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October 29, 2007

Halloween

Patent prosecutors will be tricked or treated before All-hallow-even, as East Virginia Judge James Chacheris has scheduled a hearing Wednesday to hear GlaxoSmithKline's motion for an injunction against the USPTO's odious examination rules changes, the day before the rules are set to go into effect, establishing a pagan ritual of patent sacrifice, beginning All Hallows Day. The patent community cheers GSK in hopes of securing a temporary restraining order from Judge Chaceris, whose choice of hearing date intimates a just complaint.

Edward Pennington at Bingham McCutchen opined, "They make very, very good points. You're talking about a compelling mouthpiece, which in this case is a major company in the drug industry, and they rely heavily on the pseudo-monopoly that a patent would allow. I think this was probably the perfect plaintiff, if you will, for challenging the rules because of the complex nature of their prosecution task."

GSK in its complaint:

The PTO cannot bypass the political process by promulgating rules when Congress has not given the rulemaking authority to the PTO.

The final rules also pose an unconstitutional arbitrary and capricious regulatory taking of... patent and patent application property rights.

AIPLA in its amicus brief on behalf of the suit:

Indeed, they punish owners of patent applications who have relied upon existing law to secure protection for all the inventions disclosed (but not necessarily claimed) in their patent application. This reality applies across the spectrum of technologies. The new rules strip owners of the right to pursue additional applications, substituting options that are discretionary to the PTO as well as expensive and often impractical.

Michael Gollin of Venable chirped, "My clients and I are certainly rooting for the good guys in this one. You have a big inventor and a small inventor who are joined, and a lot of others who would like to join. They're all outraged, or at least concerned, by the new rules, and frankly it's because they make no sense on many different levels."

Dudas and Doll have already filed a business method application claiming "making no sense on many different levels." Ironically, under the new rules, continuation should be limited; but in reality, not making sense at the agency will only be limited by stopping the rule changes and getting rid of its "inventors" at the helm of the PTO. As Albert Einstein observed: "The difference between stupidity and genius is that genius has its limits."

The GSK suit was joined to that of inventor Triantafyllos Tafas, who filed October 5. GSK filed October 9. If successful, the suit would an unprecedented reversal, a true revenge of the patent jedi.

Previous Patent Prospector Coverage: October 11 (the GSK complaint); October 1 (inciting action).

Posted by Patent Hawk at October 29, 2007 10:21 PM | The Patent Office

Comments

There are some great videos of the former Deputy General Counsel of USPTO (when he still held the position)speaking as to basis for the rules. You should take a peak. Shows the arrogance of those on top. http://www.kelleydrye.com/news/press/0170

Posted by: Commenter at October 30, 2007 11:20 AM

From Hal Wegner:

When Glaxo comes up against the PTO in the Halloween hearing tomorrow, it will appear before Senior Judge James Cacheris, a thirty-six year veteran of the bench, all but the first ten years on the federal bench, including service as Chief Judge during the period 1991-1997.

According to Westlaw-reported cases, Judge Cacheris has decided four cases challenging the authority of the PTO in actions against the Commerce Department or the PTO: Plaintiffs are batting "ofers" -- zero for four.

Judge Cacheris is a distinguished 1960 graduate of the George Washington University Law School, one of many leaders in the area to have graduated from GW law.

Regards,
Hal

Posted by: Patent Hawk at October 30, 2007 11:42 AM

I just broke open a beer. I may even write 10 extra claims in the application in front of me, just for the hell of it (not really, but I feel like it)!

Posted by: johng at October 30, 2007 1:20 PM

This case will ultimately turn on the Federal Circuit's view of the world -- not Judge Cacheris.

Posted by: B. Ballwinder at October 30, 2007 2:52 PM