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April 10, 2008

Is There An Echo In Here?

David Boundy, IP VP at Cantor Fitzgerald, burned the midnight oil to rail against USPTO rule changes, using the proposed Markush rule revision as a springboard. "The Markush Rule violates the Patent Act." Boundy thereupon listed further PTO legal transgressions for all its recent rule changes, insisting the PTO must start again from scratch. "Further action by the PTO is illegal until it has made some good faith attempt to comply with the law."

Boundy chronicles the typical quality of Bush administration appointees -

The reasons that the PTO has lost the ability to build consensus, or even to follow the law, relates to past conduct by senior PTO management.

In April 2002 that the Office proposed an exponentially-escalating fee structure that had nothing to do with average cost, but was instead expressly stated to be a punitive measure directed to "modifying applicant behavior." The patent community saw this as an expression of hostility by the PTO to the characteristics that make strong patents.

In the 2006-07 rulemakings, the PTO illegally hid all of its underlying data, information, computer analyses, etc. from the public, from OMB, and from SBA.21 The public presentations by senior PTO officials confirmed only that the PTO had no understanding of the patent system. When the PTO was asked by FOIA to justify its statements, the PTO stonewalled. When the PTO produced its documents in the Tafas v. Dudas litigation, the absence of any consideration by the PTO of any factor economically-relevant to the public became starkly clear by the absolute absence of any analysis of economic effects on applicants in the administrative record.

Senior PTO management - Mr. Dudas, Ms. Peterlin, Mr. Doll, Mr. Love, Mr. Toupin, Mr. Bahr - is no longer trusted by the PTO's customer base. They have convinced the patent bar that they have no understanding of the patent system, are unwilling or unable to look at any effect that would occur outside the PTO's four walls, are unwilling to allow themselves to learn, and have too little respect for the rule of law to be able to avoid the legal fiasco that led to the PTO's defeat (and likely payment of non-capped Equal Access to Justice Act fees to plaintiff Tafas) in Tafas v. Dudas. The patent community has become convinced through the public statements of these particular individuals that they have too little understanding of the role patents play in the real economic world of business to be able to understand the consequences of their proposed rules.

What a shame David didn't say what he really thinks: "Imagine what this was like before I started toning it down."

Posted by Patent Hawk at April 10, 2008 1:21 AM | The Patent Office


Here's one example from the new Markush rules:

1) Rule 146(a) covers claims that are "directed to a single invention";
2) Rule 146(b) says such claims are restrictable by the USPTO;
3) 35 USC 121 authorizes the Director to restrict only applications having claims directed to two or more independent and distinct inventions: "If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions."

I think many of the new Rules coming from the PTO show either a lack of understanding of patent law, or an ends-justify-the-means type disregard for the rule of law.

ยง1.146 Requirement for an election of a single species in an application filed under 35 U.S.C.111(a).
(a)If one or more claims are directed to a single invention but encompass multiple disclosed and patentably distinct species,regardless of whether the claim uses alternative language,the examiner may require the applicant to elect one species that is disclosed in the application as filed for initial search and examination.
(b)The examiner may require the applicant to restrict any claim that was subject to an election requirement under paragraph (a)of this section to the one or more species that were searched and examined if any species encompassed by the claim is not patentable.

Posted by: NIPRA anonymous at April 10, 2008 2:22 AM

I had the pleasure of meeting David Boundy last October at the GSK hearing. He is a true champion of the law.

He is absolutely correct about senior PTO (mis)management. Nothing will improve until they are gone.

Posted by: JD at April 10, 2008 5:10 AM

Love the death card, lol. Let's deal it out.

Posted by: johng at April 10, 2008 5:57 AM

This sounds like an amalgamation of Greg A's venomous tirades and the nefarious Polecat amicus brief filed in support of Tafas, which was the most amazing piece of legal writing by a non-USSCt justice I've ever seen. Read like a criminal indictment of Dudas & Co.

Posted by: Babel Boy at April 10, 2008 10:19 AM