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November 8, 2007

Not Appealing

Ruthlessly incompetent USPTO management continues to flummox the patent community with its illegal and outrageous rule-making. The latest episode is revising appeal rules. Public comments have been posted, none complimentary; worthwhile reading. But, however compelling, you can't clue the clueless. In other words, don't hold your breath that the patent agency won't proceed apace in yet another rules-from-fools folly.

David Boundy and Dean Alderucci of Canter Fitzgerald categorically lay out the problems -

1. Some of the proposed Appeal Rules place disproportionate burdens on appellants that undermine the statutory right to have an efficient, full and fair adjudication of patentability.

2. The Rules repeatedly set out a double standard, in which examiners are permitted to raise new grounds and adduce new evidence, while appellants’ rights to fully and fairly reply are cut off.

3. Some of the proposed Appeal Rules improperly shift the burden of proof or are otherwise “substantive,” and therefore exceed the authority of the Office. There are a number of other failures to comply with various rulemaking statutes and regulations.

4. The Proposed Appeal Rules introduce confusing and unnecessary new terminology for well established legal terms of art.

AIPLA, in a thoughtful missive, offers a sense of what really needs amending:

We recognize that the Board has neither jurisdiction nor responsibility for the work performed by patent examiners. However, until the PTO improves the work of examiners so that needless appeals to the Board are eliminated or substantially reduced, it is inappropriate to increase the burdens and costs to applicants of filing an appeal brief in an attempt to control the increasing number of ex parte appeals, particularly when more than half of the appeals never reach the Board.

Crucial reading: Ron Katznelson brilliantly unfurls a cogent and spirited analysis of the less-than-dire situation; with clear graphs, relying extensively upon USPTO data to catch the agency in its own web of deception.

This is remarkable because... an agency proposed to adopt regulations having a stated reason that is directly contradicted in its own publications a few months prior and even three weeks later.

Those who chimed in:

A. Intellectual Property Organizations and Government Agencies
  1. American Bar Association (ABA) [pdf]
  2. American Intellectual Property Law Association (AIPLA) [pdf]
  3. Bar Association District Columbia (BADC) [pdf]
  4. Intellectual Property Owners Association (IPO) [pdf]
  5. Minnesota Intellectual Property Law Association (MIPLA) [pdf]
  6. National Association of Patent Practitioners (NAPP) [pdf]
  7. Washington State Patent Law Association [doc]

B. Corporations and Associations

  1. 3M Innovative Properties Company (3M IPC) [pdf]
  2. Alkermes, Inc. [pdf]
  3. Amylin Pharmaceuticals, Inc. [pdf]
  4. BIOCOM [pdf]
  5. Cantor Fitzgerald L.P. [pdf]
  6. Ceres [pdf]
  7. Eastman Kodak Company [pdf]
  8. Eli Lilly and Company [pdf]
  9. IBM Corporation [doc]
  10. Intellectual Ventures (IV) [pdf]
  11. Microsoft Corporation [doc]
  12. Wyeth [doc]

C. Law Firms

  1. Adams Law Firm Co. [pdf]
  2. Greenblum & Bernstein, P.L.C. [pdf]

D. Individuals

  1. Aaronson, Larry [doc]
  2. Alstadt, Lynn, J. [doc]
  3. Baker, Daniel [doc]
  4. Calvert, Ian, A. [doc]
  5. Cermank, Adam, J. [doc]
  6. Dolce, Marcus, P. [pdf]
  7. Golladay, James, E., II [pdf]
  8. Haynes, Michael [pdf]
  9. Hoover, Allen, E. [doc]
  10. Hyatt, Gilbert P. (comments) [pdf]
  11. Hyatt, Gilbert P. (appendix) [pdf]
  12. Hyatt, Gilbert P. (comments) [pdf]
  13. Hyatt, Gilbert P. (appendix) [pdf]
  14. Hyatt, Gilbert P. [pdf]
  15. Jocke, Ralph, E. [pdf]
  16. Keegan, Robert, R. [doc]
  17. Katznelson, Ron, D. [pdf]
  18. Marshall, Bob [doc]
  19. Meirs, Raymond, C. Jr.. [doc]
  20. Miller, Jerry, A. [pdf]
  21. Moore, Steven, J. [doc]
  22. Moore, Steven, J. [doc]
  23. Mullen, James, J. [pdf]
  24. Murashige, Kate, H. [pdf]
  25. Paul, Scott, D. [pdf]
  26. Reeves, Nancy, L. [doc]
  27. Schideler, Blynn, L. [doc]
  28. Steinkraus, Walter, J. [pdf]
  29. Svensson, Leonard [pdf]

Posted by Patent Hawk at November 8, 2007 11:59 AM | The Patent Office


I haven't read all of the comments, but I must say those that I have read are excellent. David and Dean's from Cantor Fitzgerald are fabulous. Do yourself a favor and print out pages 76-80 of their (pdf) submission, it is a great discussion of the case law of "new grounds of rejection."

Ron Katznelson's arguments are spot on.

The suggestions from the Adams firm are mind altering. Serving the appeal brief on the Board so that the examiner can't pull the old "non-compliant" trick. That is beyond a phenomenal idea. I'm so jealous I didn't think of it.

The comments are almost universally negative, extremely cogent, and have absolute bedrock support in the law.

so what will PTO (mis)management do in light of these comments? My prediction? They'll change them some, and call whatever mishmash that results a logical outgrowth of the comments, and implement a slightly less inane version of the proposal.

It's on.

Posted by: JD at November 8, 2007 2:44 PM