USPTO Continuation and Claim Rules: AIPLA Request Injunction to Halt New Rules

Feeling some pressure from its members, the AIPLA has now filed an amici brief in support of GSK’s motion for a preliminary injunction to stop enforcement of the PTO’s new rules on continuations and claim count.

A preliminary injunction requires the moving party to satisfy a four factor test of equitable relief:

• Likelihood of success on the merits of the case;
• Irreparable harm that will persist without relief;
• Balance of hardships weights in favor of relief; and
• The public interest supports relief.

In its brief, the AIPLA focused on how the new rules work to destroy established interests. The brief focuses on a tradeoff between patents and trade-secrets — indicating that the inventions embodied by many currently pending applications would have been kept as trade-secrets but for the longstanding “guarantee of a full and fair opportunity to seek a spectrum of patent protection.”  According to the AIPLA, the limitations on claims and and continuations severely inhibit that guarantee and thus create an irreparable harm to current applicants.

David Kappos, Chief of IP at IBM, filed a declaration in support of the AIPLA brief. Kappos noted the incredible cost that it will incur to review its 25,000+ pending patent applications to ensure compliance. Writing on behalf of SanDisk, two attorneys noted that the technology company will lose at least $200,000 in filing fees due to required consolidation. Writing as a paid expert for SKB, former PTO Director Harry Manbeck has filed a declaration explaining why, in his view, the new rules are illegal.

Files:

• File Attachment: AIPLA.PI.Motion.pdf (158 KB)
• File Attachment: Kappos.pdf (76 KB)
• File Attachment: Sandisk.pdf (376 KB)

Links:

• PatentDocs
• Quinn

Comments

[Edwin D. Schindler]

The PTO is getting (even more) desperate . . . The DOJ has filed an opposition brief seeking to have the AIPLA brief stricken. If the district court was not otherwise inclined to read and consider the AIPLA brief, it will certainly do so now!

Does anyone know the last time any court anywhere denied a bona file amici the opportunity to file a thoughtful brief on a case pending before the court?

[Edwin D. Schindler]

PhRMA has just filed a motion to file an amicus brief and, no doubt, will be filing its amicus brief imminently!

The DOJ/PTO can "hack away" all they want on whether the Manbeck Declaration and the AIPLA (and, no doubt, PhRMA's) amicus brief should be stricken, however, the case, I am confident, will be decided on something closer to the merits.

"Dumb and Dumber" is that party that does not simply "consent" to all amici filings!

Opposing the filing of an amicus brief is like opposing a first request for a short extension of time or a modest increase in a page limitation.

While not able to get into the head of anyone, it would seem that if the DOJ/PTO have decided to use "long shot" procedural devices to in an attempt to defeat GSK, then substantive legal arguments opposing GSK on the merits are essentially non-existent!

[metoo]

it happens quite frequently, Edwin

[metoo]

Sorry Edwin, but you don't know what you are talking about.

[Edwin D. Schindler]

metoo,

WOW! That's particularly cogent logic, never considered the issue from that point of view before . . . it's not surprising that you choose to use a pseudonym!

[B. Ballwinder]

To me the USPTO's desperate efforts to invoke legal technicalities to somehow try and stave off a preliminary injunction order will be unavailing at the end of the day -- win or lose on the preliminary injunction, the bottom line is that the PTO simply lacks the power to pass these rules and they will be invalidated one way or another. With respect to the rules, the PTO is like a guy tied to the end of the post on the railroad tracks and the train is barreling down the tracks -- it is only a question of how quickly the train arrives -- choo choo. Goodbye rules.

[Inquiring Mind]

Although I am not a litigator nor a judge, I agree with Mr. Schindler and Mr. Ballwinder. My impression, and I believe it to be a common one, is that a court will decide who is "right" and then find a way to rule in favor of them. It may be that parties often do not want an amicus brief filed in their case, but I suspect that this is because the parties are private parties and are worried that their case may be hijacked by a public interest concern, possibly driving the case to a different and (for them) nasty conclusion. Here, of course, the PTO is a public agency which is allegedly acting in the public interest; what public interest are they serving in seeking to disqualify amicus briefs and declarations submitted by experts in the field, especially when they are seeking disqualification for technical reasons? I'm probably missing something, but I can't think of a "good" reason. And I would think (and hope) that that will ultimately lead a judge to wonder what the PTO's real motivation is for all of this.

[just visiting too]

To just venting's remark about patent examiners needing more time to decide whether something's patentably distinct:

They'll do what they've been doing for years - find the answer that suits them and craft bogus arguments in suppoprt. Have you ever tried to contest a restriction requirement by petition? Have much hope your traversals will turn things around? And now traversal has more consequences during prosecution.

On a different note, is it just me, or did we not get a true notice and comment opportunity for these new rules? It seems to me the final form of the new rules morphed into something very different from what was initially proposed.

[H. Yenker]

Whats next -- a USPTO imposed lifetime cap on the number of patent applicants any given inventor is permitted to file? Lets set the number at 5 shall we. Seems real efficient to me.

[johng]

PTO's new motto: "You can't have too much innovation."

[modeled after the SNL skit, "Remember, you can't add too much water to a nuclear reactor"]

[real anonymous]

Dear Senator,

I am a patent lawyer, and I am contacting you again to declare my opposition to key provisions in the Patent Reform Act of 2007 (S.1145 and H.1908).

Specifically, I am strongly opposed to the new 35 USC 3(a)(5) and to the new 35 USC 123.

The Senate Bill, in "Sec. 11 Regulatory Authority", would amend 35 USC 3 to provide the USPTO Director with substantive rule making authority to promulgate any rules he deems "necessary" to the operation of the Office. I believe that conveying such authority onto the Director is unwise and dangerous, and would allow the Director to circumvent the safeguards of congressional legislation and the APA while catering to the whims of political lobbying forces, as we see happening even today.

Before coming to the USPTO, Director Dudas had no patent experience. Since coming to the USPTO, Director Dudas has shown anti-patent and pro-big-business sentiments. He is a politician, not a patent attorney, and so he is motivated much more by lobbying forces than by an innate desire to "promote the progress of science and the useful arts." To grant such a man substantive regulatory authority would merely mean strengthening large corporations who donate monetarily to a party's political causes at the expense of protecting the rights of individual inventors, start-ups, small businesses, and universities who represent and enrich America at-large.

Please let me remind you Senator that the Googles, Intels, IBMs, and Boeings of today were all at one time the "start-ups" of yesterday, sometimes blossoming in a garage with an idea that satisfied a market need. Each of these "giants" availed themselves of patent and trade protections which were made available to them by the government. As a consequence, each was able to succeed to the benefit of America against the established industrial powerhouses of their day.

By stifling start-ups today, you would merely ensure that America will have no more new Googles and IBMs in the future. That can't be good for the country, and such a policy (as advanced, for example, by the Coalition for Patent Fairness, which is led in part by the Canadian conglomerate Research in Motion) seems very short-sighted to me.

I have worked for major U.S. corporations against so-called patent "trolls". In no case has a troll *ever* changed a market strategy or dealt a fatal blow to a developing technology. In the few times that we could not invalidate or design around the troll's patent (the USPTO's quality is often horrible; the invalidity rates of asserted patents can be as high as 75% in some fields), there was simply a monetary transfer from the company to the troll - for a large company this is merely one of the "costs of doing business" in an imperfect world, and it is a relatively rare problem. These monetary transfers, affecting perhaps 2% to 5% of companies in America today, cannot warrant the evisceration of patent protection for 98% of the (non-trolling) innovating and patenting companies in America.

The House Bill, H.1908, in "Sec. 12 Additional Information", would permit the Director, who is not an expert in patent law and (as stated previously) has displayed marked anti-patent and pro-big-business sentiments, to require patent applicants to "submit a search report and other information and analysis relevant to patentability". The amount of detail that the Director is proposing by regulation (new 37 CFR 1.265) should be required for such a "search report and other information and analysis" is staggering! It basically makes the patent applicants (who may have no broad patent expertise in their respective fields) do the Examiner's work, and requires the applicants' representatives to take positions and make admissions that are against the interests of his/her applicant. This "transfer" of examination responsibility from the USPTO to the applicant runs diametrally opposite to the very reason that we have Patent Examiners in the first place. Patent Examiners are charged with becoming experts in a single technology and examining the claims of all patent applicants who may have no knowledge of what is happening in their industry a half a world away. The Patent Examiner, who is sworn to secrecy and should know what *every* company in the world is doing publicly (and sometimes even secretly), is the one who is charged with being the "gate keeper" to make sure only valid patents issue. A patent applicant simply cannot become aware of what every other company in the world is doing (some of which is *only* known by Patent Examiners), without incurring an extraordinary expense (thus making such an endeavor prohibitive for most individual inventors, small companies, start-ups, and even universities). Moreover, there is no government need which is critical enough to justify by legislation allowing the USPTO to place a wedge a patent applicant and his/her representative, which 35 USC 123 would precisely permit a regulation like 37 CFR 1.265 to do.

Thank you for your time, and for your representation of the interests of all Americans in the U.S. Senate.

Sincerely,

http://www.nipra.org/congress.htm

[George]

Does anyone know the last time any court anywhere denied a bona file amici the opportunity to file a thoughtful brief on a case pending before the court?<<<<

I don't know... but what would be the harm for the court to understand AIPLA's position?

[patent leather]

If the rules go into effect, and then they are ultimately overturned, if a case was let go abandoned (because an RCE or CONT is no longer available), do you think this will be able to be revived via a petition to revive? What a mess!

[AnotherDisgustedPatentAttorney]

"If you manage to burn up all your bonus bites, most likely that's not the PTO's fault. Rather, it's likely because the applicant is insisting on excess claim breadth and refusing to compromise."

Wow, that's not even remotely close to true. Maybe 10% or 20% of the Office Actions I receive are even competent, let alone good. Why should I compromise when it's not required by the crap produced by the Patent Office? The reason for extended prosecution is not the nefarious actions of applicants or their representatives, it's the gross incompetence of Patent Office examining personnel. Requiring an adequate mastery of the English language would be a good place to start.

[anon three]

I agree with what's said above, just wanted to point out that it is all about sampling. We see 10-20% decent OAs; they see 10-20% decent applications, responses to OAs. The effect - neither side particularly respects or trusts the other to do the right thing. For each side, there's quite a sizeable population that thrives on confrontation rather than negotiation.

[johng]

10-20% in my day would have been grounds for Sister Mary Dolaretta to call your parents and strongly suggest an immediate transfer from the school. It is less than an F minus (if there is such a grade). Usually, the boys would be sent to a military school (similar to a reform school). I don't remember where they sent the problem girls. I believe some of them ended up at the Kennedy Institute for slow learners.

The reason there is animosity and confrontation between the two groups is that the PTO will not allow most applications after failing to present proper rejections. It hides bad work by reopening prosecution at an alarming rate and accepting RCEs based on false promises or applicant's hopes that giving examiners extra counts will save costs and time in the long run. I have been told the PTO currently has the lowest allowance rate ever, and it is proud of that statistic. What a clusterf even without the new rules.

[me]

It is all summed up by my PTO credo - this is the patent office that hates patents!

[Edwin D. Schindler]

I see that from the Docket Sheet that the PTO filed a massive opposition memo, along with 35 exhibits, Sunday evening.

It was my understanding that the PTO had 11 days to file its opposition, though I could be mistaken. If so, then wasn't its opposition due on Friday, October 26th, and, if so, it would appear that the PTO (DOJ) sharply cut into GSK's period for filing a reply?

My "best guess" is that either the District Court will grant the preliminary injunction or, if necessary, call it a "TRO," and if not, GSK will have a Notice of Appeal ready to file in the District Court and a Motion for Injunction Pending Appeal ready to be filed in the CAFC, which would only require one circuit judge to grant.

[Edwin D. Schindler]

Wednesday is shaping up to be a rather interesting day!

[EG]

""Just as a heads up, the court ORDERED that all references to Mr. Manbeck's declaration be removed from GSK's exhibits."

Does anyone have further information on this?"

Actually, what was likely seen by me and the rest is "draft order" by the PTO to strike Manbeck's Declaration. Edwin Schindler correctly pointed out that the district court judge hasn't signed this order (at least there are no posts showing this "proposed order" to be signed). So for the moment, the Manbeck Declaration appears still to be in the GSK suit. If so and that remains the case, the PTO will have an interesting time trying to explain that Declaration away on Wednesday.

[In-House]

Elan Pharmaceuticals also filed amicus brief today 10-29-07.

[Anon]

The court granted the preliminary injunction.