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November 15, 2009

Heritage of the Heretic

In the ultimate backfire, political hack Jon Dudas has left his mark on the patent office. Dudas demeaned the PTO by being openly hostile to its bread-and-butter clientele, patent applicants, with proposed rules that would limit claims and even applications, in a banal attempt to address pendency. Challenged by Dr. Triantafyllos Tafas, with GlaxoSmithKline riding shotgun, the district court shot the agency down. The PTO appealed.

In a muddled decision, a CAFC panel partly reversed, which lead to an en banc appeal. Under the new leadership of a more sensible David Kappos, the agency withdrew the odious proposed rules, and asked the appeals court to wipe the slate clean. En banc, the CAFC put the boot to an appeal now moot, but denied the PTO's motion to vacate the district court decision, which Tafas opposed, leaving the district court ruling standing. That means that there is precedent to proscribe the agency from pulling such a wild-eyed rule shenanigan again, the next time some heavy-handed moron is propped in the Director's chair. More immediately, that also leaves the door open for Tafas to seek recouping his costs.

For an account of this sordid affair sans bite marks, read Kevin E. Noonan. For a tidier clean version, read Prof. Dennis Crouch.

Dudas now parks his political savvy at the impenitently politically correct firm of Foley & Lardner.

Posted by Patent Hawk at November 15, 2009 7:15 PM | The Patent Office


"That means that there is precedent to proscribe the agency from pulling such a wild-eyed rule shenanigan again, the next time some heavy-handed moron is propped in the Director's chair."

I respectfully disagree. While the ruling did state that the PTO can't contravene the statutory requirements, it also gave very broad rule-making authority to the PTO short of that, stating that effectively that any rule that does not foreclose an effective opportunity to applicants to present and prosecute their applications is "procedural" and not "substantive." This means that rules limiting the number of claims per application, for example, would probably have been upheld, while rules limiting the number of continuations is contrary to the statute and would not be upheld.

The Court stated specifically:

"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, [**25] but they do not, on their face, "foreclose effective opportunity" to present patent applications for examination. JEM, 22 F.3d at 326, 328."

I find this a very troubling definition of "procedural." and I hope the PTO doesn't abuse this broad authority given to them by the courts.

Posted by: Defector at November 16, 2009 12:59 PM


I certainly hope that you are not an attorney as providing a rule of law that is not valid as you have done immediately above is at the very least incompetent.

Your quote is NOT from the district court, which is the remaining rule of law. It appears that you have quoted the panel decision which had been nullified with the decision to go en banc. You should note that NOTHING in that panel decision remains viable.

Quite simply, "this broad authority given to them" does not exist and the Office is in fact handcuffed back to the district ruling.

There is at least a reasonable counter claim stated at Patently-O by fisher ames (Mendoza) - http://www.patentlyo.com/patent/2009/11/tafas-v-kappos-cleaning-up.html#comments

This line of thought has been rebutted at that site, but it was refreshing to have some substantive exchange.

Posted by: Noise above Law at November 17, 2009 5:40 AM

I'm not sure if 'left his mark' is an apt description... he 'mark' has been completely undone! It's not every day that "final rules" get thrown out of an administrative agency of the federal government.

Posted by: Michael Feigin, Patent Attorney at November 17, 2009 2:07 PM

I would say that his "final rules" being thrown out were consistent, not inconsistent, with his tenure, unfortunately.

Posted by: nirpa at November 17, 2009 3:52 PM

Nice posting, and good discussions

Posted by: BG at November 19, 2009 6:52 AM

I don't understand why Mr. Dudas didn't try to work with the patent community.

Posted by: John Prosecutor at November 22, 2009 9:23 PM

John Prosecutor, quite possibly because Mr. Dudas didn't understand patent law. Check out his background. A first-year patent associate straight out of law school knows more than he did when he started out at the PTO.

Posted by: James at November 23, 2009 12:17 AM

By the way, here's the background profile: http://www.foley.com/people/bio.aspx?employeeid=29496

It's all soft IP. No scientific background. Kappos is a major upgrade.

Posted by: James at November 23, 2009 12:22 AM

"It's all soft IP."

Let's not forget that Mr. Dudas played a role in AIPA-1999, a huge change in patent law history.

From his bio: "He guided enactment of major patent, trademark, and copyright policy, including the 1999 American Inventors Protection Act"

Posted by: Jules at November 23, 2009 10:22 AM

Jules, thanks for the laugh. You mean from his revised bio. They must have just forgotten that huge role Mr. Dudas played (between bench presses) as the beacon to the patent community when the PTO wrote his original bio:


Don't know how we would have navigated those treacherous waters without his lamp.


Posted by: nirpa at November 23, 2009 5:57 PM