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March 20, 2009

Procedural Kowtow

The CAFC considers most everything a matter of law. Substance/facts are a legal inconvenience best boxed so that the entire container can be subject to rule-of-law disposition. With that mindset firmly entrenched, a confusion between substance and procedure is natural. So it was in Tafas v. Doll, formerly Tafas v. Dufas. At least the CAFC still ponders whether rules conflict with laws, though "consistency with the Patent Act is not the touchstone of whether the rules are procedural or substantive."

Triantafyllos Tafas and GlaxoSmithKline v. John J. Doll (CAFC 2008-1352)

Penned by Judge Prost, joined by Bryson, with Rader in substantial dissent.

The United States Patent and Trademark Office ("USPTO") appeals the April 1, 2008 decision of the United States District Court for the Eastern District of Virginia granting summary judgment that four recently promulgated rules exceed the scope of the USPTO's rulemaking authority. Because we conclude that the four rules are procedural, but that Rule 78 is inconsistent with 35 U.S.C. § 120, we affirm-in-part, vacate-in-part, and remand.

Rule 78 was a sphincter on continuations. Out it goes. But a similar rule, 114, on RCEs, passed muster.

The effect of [Rule 78] is to remove the application from the scope of 35 U.S.C. § 120, which would otherwise entitle the application to the filing date of the prior-filed application. Final Rule 114 provides for similar treatment of RCEs.

Because § 132(b) does not unambiguously require the USPTO to grant unlimited RCEs, we defer to the USPTO's interpretation. See Cooper Techs., 536 F.3d at 1337-38.

[B]ecause we defer to the USPTO's reasonable interpretation of the statute, we conclude that Final Rule 114 can properly be applied on a per family basis. See Cooper Techs., 536 F.3d at 1337-38.

Swatting Rule 78 hung on a single word: "shall."

Section 120 unambiguously states that an application that meets four requirements "shall have the same effect, as to such invention, as though filed on the date of the prior application." 35 U.S.C. § 120 (emphasis added). These requirements, which correspond to the bracketed enumeration above, include [1] the invention claimed in the application must have been properly disclosed in a prior-filed application; [2] the application must have been filed by inventor(s) named on the prior-filed application; [3] the application must have been "filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application"; and [4] the application must contain or be amended to contain a specific reference to the prior-filed application. The use of "shall" indicates that these are the exclusive requirements, and that all applications that meet these requirements must receive the benefit provided by § 120. See Transco Prods., Inc. v. Performance Contracting, Inc., 38 F.3d 551, 556 (Fed. Cir. 1994) ("The plain and unambiguous meaning of section 120 is that any application fulfilling the requirements therein 'shall have the same effect' as if filed on the date of the application upon which it claims priority."). Thus, Rule 78 is invalid because it attempts to add an additional requirement--that the application not contain amendments, arguments, or evidence that could have been submitted earlier--that is foreclosed by the statute. Because the statute is clear and unambiguous with respect to this issue, the USPTO's reliance on Chevron and Brand X is unavailing.

Judge Bryson, concurring, suggested to the PTO a way to impose Rule 78, limiting continuations, in a different manner:

The court today properly strikes down Final Rule 78 because its restrictions on co-pending, or parallel, continuations is contrary to the plain language of section 120, which provides that such a co-pending continuation "shall" be given the same priority date as the original application and which contains no restriction on the numbers of such applications that are permitted. That is not to say, however, that a revised rule that addressed only serial continuances and limited such continuances to only two--the first co-pending with the original application and the second co-pending with the first--would be struck down as reflecting an impermissible interpretation of section 120.

Two other rules, 75 and 265, put more work on an applicant that wanted more claims than the nominal 20. The workload was equivalent to that for an accelerated examination (AE), which is much more than an examiner does during a typical examination.

The two other rules, Final Rule 75 and Final Rule 265, are intended to address the USPTO's difficulty in examining applications that contain a large number of claims. 72 Fed. Reg. at 46,721. Final Rule 75 requires an applicant who submits either more than five independent claims or twenty-five total claims to provide the examiner with information in an examination support document ("ESD"). 37 C.F.R. § 1.75(b)(1). The requirements for ESDs are set forth in Final Rule 265. To comply with Final Rule 265, an applicant must conduct a preexamination prior art search, provide a list of the most relevant references, identify which limitations are disclosed by each reference, explain how each independent claim is patentable over the references, and show where in the specification each limitation is disclosed in accordance with 35 U.S.C. § 112, ¶ 1. Id. § 1.265(a).

The district court had agreed with Tafas, who had in his peanut gallery every patent prosecutor in the land.

The district court agreed with Appellees that the Final Rules were "substantive rules that change existing law and alter the rights of applicants such as [Appellees] under the Patent Act." Tafas v. Dudas, 541 F. Supp. 2d 805, 814 (E.D. Va. 2008) ("Tafas II"). Specifically, the district court found that the Final Rules created limits on continuation applications, RCEs, and claims that were inconsistent with several sections of the Patent Act, as well as precedent from this court and its predecessor, the Court of Customs and Patent Appeals. The district court concluded that because the USPTO lacks substantive rulemaking authority under Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1550 (Fed. Cir. 1996), the Final Rules exceed the USPTO's statutory jurisdiction in violation of 5 U.S.C. § 706(2). Tafas II, 541 F. Supp. 2d at 814. Accordingly, the district court granted Appellees' motion for summary judgment that the Final Rules are invalid.

The CAFC on whether substance/procedure is just splitting hairs -

We agree with the district court that § 2(b)(2) "does not vest the USPTO with any general substantive rulemaking power." Tafas II, 541 F. Supp. 2d at 811... Accordingly, we must reject the USPTO's argument that the substantive/procedural distinction is immaterial in this case.

The PTO had argued the Chevron deference, which is that: "[a] court is indeed obligated to give deference to an agency acting within its scope of responsibility..."

We are not persuaded by the USPTO's arguments in this case that Chevron deference should be extended to the issue of whether § 2(b)(2) provides substantive rulemaking authority.

Now to this ruling's confusion between procedure and substance. The decision chews through the landscape of precedence before hitting the rock it looks under.

Substantive rules certainly "affect individual rights and obligations," but that inquiry does not necessarily distinguish most procedural requirements, which will also "affect individual rights and obligations."

The effect of a rule, therefore, says nothing about whether it is substantial. Don't think about that too much. It'll only hurt your head. The CAFC is a portal to a rarified universe, where cause and effect are so intertwined as to be irrelevant, and where the rules of mundane logic and reason don't apply. With that, out went a truckload of case law baggage.

We are most persuaded in this case by the D.C. Circuit's approach in JEM. At issue in that case were "hard look" rules adopted by the Federal Communications Commission ("FCC") in response to a significant number of "carelessly prepared and speculative applications" for broadcasting licenses. 22 F.3d at 327. Under those rules, applications that either failed to include necessary information or contained incorrect or inconsistent information that could not be "resolved within the confines of the application and with a high degree of confidence" were dismissed with no opportunity to cure the defect. Id. at 322. The D.C. Circuit rejected JEM's contention that the rules were substantive because they "deprive[d] license applicants of the opportunity to correct errors or defects in their filings." Id. at 327. In doing so, the court noted that a "critical feature of the procedural exception [in section 553 of the APA] is that it covers agency actions that do not themselves alter the rights or interests of parties, although [they] may alter the manner in which the parties present themselves or their viewpoints to the agency." Id. at 326 (emphasis added) (quotation marks omitted). The "critical fact" that was "fatal to JEM's claim," the court held, was that the "hard look" rules "did not change the substantive standards by which the FCC evaluates license applications." Id. at 327. The court recognized that the rules could result in the loss of substantive rights, but found that they were nonetheless procedural because they did not "foreclose effective opportunity to make one's case on the merits." Id. at 327-28 (quoting Lamoille Valley R.R. Co. v. Interstate Commerce Comm'n, 711 F.2d 295, 328 (D.C. Cir. 1983)).

Well, that's clear now. One can readily understand why a fish needs a bicycle. Substance is where supplicants must "alter the manner in which" they "present themselves or their viewpoints" to a government agency. It's not in the what-how, it's in the kowtow. Otherwise, it's all procedural.

The CAFC panel is cautious not to provide guidance, because that could be substantial, altering the manner....

While we do not purport to set forth a definitive rule for distinguishing between substance and procedure in this case, we conclude that the Final Rules challenged in this case are procedural. In essence, they govern the timing of and materials that must be submitted with patent applications. The Final Rules may "alter the manner in which the parties present . . . their viewpoints" to the USPTO, but they do not, on their face, "foreclose effective opportunity" to present patent applications for examination. JEM, 22 F.3d at 326, 328.

So, barring that limiting continuations goes against statute, one government body watches the back of another. Long live the Chevron deference.

[T]he USPTO's interpretations of statutes that pertain to the USPTO's delegated authority are entitled to Chevron deference.

Because each of the rules is procedural, we must, as discussed above, give Chevron deference to the USPTO's interpretation of the provisions of the Patent Act that relate to "proceedings in the Office." Cooper Techs., 536 F.3d at 1337.

Try to whiff logic here - as time schedules are procedural, requirement for timely comprehensive response is procedural, so any rule in that realm is procedural.

Final Rules 78 and 114 provide requirements for when continuation applications will be accepted and RCEs will be granted. The D.C. Circuit has recognized time schedules as being "definitely at the procedural end of a spectrum running from 'procedural' to 'substantive.'" Lamoille, 711 F.2d at 328. Applicants who include in each continuation application all amendments, arguments, and evidence available at the time of filing will not be limited by Final Rule 78. Similarly, applicants who diligently present all of their amendments, arguments, and evidence as soon as possible during prosecution will be granted as many RCEs as they require. Thus, applications that are submitted in compliance with these timing requirements will be fully examined and given all of the benefits provided by the Patent Act. See JEM, 22 F.3d at 327. We do not believe that requiring applicants to raise all then-available amendments, arguments, and evidence by the second continuation application or the first RCE is so significant a burden that applicants will be effectively foreclosed from obtaining the patent rights to which they are entitled. See Lamoille, 711 F.2d at 328.

Adding to applicant burden is not substantial, as it affects not the manner of examination.

With respect to the ESD* requirement, Final Rules 75 and 265 require applicants who present more than five independent claims or twenty-five total claims to provide the examiner with information about the prior art and why they believe the claims are patentable over it. Once a satisfactory ESD is submitted, examination will proceed in precisely the same manner as it would have in the absence of the rule. It is important to note that an examiner is not permitted to substantively reject claims on grounds that the ESD did not prove that the claims are patentable. While an examiner is of course free to base a rejection on references disclosed in the ESD, he must nevertheless set forth his own prima facie case of unpatentability. Thus, while the rule may put a burden of production on the applicant, the examiner maintains the burden of persuasion.

*[E]xamination support document ("ESD"). 37 C.F.R. § 1.75(b)(1). The requirements for ESDs are set forth in Final Rule 265. To comply with Final Rule 265, an applicant must conduct a preexamination prior art search, provide a list of the most relevant references, identify which limitations are disclosed by each reference, explain how each independent claim is patentable over the references, and show where in the specification each limitation is disclosed in accordance with 35 U.S.C. § 112, ¶ 1. Id. § 1.265(a).

A procedural rule does not become substantive simply because it requires the applicant to exert more effort to comply, so long as the effort required is not so great that it effectively forecloses the possibility of compliance. See Lamoille, 711 F.2d at 328.

The concern about charges of inequitable conduct arising from an errant ESD were brushed aside as "too speculative to void the rules."

The panel left open Pandora's box for damning the rules.

This opinion does not decide any of the following issues: whether any of the Final Rules, either on their face or as applied in any specific circumstances, are arbitrary and capricious; whether any of the Final Rules conflict with the Patent Act in ways not specifically addressed in this opinion; whether all USPTO rulemaking is subject to notice and comment rulemaking under 5 U.S.C. § 553; whether any of the Final Rules are impermissibly vague; and whether the Final Rules are impermissibly retroactive.

Affirmed-in-part, vacated-in-part, and remanded.

If Judge Newman had been on the panel rather than Prost, a different ruling entirely. Judge Radar's dissent drives home that point: "[T]he Final Rules are substantive, not procedural."

Repeated rulings by the CAFC in recent years point to its instability and inanity as a locus of jurisprudence. Created in 1982 to end a contradictory cacophony of precedential rulings in patent law from disparate circuits, the net effect has been only centralizing the noise in the signal, not reducing it. This ruling is but one more chip on a pile.

Posted by Patent Hawk at March 20, 2009 1:45 PM | The Patent Office

Comments

"If Judge Newman had been on the panel rather than Prost, a different ruling entirely."

Yes, probably true, but also a rather useless hypothetical; just like saying that if Judge Moore had been on the panel instead of Judge Rader, there would likely be differences.

Posted by: TJ at March 20, 2009 9:26 PM

TJ,

You sadly miss the point: "the net effect has been only centralizing the noise in the signal, not reducing it."

Rather than a "rather useless hypothetical", consider the scholarly view of the self-defeating CAFC in its propagation of noise where one of its key purposes was to strengthen signal. Pointing out a glaring failure of purpose is hardly a useless hypothetical, unless that glaring failure reinforces ones own pre-conceived scholarly notion of what the law should be.


Also and perhaps more sad is the loss of appreciation of what is "substance" in view of what is "procedure". It appears that the least amount of "procedure" trumps the greater amount of "substance" and the word "reasonable" becomes "reasonable to the government body wanting the change", which as we have seen with the USPTO, is NOT the traditional view of "reasonable".


I'll step up on the soap box and posit that we now have eliminated one of the very few areas of the governemnt that was self sufficient (without diverson of funds). With greater costs (ESD's will add at least 5K to the front end of preparing an applications, and reduced certainty of obtaining a patent, and reduced certainty of the worth of obtained patents, the day will soon come when the Office will lament not having a backlog. Then the scholars can dream of ways to incentivize inventors to come back and use the patent system, or legislators will realize that despite the big money thrown at them from the big players, a patent system is more valuable when it is used, and the greater strides of innovation come from the little guys and not those who can pay more lobbyists.

Posted by: Noise above Law at March 21, 2009 5:44 AM

After reading Prost’s and Bryson’s opinions, may be we should believe now that the “moon is made of green cheese.” Their opinions are astonishing, distressing and naive in the extreme. How these 2 judges can rationally believe that these God-forsaken Rules are anything other than “substantive” and beyond the authority of the PTO enact is incredible, as well as ignore the gameship (and procedural abuse) engaged in by the PTO in enacting these Rules which is well-documented by David Boundy, Ron Katzelson, and others.

Judge Rader is the only one on this panel who realistically understands why these Rules are “substantive” and beyond the authority of the PTO to enact. We can only hope and pray that the Federal Circuit grants an en banc hearing, and affirms Judge Cacheris’ careful and well-reasoned opinion. Prost’s and Bryson’s opinions have badly shaken my faith in the the ability of the Federal Circuit to keep the PTO from misapplying and misusing its Rule-making authority. We may be heading for the “Dark Ages” in patent examination before the PTO.

For example, using Prost’s and Bryson’s naive and nonsencial logic, the PTO could just as easily turn the ESDs into mandatory Applicant Quality Submissions (AQSs) (the “Documents of Doom”) that would be required for all patent applications filed. If Prost’s and Bryson’s view is accepted by the rest of the Federal Circuit (despite Judge Rader’s protest), what’s to stop the PTO from enacting AQSs as “procedural,” and turning the PTO into “patent prosecution hell”?

Posted by: EG at March 21, 2009 8:09 AM

Noise above law, your personal attacks are frankly getting tiring.

1. Contrary to your impression of my "pre-conceived scholarly notions," I am not particularly invested in this opinion for its policy effects. I am skeptical that the number of claims should be limited. On the other hand, I had hoped that Rule 78 would be upheld. So the panel could not have reach a more different outcome than I had hoped.

2. We have no disagreement that the Federal Circuit has internal conflicts, and that such conflicts are, all else being equal, bad. But it is still a useless hypothetical to say that "If everyone on the court agreed with me, or if only the judges that agree with me sit on the panel, there would be no conflicts."

Posted by: TJ at March 21, 2009 1:38 PM

TJ,

My apologies if you perceive my attacks as personal - they are attacks on your stated positions on not on you personally. Maybe the sting is due to your positions not being as tenable as you wish, or your presentation not as convincing as you hope.

Your second point still misses the mark. It is not a matter of "no conflicts". It is a matter of the degree of the conflicts and the manner in which selective decisions (less than en banc) are so polarized and thus the function intended for the very creation of the CAFC misses the mark that is at issue. This missing the point may be what draws such criticism against "scholars" from those actually applying the law for a living.

Posted by: Noise above Law at March 21, 2009 3:28 PM

While many of us rightfully choke on our sour indignation at Bryson and Prost's screw-up of the substance v. procedure distinction as applied to the "big-ticket" rules under appeal -- 75, 78, 114, and 265 -- most have failed to appreciate that there is a bomb quietly buried in the new rules that is going to blow up in every patent prosecutor's face sooner or later. Bryson and Prost just lit the fuse when they gave the PTO carte blanc to re-write patent law by manipulating procedures.

The amendment to Rule 104(a) has been all but ignored by almost every pundit, litigation party, prosecutor, and judge looking at this mess. But the PTO has added three words to 104(a) that will turn the world of US patent law upside down. Those three words are "and other requirements."

Rule 104 now requires an application or patent under reexamination to be in compliance with "applicable statutes, rules, and other requirements."

"Statutes" means section 35 of the US Code. "Rules" means section 37 of the Code of Federal Regulations. What the frick does "and other requirements" mean????? It means the MPEP.

With this amended Rule 104(a), the PTO has silently elevated the MPEP to the status of law. Under the Bryson/Prost substance-procedure cold-cock combined with an amended 104(a), the PTO can now surreptitiously amend the MPEP all it wants with no public notice or comment, and those amendments will have the force of law with respect to patent applications and patents under reexamination.

Some blog commenters noted how the PTO quietly amended MPEP 2341 after KSR to remove the requirement that combined art collectively disclose all the claim elements. Most, however, never noticed. With the MPEP now becoming, essentially, surrogate law, it will be impossible to keep up with all of the PTO back-room rule-making.

As a hypothetical, under the new 104(a) the PTO could amend MPEP 704.11 to require an ESD for ALL applications. Overnight.

Rule 104(a), which we once affectionately thought of as the “compact prosecution” rule, now becomes the godless black-hole of limitless rule-making, virtually beyond the scope of review.

If the Bryson/Prost warped opinion of the distinction between substance and procedure is not reversed by an en banc CAFC or the USSCt, our collective goose is cooked. Just wait until Dudas gets back after Palin wins in 2012. . .

Posted by: Babel Boy at March 22, 2009 9:23 AM

Interesting point Babel Boy.

I'm getting OAs where there's "Official Notice" for at least one element of every independent and dependent claim (all 103 rejections).

Most frustrating.

And don't get me started on the ludicrous 101 rejections.

Add in the limits to RCEs -- and the effective limit to CONs with the 5/25 rule, what do you get?

Appeals, petitions, DC and Fed Cir appeals, and APA suits. And a few expensive, time-late patents...and a whole lot of new Trade Secret work.

Posted by: anon at March 22, 2009 10:57 AM

Thanks Babel Boy,

Where is the proposed amendment to Rule 104(a) in the rules package?

Did the amendment gather any comments as published in the Federal Register?

Of course, one interpretation of "other requirements" can mean the MPEP, but is the amended rule DOA since the rule is inherently vague, and thus capricious?


Did you notice as well the contradiction as presented by the majority opinion regarding Final Rule 265? Pages 28 - 30 make the point that the district court improperly relied on inequitable conduct cases to establish that the precedent of an applicant having no duty to search prior art is a current law holding, and these cases do not mean that the Office cannot create and impose such a new duty by regulation (a defacto admission that such requirement currently does not exist)?

Further, the majority at page 16 state "A procedural rule does not become substantive simply because it requires the applicant to exert more effort to comply..."

Yet the majority make the mistake of equating level of effort with type of effort. Rule 265 imposes BOTH a new level of effort as well as a new type of effort. The type of effort simply boils down to a new (legislative type) obligation that is plainly absent from the Law. While the judges say that they recognize a difference (page 16), the judges miss 37 CFR 1.105 (4):
"Any reply to a requirement for information
pursuant to this section that states either that the information required to be submitted is unknown to or is not readily available to the party or parties from which it was requested may be accepted as a complete reply."

Clearly, Rule 265 does not allow this option. In fact, and to add to the fire of your point about conflating MPEP-Law, Rule 265 mandates that applicants must conduct a search that meets the provisions of the MPEP (I wonder if that means the Office will open its seach capabilities to applicants).

So now, the ultimate burden of the applicant MUST be changed as the ESD is an avowed distinctly new regulated duty (absent from the Law as previously written) and this is a clear contradiction of the majority holding at page 30, since the effort required to comply with the change is not merely a degree of "more effort" but importantly also a type of effort change.

Posted by: Noise above Law at March 22, 2009 11:38 AM

"Judge Rader is the only one on this panel who realistically understands why these Rules are “substantive” and beyond the authority of the PTO to enact."

Judge Rader is about the only judge on the Federal Circuit who gets it.

"...personal attacks are tiring..."

Well TJ, frankly your naive takes on patent law are tiring. Why you would hope for passage of Rule 78 in its proposed form is beyond me. But then you also said that theories shouldn't be subjected to practical application for the purpose of testing their validity. Therefore in theory I will consider all of your posts utter nonsense. By your standard, there should be no need for me to read them to determine whether they make sense.

Posted by: Just sayin' at March 22, 2009 10:31 PM

Babel Boy,

Thanks for the reminder about the 104(a) "Trojan Horse" lurking in these Rules. For those who think that preventing the PTO from limiting continuations undermines, guess again. What's to stop the PTO from turning ESDs into Applicant Quality Submissions (AQSs) for all applications? Not pleasant to contemplate, and why Federal Circuit en banc ruling that follows Rader's lead is absolutely needed now.

Posted by: EG at March 23, 2009 4:52 AM

"Trojan Horse" -- absolutely perfect descriptive phrase, EG. "The 104 Trojan Horse." Love it. I forget: what happened to Troy? Raped and pillaged, wasn't it?

NAL, I totally agree -- but, hey, making the applicant jump through a square hoop rather than a round one is still not substantive, according to CAFC, because no rights are destroyed. Some inventors with huge wallets will find a way to get through the square hoop, so that proves that rights have not been per se destroyed.

If we've got CAFC judges that think this way, our problem is a whole lot bigger than a set of new rules, and I suspect that a lot of us are on the same page with you there.

Posted by: Babel Boy at March 23, 2009 7:53 AM

"I forget: what happened to Troy? Raped and pillaged, wasn't it?"

Babel Boy,

Totally destroyed by the Greeks according to the Illiad (along with the usual raping, pillaging and plundering). And glad you like the "Trojan Horse" avatar for 104(a).

Posted by: EG at March 23, 2009 10:01 AM

"Some inventors with huge wallets will find a way to get through the square hoop, so that proves that rights have not been per se destroyed. "

Says the man that charges 10k to respond to an OA. Work that will take him 8 hours.

Ok, maybe I exagerated.

By like 100 dollars.

Huge wallets! That's what you'll need!

Btw, it really is a shame that the few bad apples that wanted to overclaim as a starting point had to ruin the bunch. That's giving you the benefit of the doubt that it was a "few" rather than the whole bunch of bad apples except a few goods ones. Generally speaking, I do shed a tear that things got this bad.

Learn to file applications like men or pay the consequences.

Anyway, there's a chance that given the economic downturn and the slowing of filings already that the office won't implement the rules. A lot happened during the transition from TvDudas to TvDoll.

Posted by: 6000 at March 23, 2009 12:07 PM


EG wrote: "What's to stop the PTO from turning ESDs into Applicant Quality Submissions (AQSs) for all applications? Not pleasant to contemplate, and why Federal Circuit en banc ruling that follows Rader's lead is absolutely needed now."

Good point!

Posted by: patent prosecutor at March 23, 2009 4:31 PM

"Generally speaking, I do shed a tear that things got this bad"

6, those tears will keep coming, and you and yours will be first hand witnesses - hiring freeze, academy closing...and that sound of "reject, reject, reject" will be the responses to the wall of x-examiners looking for work in this economy.

An adage comes to mind - be careful of what you wish for, you just might get it.

Who needs so many examiners when the applicant has to conduct the thorough search and analysis? Heck, the SPE's can connect the dots, and do so much quicker. Pendency will drop, allowances will climb, the production system can remain unchanged and the union will be gutted. Even downstream litigation will be easier with estoppal effects and the soon to be unveiled rule of invalidating power prior art (hey - you're responsible for the search - you didn't find that art? too bad - patent invalid. Next.)

So 6, can we expect you to be a full time blogger when you move on to your next gig - perhaps until you land that next gig, in say two years?

Posted by: Noise above Law at March 23, 2009 5:34 PM

NAL, yeah but, . . .

Consider that all of those unemployed examiners like IQ=6 now become agents because they don't have to sit the bar exam. Not a single one of them could pass it, and not a single one has ever drafted a spec or claim, and yet, move over ... here they come.

I would love to know what the correlation coefficient is between idiocy quotient of applications/claims and whether or not the drafters passed the PTO bar exam.

Posted by: Babel Boy at March 24, 2009 8:42 AM

Another thought to consider. Having gotten over my initial (and very emotional) reaction to Judges Prost and Bryson having “precedential amnesia”, the fact is with the continuation limitation portion of this Rule package blocked by even the Federal Circuit, the PTO has no choice but to modify this package to take that block into account, or else the package won’t be internally consistent, and thus highly vulnerable to further legal attack. That being said, you have to wonder whether the PTO has the energy (and the backing of the current Obama administration) to continue this fight if Tafas/GSK pursue this suit (likely) in district court, including renewing the other arguments that Cacheris chose not to address.

Any reissuing of these Rules (Cacheris may even block any attempt to reissue these Rules until the current Tafas/GSK suit is over), which the PTO dare not do without offering “comment and notice” to the public, would create another “firestorm” of comments where those commenting will be watching the PTO carefully as to how they cross the “t”s and dot the “i”. Any slip here by the PTO will certainly draw fire, including potential additional suits (now that blood has already been drawn) challenging the reissued Rules. That potentially means a drawn out battle taking years to resolve, which leaves you wondering whether the Obama administration would expend its political capital to let such “blood letting” occur for an issue that didn’t start on its watch. More significantly, given the current budget crisis facing the PTO (and of its own making by causing the allowance rate to dive to close to 40%), one must wonder whether the PTO has the resources to push these Rule packages much farther.

Posted by: EG at March 24, 2009 8:46 AM

@ 6000:

"Learn to file applications like men or pay the consequences."

Ah, the good ol' PTO discrimination against women. Nice.

Posted by: broje at March 24, 2009 10:29 AM

@ patent prosecutor:

"EG wrote: 'What's to stop the PTO from turning ESDs into Applicant Quality Submissions (AQSs) for all applications? Not pleasant to contemplate, and why Federal Circuit en banc ruling that follows Rader's lead is absolutely needed now.'

Good point!"

Maybe they can just have ESD requirements for all Continuation applications. Or how about ESDs and a second set of eyes for all Continuation applications regardless of technological category. Or maybe just require it from all foreign applicants. Or better yet, ESDs and stricter standard of patentability for all female applicants.

Posted by: broje at March 24, 2009 10:33 AM

"So 6, can we expect you to be a full time blogger when you move on to your next gig - perhaps until you land that next gig, in say two years?"

Noise, my art isn't going anywhere any time soon. Neither are the patents apps filed in it. We're still stuck with doing date cases from 2006.

Here's the thing, if we don't hire anyone new, and attrition still takes people away, we'll be bleeding examiners at, sparingly speaking, 5%. How much did filings drop? Around 5%.

The very worst thing that will happen around here in the next three years will be overtime getting cut and possibly small furlows. That's the worst case scenario. Assuming the entire economy doesn't crash to 0 that is.

Posted by: 6000 at March 24, 2009 10:57 AM

6,

First, attrition rate for your unit is only 5% while for the Office in general its at >50% - that does not seem likely. What seems more likely is the 5% attrition you indicate is a complete fabrication. Shutting down the teaching perks should be a big indication that your "sparingly speaking" needs to be recalibrated.

Second, equating a 5% attrition rate with the level of filings drop and proclaiming "my art isn't going anywhere any time soon" ignores the changes in the "rest of world" and the velocity of those changes. Guess what - the Office isn't going to accept the "not going anywhere any time soon" answer. And they certainly are not going to accept examiners holding the position that nothing has (or will) change. As mentioned previously, the Office has won the war - significant changes in what applicant's must do and present have been determined to be procedural and within the rights of the Office to regulate. Your job has largely been eradicated. Please give a credible answer to the following question: Why bother with the crp union and their demands and the payment of overtime when the Office can make the applicants perform a detailed search and analysis for novelty and obviousness to MPEP standards (mayhap even charge the applicant for something the Office had to pay to do)?

Reject, reject, reject - a mantra you are used to - just time for a different perspective. And you thought punitive speeding tickets were the worst that you had to deal with - you better hope your pal Einstein can buy the drinks for awhile.

Babel Boy,
Scary proposition that x-examiners would not have to pass the patent bar in order to be practioners in the private (non-government) world. Are you sure they get such a free pass when they leave government service?

Posted by: Noise above Law at March 25, 2009 4:16 AM

NAL, yeah, I'm sure, unless the world has changed pretty dramatically in the last 10 years.

Used to be examiners got a free ride after 4 years, but I think somewhere along the line the PTO even dropped the 4 year qualifier.

6?

Posted by: Babel Boy at March 25, 2009 5:50 AM

Babel Boy, 6, anyone else in the know,

Interestingly, I have been able to find the following two items:

Item 1 dated 2002:

General Requirements Bulletin for admission to the
Examination for Registration to practice in Patent Cases before the United States Patent and Trademark Office - EXAM DATE: October 16, 2002

The regulations governing the recognition of individuals to practice before the United States
Patent and Trademark Office (USPTO or Office) in patent cases are set forth in 37 CFR §§ 10.5,
10.6 and 10.7.

REQUEST FOR WAIVER OF THE EXAMINATION FOR FORMER UNITED STATES PATENT AND TRADEMARK OFFICE EMPLOYEES
Former employees of the Office may request a waiver of the examination for registration pursuant to 37 CFR § 10.7(b). Waiver of the examination is discretionary. Former employees requesting waiver must meet the scientific and technical training requirements for admission to the registration examination.
Also, former employees applying for waiver must have served four or more years in the patent examining corps before terminating employment with the USPTO, as an examiner, supervisory patent examiner, or group director. (Note: Service in any other position and/or role in the USPTO does not qualify as the patent examining corps). Request the waiver by submitting the following documents:
· Application for Registration [Form PTO-158],
· Oath [Form PTO-1209]
· Undertaking Under 37 CFR § 10.10(b) [Form PTO-275] (if not previously completed)
· Registration fee of $100.00 as required by 37 CFR § 1.21(a)(2). Please make payment by check or money order payable to the Commissioner of the United States Patent and Trademark Office.
· Official Transcripts. Former employees may provide a copy of an official transcript on file in the United States Patent and Trademark Office’s Office of Human Resources. A USPTO OHR staff member must note that the original is in the former employee’s personnel file. Current employees of the USPTO may not be registered due to conflict of interest regulations.


Item 2 dated 2004:
INDIVIDUALS ENTITLED TO PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE
§ 10.5 [Reserved]
[Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985; removed and reserved, 69 FR 35427, June 24, 2004, effective July 26, 2004]
§ 10.6 [Reserved]
[Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 1985; paras. (d) & (e) removed 53 FR 38948, Oct. 4, 1988, effective Nov. 4, 1988; removed and reserved, 69 FR 35427, June 24, 2004, effective July 26, 2004]
§ 10.7 [Reserved]
[Added 50 FR 5174, Feb. 6, 1985, effective Mar. 8, 1985; removed and reserved, 69 FR 35427, June 24, 2004, effective July 26, 2004]

Posted by: Noise above Law at March 25, 2009 7:34 AM

"Scary proposition that x-examiners would not have to pass the patent bar in order to be practioners in the private (non-government) world. Are you sure they get such a free pass when they leave government service?"

The relevant rule is 37 CFR 11.7. Basically, the only ex-PTO employees who get a "free pass" to be agents are the legal types who were not part of the "Examining Corps" who "[p]rovided substantial guidance on patent examination policy, including the development of rule or procedure changes, patent examination guidelines, changes to the Manual of Patent Examining Procedure, development of training or testing materials for the patent examining corps, or development of materials for the registration examination or continuing legal education."

This would apparently include e.g. Dudas and Peterlin. Joy.

The Examiners apparently need to have obtained a "certificate of legal competency and negotiation authority", or have served 4 years prior to July 26, 2004.

11.7 CONSOLIDATED
(d) Waiver of the Registration Examination for Former Office Employees.
(1) Former patent examiners who by July 26, 2004, had not actively served four years in the patent examining corps, and were serving in the corps at the time of their separation. The OED Director may waive the taking of a registration exam-ination in the case of any individual meeting the requirements of paragraph (b)(1)(i)(C) of this section who is a former patent examiner but by July 26, 2004, had not served four years in the patent examining corps, if the individual demonstrates that he or she:
(i) Actively served in the patent examining corps of the Office and was serving in the corps at the time of separation from the Office,
(ii) Received a certificate of legal competency and negotiation authority;
(iii) After receiving the certificate of legal competency and negotiation authority, was rated at least fully successful in each quality performance element of his or her performance plan for the last two complete fiscal years as a patent examiner; and
(iv) Was not under an oral or written warning regarding the quality performance elements at the time of separation from the patent examining corps.
(2) Former patent examiners who on July 26, 2004, had actively served four years in the patent examining corps, and were serving in the corps at the time of their separation. The OED Director may waive the taking of a registration examination in the case of any individual meeting the requirements of paragraph (b)(1)(i)(C) of this section who is a former patent examiner and by July 26, 2004, had served four years in the patent examining corps, if the individual demonstrates that he or she:
(i) Actively served for at least four years in the patent examining corps of the Office by July 26, 2004, and was serving in the corps at the time of separation from the Office;
(ii) Was rated at least fully successful in each quality performance element of his or her performance plan for the last two complete fiscal years as a patent examiner in the Office; and
(iii) Was not under an oral or written warning regarding the quality performance elements at the time of separation from the patent examining corps.
(3) Certain former Office employees who were not serving in the patent examining corps upon their separation from the Office. The OED Director may waive the taking of a registration examination in the case of a former Office employee meeting the requirements of paragraph (b)(1)(i)(C) of this section who by petition demonstrates possession of the necessary legal qualifications to render to patent applicants and others valuable service and assistance in the preparation and prosecution of their applications or other business before the Office by showing that he or she has:
(i) Exhibited comprehensive knowledge of patent law equivalent to that shown by passing the registration examination as a result of having been in a position of responsibility in the Office in which he or she:
(A) Provided substantial guidance on patent examination policy, including the development of rule or procedure changes, patent examination guidelines, changes to the Manual of Patent Examining Procedure, development of training or testing materials for the patent examining corps, or development of materials for the registration examination or continuing legal education; or
(B) Represented the Office in patent cases before Federal courts; and
(ii) Was rated at least fully successful in each quality performance element of his or her performance plan for said position for the last two complete rating periods in the Office, and was not under an oral or written warning regarding such performance elements at the time of separation from the Office.
(4) To be eligible for consideration for waiver, an individual formerly employed by the Office within the scope of one of paragraphs (d)(1), (d)(2) or (d)(3) of this section must file a complete application for registration and pay the fee required by § 1.21(a)(1)(i) of this subchapter within two years of the individual's date of separation from the Office. All other individuals formerly employed by the Office, including former examiners, filing an application for registration or fee more than two years after separation from the Office, are required to take and pass the registration examination. The individual or former examiner must pay the examination fee required by § 1.21(a)(1)(ii) of this subchapter within thirty days after notice of non-waiver.

Posted by: Na at March 25, 2009 7:48 AM

Found this in section 11:

§ 11.7 Requirements for registration.
(d) Waiver of the Registration Examination for Former Office Employees.
(1) Former patent examiners who by July 26, 2004, had not actively served four years in the patent examining corps, and were serving in the corps at the time of their separation. The OED Director may waive the taking of a registration examination
in the case of any individual meeting the requirements of paragraph (b)(1)(i)(C) of this section who is a former patent examiner but by July 26, 2004, had not served four years in the patent examining corps, if the individual demonstrates that he or she:
(i) Actively served in the patent examining corps of the Office and was serving in the corps at the time of separation from the Office,
(ii) Received a certificate of legal competency and negotiation authority;
(iii) After receiving the certificate of legal competency and negotiation authority, was rated at least fully successful in each quality performance element of his or her performance plan for the last two complete fiscal years as a patent examiner; and
(iv) Was not under an oral or written warning regarding the quality performance elements at the time of separation from the patent examining corps.

and

(2)
Former patent examiners who on July 26, 2004, had actively served four years in the patent examining corps, and were serving in the corps at the time of their separation. The OED Director may waive the taking of a registration examination in the case of any individual meeting the requirements of paragraph (b)(1)(i)(C) of this section who is a former patent examiner and by July 26, 2004, had served four years in the patent examining corps, if the individual demonstrates that he or she:
(i) Actively served for at least four years in the patent examining corps of the Office by July 26, 2004, and was serving in the corps at the time of separation from the Office;
(ii) Was rated at least fully successful in each quality performance element of his or her performance plan for the last two complete fiscal years as a patent examiner in the Office; and
(iii) Was not under an oral or written warning regarding the quality performance elements at the time of separation from the patent examining corps.


word of advice: leave off your resume that you were an examiner.

Posted by: Noise above Law at March 25, 2009 7:55 AM

"As mentioned previously, the Office has won the war - significant changes in what applicant's must do and present have been determined to be procedural and within the rights of the Office to regulate. Your job has largely been eradicated. Please give a credible answer to the following question: Why bother with the crp union and their demands and the payment of overtime when the Office can make the applicants perform a detailed search and analysis for novelty and obviousness to MPEP standards (mayhap even charge the applicant for something the Office had to pay to do)?"

Credible answer: Because the statute demands it.

Simple, elegant. My job is secured by the statute. And trust me, that statute isn't going anywhere. Probably ever, but certainly not in the next decade.

I don't know anything about the not having to pass the patent bar. From what I hear it isn't all that hard anyway. Study for a couple of weekends and you're in if you're not rtarded.

Posted by: 6000 at March 25, 2009 12:47 PM

I'm sure you'll have no problem 6K. You undoubtedly know how to take that patent bar like a man.

Posted by: broje at March 25, 2009 3:10 PM

6,

Really? The statute demands it is your answer? The union? the level of examiners? Are you really that naive? Are you that full of yourself? - Hint - if your area has a backlog of three years, the number of seats in the life rafts will be very small.

Please, please, please, keep the attitude that you have in the viability of your future with the Office and in the bar exam. Have another drink with Einstein. Invite Alfred E. Newman to join you.

Posted by: Noise above law at March 26, 2009 6:35 AM