Patent Office Has Stopped Examining Patents with 25+ Claims

Those of you following your docket through the PTO’s PAIR system may note that the Office has begun its ‘identification process’ of unexamined patents with either (1) more than 25 claims issued or (2) more than 5 independent claims. The docket report shows:

• Entry: Flagged for 5/25
• Status: “Request for SIR -- Recorded” or “Preexam Flag for 1.75(b) Issues”

According to a telephone conversation with the Office of the Commissioner for Patents, these cases have been pulled from Examiner dockets because they exceed the 5/25 limit and are thus-far unexamined.  We will be able to do a retrospective in Mid-November to estimate the number of cases impacted by this pre-rule activity.  Of course, this appears to be a de facto implementation of the new rules prior to the stated November 1 effective date.

• For an example, look at the PAIR data for App. No. 20060294241.
• Thanks to James McEwen and Randall Svihla alerting me to this issue. 
• This alert will help many practitioners ensure that they have found all their cases that exceed the new limits. Many attorneys keep no specific records of the number of claims filed. For published cases, Derwent keeps track of the number of claims.
• UPDATE 10/17/07 — App. No. 20060294241 referenced above is no longer ‘flagged.’

In other news:

• CAFC Docket: The CAFC heard 13% fewer cases in FY2007 — freeing their docket for additional BPAI appeals. [LINK]
• Preemptive Strike: In another preemptive strike, on October 15^th, ESN sued Cisco for infringing Patent No. 7,283,519.  Unfortunately, the patent did not issue until the 16^th of October. [Link] 

Comments

[Matt Foley]

CRUSH THE PTO

I like the sound of that. I used to like them, despite the heartaches of prosecution. However, things change. This is now my plea to the gods. But please, spare the examiners.

[A]

An oldie but a goodie:

One dark evening Jon Dudas was on his hands and knees under a street light looking through the grass.

A pedestrian asked what he was looking for.

"The keys to my car." said Jon.

Having some time and feeling helpful, the pedestrian joined Mr. Dudas in his search.

After a while, with no success, the pedestrian asked: "Where were you when you lost your keys?"

"Over there by my car." the Mr. Dudas gestured.

The pedestrian was puzzled. "Why are you looking for them here?"

Jon Dudas explained: "The light's better!"

[anon]

The K & E firm profile for Desmarais (GSK's attorney) includes "P.C." after his name - - what the hell is P.C.???

[ironicslip]

just an ordinary inventor >> this might be of interest

by John Orange


JUDGE PAUL MICHEL'S TOP TEN DRAFTING TIPS

At the Newport Beach Seminar three eminent Judges from different US Courts gave their views on how Patent practitioners could improve their presentation of claims before their Court. Judge Paul Michel of the CAFC provided a list of ten points that he considered should be followed in preparing patent applications. These tips are produced below, as recorded on the fly and therefore with no guarantee of accuracy:-

1 - Make sure there is support for the claims; track the language used in the claim back to the specific description to ensure the same terminology is used.

2 - Check whether the term used has an established meaning in the art and whether that meaning is appropriate in the particular circumstances in which it is to be used.

3 - Avoid amendment during prosecution!

4 - Prosecute the claims for literal, not equivalent, scope.

5 - Know the Federal Court case law on construction. Look at the decision as a whole, not just a stray phrase, and read all the cases.

6 - Where there is more than one possible meaning for a term, and in the absence of other factors, the customary meaning in the art is more relevant than the ordinary meaning.

7 - Dictionaries relevant to the art are a prime source for ascertaining the appropriate meaning of the term.

8 - When listing and discussing prior art references, check that the art uses a term in the same manner as in the specification and describe the art using terminology consistent with that used to describe the embodiments..

9 - Describe multiple embodiments wherever possible.

10 - Avoid creating a prosecution history except where you wish to establish a broader interpretation than might be the customary interpretation.

[patent leather]

"re-scheduled the hearing on GSK's motion for preliminary injunction to the morning of October 31, 2007. The loser on the preliminary injunction motion will have to make a dash to the CAFC that afternoon."

Well even though the hearing is on Oct 31, a decision will not be rendered that day, will it?

[anon]

It will have to be a ruling from the bench on the 31st in order for the loser to file an emergency appeal at the CAFC the same day.

The 31st will indeed be "trick or treat" for all of us.

Both cases were also consolidated with Judge Cacheris.

[patent leather]

Does anyone know what Judge Cacheris' history is with regard to preliminary injunctions? And can the CAFC really hear an emergency appeal on the same day??? Although I am sure they are reviewing the case now.

Dudas should in the very least suspend enforcement of the rules until the CAFC has heard the "emergency appeal" (if needed).

[patent leather]

"Besides the PTO itself, is there anyone that has commented favorably on the new rules?"

Yes, the firms that represent Intel have commented favorably. What a surprise. This should be a tipoff to the USPTO that the rules severely hurt the small guys with less money. But I'm convinced they don't care.

[Malcolm Mooney]

In other news

http://igdmlgd.blogspot.com/2007/10/amazon-one-click-patent-rejected-by-us.html

The irony, of course, is that this patent smelled worse to the public than anything before or after.

And now it's official: it was a bunch of crap.

[Lionel Hutz]

Anon,

The whole point of my post was that we should not have to wait until the CAFC to be reasonably sure of claim interpretation. The CAFC should only be able to overturn a lower court claim interpretation for clear error or whatever the standard is for matters of fact.

Joe

[Prosecutor]

Malcolm, while I'm as pleased as you are with the issuance of an OA in the re-exam that says the one-click patent is crap, it (unfortunately) ain't over till it's over. Please let us know when this thing is really dead for good.

[jarjarstinks]

This is a Charlie Foxtrot. I want some heads and I want them now. I believe we should start with Dudas being removed from Office. Laides and gentlemen it is time for politics. They messed with the system and now it is time the system messes back. What is happening with that Peterlin case? Her head should roll too for backing this garbage. These GD rules are changing so fast I can't keep up with them. That is and of itself violates due process. Don't the people in the patent office know anything about the Constitution. WE HAVE A RIGHT TO A REPUBLICAN FORM OF GOVERNMENT. You cannot have a republican form of government without the citizens having an opportunity to know what is exepected of them. In short anyone who supports the implementation of these rules is simply a fascist.

[anonymous]

Charlie, I am too old to serve, but I will pray for you: Our Lady of Divine Retribution, don't fail us now.

[outheresomewhere]

Guess what, my cases are no longer flagged as being subject to the 1.75(b) showing. Ya know what. It is time to call the Department of Justice and start having every single employee investigated to see if there is a conspiracy within the agency to violate the laws and regulations of the United States. Are applicants actually being denied patent term by deliberates acts of the USPTO in delaying examination of the application. Perhaps we should talk about retroactively giving each patent the longer of 17 from issue or 20 from priority. He he he he.

[outheresomewhere]

Guess what, my cases are no longer flagged as being subject to the 1.75(b) showing. Ya know what. It is time to call the Department of Justice and start having every single employee investigated to see if there is a conspiracy within the agency to violate the laws and regulations of the United States. Are applicants actually being denied patent term by deliberates acts of the USPTO in delaying examination of the application. Perhaps we should talk about retroactively giving each patent the longer of 17 from issue or 20 from priority. He he he he.

[Mr T]

Do you trust the DOJ? It appears the body-snatchers have completed their long term plans at DOJ. It is also apparent they have in all the agencies leading up to the publication of these rules.

[Opampman]

I never thought I'd be rooting more for someone other than the Sox in October, but I have to say, GO GSK!

[patentdood]

Someone posted a while back a question regarding what the real problem was - the PTO says the problem is the backlog - and asked how can we solve it. Here's an easy answer. Take all of the "lost examining" hours the PTO spent promulgating the rules, responding to comments, traveling on road shows, defending the rules, publishing OG notices and the like, and now defending litigation, and spend those hours doing their job - Examining applications. The backlog would be gone!

[outheresomewhere]

AMEN patentdood

[CliveFenster]

My two cases also have lost their "Flagged" status and now show merely "Docketed". My voicemails to the Examiners assigned those cases went unanswered.

[Mr T]

Good idea dood, after they are CRUSHED, dust the managers off and send them back to the shoes for a 10 year sentence! It's not too fun in the shoes, ha ha.

[Curious]

apparently there was a study done awhile back which determined that if the federal government had not been stealing fees paid to the PTO but instead had given these fees to the PTO and the PTO had spent the money to train and hire new examiners that there would be no backlog. Does anyone have any information on that study? Thanks

[Curious]

apparently there was a study done awhile back which determined that if the federal government had not been stealing fees paid to the PTO but instead had given these fees to the PTO and the PTO had spent the money to train and hire new examiners that there would be no backlog. Does anyone have any information on that study? Thanks

[metoo]

One very interesting aspect of the GSK case is the inevitable discovery into the inner workings of the PTO. Given the numerous claims made by GSK, that discovery could be (and should be) wide-ranging. I am certain that it will get very nasty and that some of the information which comes out will be quite embarrassing. Imagine if they track down an examiner that testifies about how he was told to stop examining applications with more than 5/25 claims long before the rules were even published. And the PTO's goofy rules in 37 CFR 104.21 et seq will not help them a bit. I also assume that the PTO is being diligent in maintaining and preserving ALL documents relevant to the new rules, including internal e-mails and the like.

[Mr T]

Where are all the guys who planned to sue the PTO. GSK, Tafas and we need your help. PLEASE join the suit!

Susan Dudley is now looking at the IDS rules, and again David Boundy submitted a letter tearing into the PTO, which must be CRUSHED.

[patent leather]

Mr. T: "Susan Dudley is now looking at the IDS rules, and again David Boundy submitted a letter tearing into the PTO, which must be CRUSHED."

Will these rules be effective immediately or will there be a waiting period first? Does anyone know? Should we all start going through our files to make sure every reference is submitted now?

[Malcolm Mooney]

What's all this about new rules? When did that happen?

[metoo]

You mean the new IDS rules, Malcolm? There the ones that are now being reviewed by OMB - the ones that no one outside the PTO and OMB have seen - the ones which are presumably similar to the proposed rules the PTO previously published, but I'm sure slightly less draconian than those originally proposed so that the PTO can say with a straight face "see, we listened to all of the comments submitted to us and changed the rules in light of them" - the IDS rules that will be one more nail for the coffin in which our patent system is being systematically and methodically destroyed

[Mr T]

MM: Look over at patent prospector for details.

PL,I think I remember Feb. or March as the projected date.

[Mr T]

Generally, if you file more than 20 references, expect to prepare an ESD-like document!

I made a flow chart of the proposed rules, and they are bad! and I mean bad bad.

[Edwin D. Schindler]

IDS rules that require a particular format for presenting known prior art which may be relevant, are, generally speaking, unenforceable: If an applicant/attorney cites to the PTO references that may be material, whether or not the PTO actually considers such references, would not appear to impact on the inventor's or his attorney's duty to disclose under 37 C.F.R. §1.56.

Essentially, if references are cited to the PTO anywhere in the Specification or prosecution history - assuming that such material references are not deliberately "buried," but presented in a manner in which the Examiner should take notice of them - an Examiner is then "on notice" of the potentially material reference(s). If the Examiner chooses to deliberately ignore a reference clearly cited in a prosecution history, because it might not meet the stringent requirements of the PTO, then the solution may simply be to clearly make the reference known to the Examiner and "call it a day." There can be no "equitable conduct," it would seem, if an attorney makes a bona fide effort to draw the Examiner's attention to a particular reference which the Examiner then chooses to ignore, because the manner of "disclosure" is not perfectly compliant with the PTO's ridiculous requirements. At some point, the Patent Bar will simply "cite and forget," thereby avoiding a later finding of inequitable conduct, but refusing to "jump through hoops" by Rules that require applicants and their attorneys to do the work that the PTO was created, and is paid, to do.

An applicant and his attorney have an obligation to cite material references to the PTO, inasmuch as the PTO cannot be expected to uncover any, and all, material references and, if an applicant or his attorney knows of a reference that is material, it is only "fair" and equitable that it be made known to the PTO. Once this obligation is fulfilled, it must not be forgotten that the attorney represents the patent applicant, and not the "public-at-large," which is, legally speaking, the PTO's "client." As attorneys, we should disclose material prior art to the PTO, but we should not be required to "reject" our own clients' claims.

The PTO may choose to implement particularly stringent rules for the disclosure of prior art, however, it there is a lack of compliance, and the PTO refuses to properly consider prior art "thrown in its face," then it is deliberately refusing to perform the statutory function that it was created to carry out.

[Edwin D. Schindler]

Correction of typo in CAPS: "There can be no "INequitable conduct," it would seem, if an attorney makes a bona fide effort to draw the Examiner's attention to a particular reference which the Examiner then chooses to ignore, because the manner of "disclosure" is not perfectly compliant with the PTO's ridiculous requirements."

[anonymous]

Thanks Mr. Shindler. Do you really think this practice would fly? Otherwise, I agree with everything else you said!

[metoo]

um, no, it won't fly if the NEW IDS rules are promulgated.

[patent fool]

I just checked the docket. The case was reassigned to a judge named James Cacheris. He overruled the former judge's order to have the hearing on 10-26 and allowed the PTO until 10-31-07 to respond to the PI hearing. He has also consolidated this case with the Doctor's case and set the hearing date for both on the same day.

[Mark Nowotarski]

Wikipedia article on James C. Cacheris.

http://en.wikipedia.org/wiki/James_C._Cacheris

[me]

Not good - why give the PTO more time whne they should have seen this coming and Tafas was filed long ago?

"CNN Dobbs: 'I spend more time worrying about whether or not the United States can survive the remaining 15 months of his ebbing presidency'... "

Can the Patent Office survive?

[Hecky's: It's the Sauce]

FYI a memo was just issued by the PTO management saying that we are to continue examining cases that exceed 5/25 until Nov. 1. All cases have been put back on examiner's dockets, according to the memo.

-An examiner.

[Malcolm Mooney]

""CNN Dobbs: 'I spend more time worrying about whether or not the United States can survive the remaining 15 months of his ebbing presidency'... "

LOL. Loud Obbs isn't in love anymore.

[patent leather]

Thanks for the link to Judge Cacheris bio. Penn and GW law, must be a smart guy. Smart enough to realize the rules are illegal, I hope.

Has anyone filed a motion for the court to hear an amicus brief?

[Federal Courts]

"Has anyone filed a motion for the court to hear an amicus brief?"

Do trial courts take amici? I've never heard of this, but I've lived a sheltered life.