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October 16, 2008

Let's Do It Our Way

The USPTO has filed a reply brief in appeal for its righteous battle to enact its Final Solution, changes limiting extravagance on claims and continuations. According to the brief, a rehash of earlier cogent and compelling arguments, the rules are consistent with the Patent Act, and are within the Office's rulemaking authority. If there is a difference between "substance" and "procedure," which the PTO does not perceive, the rules are merely procedural.

Here's a procedural tidbit: make an applicant search the prior art if s/he wants a lot of claims.

The statute is silent on searching, and thus the USPTO may fill the gap. Here, the Office is doing exactly that - promulgating a regulation for searching by an applicant because examiners make more errors as the number of claims increase. The requirement does not shift the examination burden.

That's right, requiring the applicant to search the prior art does not change the examination burden. Regardless of the prior art, the examiner still gets to "make more errors as the number of claims increase." No change, procedurally or substantially. Thus the above statement clarifies that applicant search fee for examination is merely procedural, enriching USPTO coffers with no change in examination quality.

Under the desired Final Solution, an applicant may have a procedural change of being required to search the prior art. There is nothing substantial about it. If an applicant doesn't find any invalidating art, the search had no substance. If an applicant finds invalidating prior art, the application had no substance. Either way, no substance.

We can all agree that the old ways are the best. And new ways are old ways if they're new in an old way, like having a federal agency tell you, peasant-citizen, about a few minor tweaks, how things ought to be, because, gosh, they're just here to help.

The cure for insomnia: read the brief. For those thirsting for more, but not willing to be bored silly, read Patent Docs.

Attitude inspired by that beacon of enlightenment, the delightful and refreshing Republican brain trust, Ms. Sarah Palin, whose existence on the Presidential ticket existentially poses the question: how fast can William F. Buckley spin in his grave?

Posted by Patent Hawk at October 16, 2008 2:21 PM | The Patent Office

Comments

Be careful what you wish for, PH.

Arti Rai is Obama's patent law adviser. Chris Sprigman is the other.

Here's some of Ms. Rai's finest work:

http://www.patentlyo.com/lawjournal/2007/11/the-gsk-case-an.html

Oh, and she's a signatory on the amicus in support of the PTO.
http://www.patentlyo.com/patent/lemley.pdf

And of course, she was on the brief of the 24 law professors in KSR:
http://www.patentlyo.com/patent/2005/05/supreme_court_p.html

Posted by: Anon Anon And On at October 17, 2008 5:06 AM

Thanks for the comment.

My reportage of the USPTO in this entry was entirely facetious. Wisdom is bounded but stupidity knows no limits.

I share your concerns about Obama’s lamentable choice of patent law advisors. The boy is going to need some schooling on this score.

Posted by: Patent Hawk at October 17, 2008 10:57 AM

"That's right, requiring the applicant to search the prior art does not change the examination burden."

"change" is not the same as "shifts". Look up the two words sometime hawk.

Of course it "changes" the burden of searching, but the burden of searching is only an addendum that others has added on to statutory "examination".

"the above statement clarifies that applicant search fee for examination is merely procedural, enriching USPTO coffers with no change in examination quality. "

As you yourself are aware a specific amount of $ will entitle you to a certain amount of time spent searching in the real world and I see no real reason that should not apply to the PTO.

"Either way, no substance."

That is funny, but I'm quite sure you're willfully ignoring the fact that the "procedure" in question may have substantive effects without turning a "procedural" rule that caused the shift in procedure into a "substantive" one.

"And new ways are old ways if they're new in an old way, like having a federal agency tell you, peasant-citizen, about a few minor tweaks, how things ought to be, because, gosh, they're just here to help."

Actually they're telling you how things are going to be, not necessarily how they ought to be. In fact, I'm pretty sure that Dudas himself would admit that in happy go phawk smiley unicorn land everyone ought have infinite claims and pay no fees to submit an application, as well as having a permanent continuation filed. Of course there ought to be no maintenance fee either.

Posted by: random at October 19, 2008 8:37 AM

Je sus, such bad grammar, that'll teach me to post after waking up.

Posted by: random at October 19, 2008 8:38 AM