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October 30, 2007

The Empire Strikes Back

Last episode, Luke Tafas and Obi Wan GlaxoSmithKline assaulted the examination death star, backed by legions of patent jedi. Now, Darth Dudas whips out a sputtering light saber in reply.

On November 1, 2007, the USPTO expects to implement rules aimed to improve the quality and efficiency of patent application examination, lead to higher quality patents, and reduce a growing backlog of applications that is crippling the Office. The rules are the product of extensive planning and development.

The patent office on why continuations are filed:

The growing number of continuing applications are attributable to a variety of factors, including: (1) applicants, such as Plaintiffs, using the availability of continuing applications to delay the conclusion of examination until they assess the commercial viability of inventions that may fall within the scope of yet-to-be-presented claims (2) applicants filing deficient initial applications and relying on the availability of an endless stream of continuing applications to work out issues of patentability; and (3) applicants filing literal or machine-translated documents as patent applications and using continuing applications to correct avoidable mistakes.

Reasons 2 and 3 are easily cast aside as §112 and §101 casualties. As to mining applications to draft claims with commercial gain in mind: gosh, what a concept! PTO management snags a clue as to why patents are filed in the first place.

The rational substitute for filing continuations: file a large number of claims to cover all bases; can't do that anymore without risking inequitable conduct, after the tremendous expense of scorched-earth prior art search and analysis. The PTO damns every path to claim complex inventions.

The PTO argues that the plaintiffs won't be irreparably harmed, whereas the agency has already shelled out "millions of dollars" (how?; however, foolishly); the public will be harmed if the new rules are enjoined, as it would "punish the many practitioners who have responsibly taken steps to prepare for the rules" - wasn't trying to comprehend the grotesque course ahead punishment enough?; and the case has no merit, as: "The USPTO clearly has authority to promulgate the new rules."

As Hal Wegner observed: "The argument may play well in Alexandria, but when the case goes across the river to the Federal Circuit, there are seemingly gaping holes ready for attack."

What is pathetic is the USPTO, flush with revenue from maintenance and examination fees, and able to set its own fees, sees fit to generate hostility between itself and its customer base, in an ill-conceived bid to cover management incompetence. The bottom line is that Darth Dudas and his generals want to sphincter applications, as they can't hire and retain staff.

Documents: PTO reply; Biotechnology Industry Organization in support; PTO opposition to AIPLA support; PTO reply to AIPLA brief; AIPLA response to PTO.

Posted by Patent Hawk at October 30, 2007 8:07 PM | The Patent Office


Darth DuDass, be prepared for an attack led by Yoda, his brother Ralph, and 1000 flaming Ewoks. It will begin at the crack of 10:00 AM. You still have time to get in your jabberwokie and split town. Take the other English major with you.

Posted by: The Lonemule at October 30, 2007 9:37 PM