Apr
2
Practitioners respond to rejection of new rules
Posted by Dirk Avery at 9:36 am under Litigation, Patent.
Yesterday Judge Cacheris rejected the PTO’s attempt to make substantive changes to its rules, as Irene noted. The Reporter’s Zusha Elinson writes today about the decision and responses from several patent practitioners.
“There’s a lot of good cheer going around,” said Hans Troesch, a veteran patent prosecutor with Fish & Richardson in Redwood City, Calif. “It’s a great relief to the practitioners.”
…
“[B]ecause the Final Rules are substantive in nature, the court finds that the Final Rules are void as ‘otherwise not in accordance with law’ and ‘in excess of statutory jurisdiction [and] authority,’” Cacheris wrote, citing 5 U.S.C. §706(2).The patent office, which had argued that the changes were only procedural, said in a prepared statement that it did not agree with the court and is considering an appeal…
[T]he statement reads[,] “The USPTO believes that these rules are consistent with existing statutes and will strengthen the U.S. patent system for all stakeholders.”
…
“There’s been some residual uncertainty based on the possibility that the rules in some form could go into effect,” Ted Apple, a patent prosecutor with Townsend and Townsend and Crew in Palo Alto, Calif., said Tuesday. “There were some prosecution steps that we were taking that were motivated by the conservative possibility that rules likes this would go into effect.”Fish & Richardson’s Troesch said he was worried that the limit on continuations would put his technology company clients at a disadvantage.
“In my kind of practice, it meant that the examiners’ failure to understand what an invention was really about would severely prejudice the applicant,” Troesch said.
Gladys Monroy, a patent prosecutor with Morrison & Foerster in Palo Alto, said she was afraid that the limit on claims would cut short patents for her biotech clients.
“It’s extraordinarily difficult to claim everything within 25 claims — you would’ve lost subject matter,” said Monroy. “When you look at the complexities of the biotech inventions, it’s very difficult to do that.”
…
“It will be interesting to see what effect this will have on the USPTO’s other rules going forward,” said Townsend’s Apple.
Related
- Dudas on the state of patent system
- UPDATE: Tafas v. Dudas; SmithKline Beecham Corp. v. Dudas, 07–cv-0846 (E.D.Va 2007)
Great to hear from the prosecutors on this!
While I am satisfied with the outcome, I don’t believe that the court articulated a meaningful (or completely accurate) standard for determining the difference between a procedural rule, a substantive rule, or a procedural rule with attendant substantive effects.
Furthermore, the court’s interpretation of section 2(b)(2)’s reference to section 553 of the APA (notice and comment provisions) undermines prior regulations that are currently in effect.
And the PTO’s position about the substantive v. procedural distinction was unfairly characterized.
I’m still gathering my thoughts (and simultaneously working on a paper on the issues involved) and will post more on this later.
I look forward to your informed analysis!