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October 18, 2007

Revenge of the Jedi

It is virtually impossible to find anyone outside the Patent Office who thinks the new rules on claims and continuations schedule to take effect on November 1, 2007, make any sense at all. The new rules are simply absurd. Not only do they limit the number of claims unless you want to file an Examination Support Document, but they also limit the number of continuations you can file and they are retroactive. On top of that there has been some evidence to suggest that the Patent Office started enforcing the new rules in mid October 2007, although they appear to have seen the error of their ways and have stopped such enforcement. Who could possibly think that any of this is fair?

Just stop and think what patent practice will be like with new rules relating to claims and continuations, new IDS rules, new appeals rules and new Markush rules. It seems that the pharma industry will be hardest hit, but when was the last time anyone has seen a software patent with fewer than 25 claims? And how many software companies are going to want to file an ESD? The fact of the matter is that these new rules are not only going to affect pharma, they are going to affect everyone, whether individual inventor, small business, small cap, large cap or Fortune 500. I know that we all have our own lives and problems, and getting involved in the fight of another is by many seen to just be looking for unnecessary problems, but this is not GlaxoSmithKline's fight. It is OUR fight!

GlaxoSmithKline has filed a motion requesting a TRO and Preliminary Injunction [stories on: Patent Prospector; IP Watchdog]. The Patent Office is already playing hardball by seeking to postpone the hearing until the eve of enforcement of the new rules. Perhaps this is an honest request, but it certainly seems to me to be calculated to limit, or effectively prevent, any appeal to the Federal Circuit in the event the district court does not issue a favorable ruling and at least temporarily prevent enforcement of the new rules.

In the best of circumstances a request for a TRO and Preliminary Injunction does not have great odds in succeeding. Add to the fact that the Patent Office (i.e., the federal goverment) is the Defendant and the odds have to decrease. We do, however, seem to have "right" on our side, at least in terms of the standard for preliminary relief. Can you imagine the chaos that would ensue if the rules go into effect and then are overturned completely or even in part? That has to mean GlaxoSmithKline will prevail, right? Not necessarily.

If you were the district court judge and you have only one company telling you that the rules are bad, not within the power of the Patent Office and need to be enjoined that is one thing, but if you had multiple companies, bar associations, law school professors and industry organizations agreeing that would be quite another thing. If we all do agree with GlaxoSmithKline, and we all wish for relief, then we all need to do something! John White suggests that you file your own lawsuit or seek to perhaps join the GlaxoSmithKline lawsuit. That is certainly fine advice, and one way to move forward, but we need to more immediately support and help GlaxoSmithKline.

Perhaps the best way to help the cause most immediately will be to file a motion with the district court requesting permission to file an amicus brief on behalf of GlaxoSmithKline, and then submit the brief with enough time for it to be considered by the court. If you are a company with a patent line item in your budget then you really need to call your patent law firm of choice today and request that they prepare and file a well reasoned amicus brief on behalf of GlaxoSmithKline, to be filed in the Eastern District of Virginia. Spending some of your patent budget for this cause will pay dividends later if the suit is successful. Trust me, you don't want to be passive and wait for the rules to be thrust upon you. Stand up and be heard! If the Patent Office gets away with this one what do you think future rulemaking will look like? I can't even bear to think about it.

It is time for us all to stand up and take the fight to the Patent Office. They are supposed to be there for us, to help innovation, foster invention and grant rights, all of which they seem to have lost interest in doing.

Posted by Gene Quinn at October 18, 2007 10:54 AM | The Patent Office


As an examiner inside the PTO bunker, I can tell you that the started going through our dockets for enforcement of the 5-25 rule on Monday, October 15th. It might have been done earlier than that date but that was when I first noticed that my docket was looking rather threadbare as all the large-claim applications had been culled.

Posted by: Moose at October 18, 2007 12:04 PM

And I'll bet that you hardly wait for the USPTO disciplinary sanctions to start issuing for failure to comply with these new procedureal rules, as described in "TGIF for the New Ethics of Procedural Compliance at the USPTO" at http://ip-updates.blogspot.com/2007/10/new-ethics-of-rule-compliance-at-uspto.html

Posted by: Bill Heinze at October 18, 2007 2:56 PM

When you draft your amicus briefs, please complain about the new covert rule-making paradigm hidden in the new rules.

Rule 104(a)(1) now allows the PTO effectively to make and enforce new rules simply by amending the MPEP. Examination is now conducted with respect to the statutes, rules, and (here's the new part) other requirements. "Other requirements" is defined at FR page 46737:col 1 to mean the MPEP.

The PTO has thus boot-strapped the MPEP to the status of statute with respect to patent examination. They can change the 5/25 rule to a 2/10 rule merely by amending the MPEP after Nov 1.

This is in violation of the Due Process clause, the Patent Act, and the APA.

This is HUGE, and has been pretty much missed by the patent community.

Posted by: BabelBoy at October 19, 2007 9:54 AM