available for any unsealed CAFC hearings ?
True, Toupin was not nearly as polished as the other more experienced appellate attorneys. However, I don’t believe the court was particularly concerned with the oral talents of the various mouthpieces. Based on the legal arguments presented, the PTO’s case was shot down several times by the court on many fronts. Too bad malicious prosecution does not apply in this context.
…I wonder, does 6 have two clones…
If 6 turns out to be 9, I don’t mind.
“From :Examiner 6K” to “E6k” to 6k to 6?
???…???…???, What is going on…” JK
Number 6 is “The Prisoner”
– he must be Patrick McGoohan, LOL!
I’m loving this mp3. The judges tore Toupin to pieces. 120 and 112 is getting down to the nub of the matter. They are pretty convincing in pointing out that the PTO are trying to change those sections of the statute.
Does this case even matter? It seems like much ado about a small thing
“Who is the government pigeon who negotiated the PTO’s contract with STIC?”
Apparently it’s the database that is charging us, the STIC people are just paid a salary. It’s the use of the database that is so expensive.
“For starters he has a better understanding of the law than the majority of the lawyers that were present there. That in an of itself should probably carry the day, but failing that, maybe he’s really good looking? ”
I was there and know many of the other lawyers who were present. If Mr. Toupin has a better understanding of the law than the majority of the lawyers there, he did a very poor job of demonstrating that knowledge.
Judge Rader appeared to be particularly skeptical of the PTO’s arguments (the looks on his face do not really come through in the mp3). I think that the Bogese argument is a loser based on the Judges’ questioning, and Rader seemed genuinely concerned about the practical effect of the ESD. Although I am very hesitant to make predictions based on the way the argument appeared to go (I have been WAY wrong before), it definitely looked bad for the PTO.
Toupin’s not that good looking either.
LOL. The lawyer for the PTO isn’t very smooth. I’ve heard law students doing better oral arguments.
Three cheers for Dr. Tafas and GSK and their lawyers, Kelley Drye and Kirkland & Ellis, who rode point on this case and beat back this outrageous power grab by the PTO!!!
“the STIC database searches that I can and do request on a whim in cases that involve chemical compounds can easily cost 1000$ for a 10 second search”
Who is the government pigeon who negotiated the PTO’s contract with STIC?
Ya mon, father xmas should lay the present on us!
“He said the doctrine of retroactivity did not apply because the rules had no retroactive effect. ”
I could write out a transcript but I cannot find any such a statement made by the man in the file above. He does say that the doctrine does not apply because the applicants have a chance to adjust the application to comply. In other words: They are retroactive, but the doctrine of retroactivity which might lead to the rules being held invalid does not apply to this situation because the applicants have a chance to comply with the rules. In other words, since every applicant has the ability to comply with the rules in every single case in existence then the doctrine does not apply.
There is nothing hard about stating what is simply a matter of fact and a legal determination based on that fact with a straight face.
“And you know this, how?”
First I assume you, one blogger lawyer that I know was going, and the 2 lawyers from the opposing side were the only lawyers in attendance. After that, it’s a simple analysis. 🙂
“While this panel dunked Tupin in a “blood-bath,” ”
I’m not sure where you get that impression from. The only thing that even could be imagined as having shown that the judges did not seriously consider everything he said was the part about sending himself to electronics, which while funny in the context, is pretty ridiculous if these rules do go into effect. I imagine there will be more than a few lawyers who will eventually advise an ESD on large pharma cases. They’ll likely be cases that are clearly well beyond the prior art, but be that as it may, they will exist, because those companies will still want 1000 claims for an invention.
Oh, and guys we were talking about the cost of examining an application awhile back. I just found out that the STIC database searches that I can and do request on a whim in cases that involve chemical compounds can easily cost 1000$ for a 10 second search. One claim, 1000$ for a simple 10 second database search on a compound. Imagine a claim with more than a few compounds.
I should add, the searcher messed up the initial search, so we did another, bam, 2k$ for 20 seconds of searching, one application.
From :Examiner 6K” to “E6k” to 6k to 6?
???…???…???, What is going on…
“Toupin = 6”
As Slashdot says, “+5 Insightful.”
I might have added, “6 = Toupin, Toupin’s wife, Toupin’s mom, Toupin’s clerk?, etc.”
Anyone else expect a quick, short opinion? Early Christmas present?
“Toupin = 6”
I think Malcolm is onto something with this observation.
“Can someone please post who the judges were? Thanks”
Prost, Rader and Bryson. While this panel dunked Tupin in a “blood-bath,” I can only wonder what it would have been like with someone like Michel, Newman or even Lourie.
“Can someone please post who the judges were”
Bryson, Prost and Rader.
“They established right after he made that comment that he was referring to some doctrine of retroactivity not being applicable, not that they were not retroactive.”
He said the doctrine of retroactivity did not apply because the rules had no retroactive effect. Like I said, I was impressed he could make such a silly argument with a straight face.
“For starters he has a better understanding of the law than the majority of the lawyers that were present there.”
And you know this, how?
“That in an of itself should probably carry the day”
He probably should have argued that. He had a better chance of convincing Rader, Bryson and Prost with that than the silly arguments he did make.
If Mr. Toupin were not such bully with his “These rules are going into effect whether the patent bar likes it or not” attitude, I might have felt sorry for him being embarrassed in front of the whole court room.
Payback’s a …
As I predicted, the panel started pounding Toupin right from the outset. This oral argument alone also confirms my prediction that this Federal Circuit panel is going to affirm Cacheris’ decision, and toss this Rule package. The only question is how much credibility the USPTO will retain with the Federal Circuit after the “smoke clears” on this case.
Toupin = 6
Ok, having listened to the entire argument, Mr. Toupin (government’s lawyer) was clearly the least prepared, least eloquent, and least persuasive. 6’s argument that “he has a better understanding of the law than the majority of the lawyers that were present there” is pretty much unknowable since we have no way of knowing the skill of the other lawyers in the room. The judges did seem to be on top of their game and so did the other advocates representing the appellants.
Also, 6 is correct that “they established right after [Mr. Toupin] made that comment that he was referring to some doctrine of retroactivity not being applicable.” But, this still clearly missed the point since “responding” will still result in filing the “expedited SUICIDE document.” That’s the hilarious part. True, it doesn’t automatically disqualify those applications, but it will have the same effect. Clearly not directly on point (and probably why it was mentioned in a sentence), but dang close.
Can someone please post who the judges were? Thanks.
“One of Mr. Toupin’s more hilarious explanations was that the rules are not retroactive because applicants will be given an opportunity to comply with the new rules. So the fact that you filed the app 2 years ago with 50 claims fully expecting an examination, but now you’re not going to get one unless you file an ESD is not retroactive. His ability to argue that nonsense with a straight face was impressive.”
They established right after he made that comment that he was referring to some doctrine of retroactivity not being applicable, not that they were not retroactive.
“I’ll bite: Why would he electronic companies want him as a lawyer, either?”
For starters he has a better understanding of the law than the majority of the lawyers that were present there. That in an of itself should probably carry the day, but failing that, maybe he’s really good looking?
“I suspect that the reason there was no real lawyer on the gov’t side (Dept of Justice) at the Federal Circuit today is because DOJ was unwilling to defend the PTO.”
I don’t think any of the career folks over at DOJ wanted this sure fire loser on their resume.
One of Mr. Toupin’s more hilarious explanations was that the rules are not retroactive because applicants will be given an opportunity to comply with the new rules. So the fact that you filed the app 2 years ago with 50 claims fully expecting an examination, but now you’re not going to get one unless you file an ESD is not retroactive. His ability to argue that nonsense with a straight face was impressive.
I’ve been in a couple conversations with Mr. Toupin. He is clearly the second least knowledgeable lawyer (above a 3rd year), or else shamelessly willing to say things that he knows are not true, or (most charitably) most willing to say things for which he has no basis, of any lawyer I’ve EVER met. (The top entry on that list is John Love, Deputy Comm’r for examination policy.)
The PTO’s legal competence was on full display again today.
I suspect that the reason there was no real lawyer on the gov’t side (Dept of Justice) at the Federal Circuit today is because DOJ was unwilling to defend the PTO.
I’ll bite: Why would he electronic companies want him as a lawyer, either?
After discussing the risk of inequitable conduct, the judge asked whether the lawyer would advise a pharma company that they should file more than 25 claims and supplying all the additional information (also asking about risking multiple applications). Lawyer answered, “yes, I would.”
Judge: “I bet you’re not going to be hired by very many pharma companies.”
…
“I think you just sent yourself to the electronic companies.”
HILARIOUS!
downloading… fingers crossing… come on GSK, be persuasive!
does anyone else here “Tafas v. Dudas” as “Tappas v. Doodies?”
Saweet
I think I shall enjoy a nice single malt scotch tonight while enjoying the “lulz” (as our esteemed colleague 6k would say) no doubt contained in that mp3 file.
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