The Patent Office has filed a notice of appeal in the case of Tafas v. Dudas. This case involves the PTO’s attempt to limit the number of continuation applications and the number of claims per patent that may be filed based on an original disclosure. In April, 2008, District Court Judge Cacheris granted plaintiffs motions for summary judgment — finding that the new rules are an improper extension of the PTO’s statutory authority.
“Because the USPTO’s rulemaking authority under 35 U.S.C. § 2(b)(2) does not extend to substantive rules, and because 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.’ 5 U.S.C. § 706(2).”
The appeal will be heard by the Court of Appeals for the Federal Circuit. The basis of the original declaratory judgment action is that the PTO’s proposed rules violate the PTO’s limited rulemaking authority granted by 35 U.S.C. § 2(b). Thus, there is no question that this case arises under the Patent Act and, consequently, that the Federal Circuit has exclusive jurisdiction on appeal.
Notes:
Posted by: discount | May 09, 2008 at 08:25 AM
"We should probably remember that one aspect of the Internet is that certain opinions will be given that we don't agree with. Some opinions will be thoughtful and some not as much, some will be polite and others not as much.
In e6k's case, I think we need to recognize that his/her opinion is just that, an opinion. We can be glad it's not the opinion shared by Congress, the USPTO, the courts, and the caselaw. We can try to educate him/her on how the law works.
In the end, though, we should just let it go. This may be a marketplace of ideas, but e6k is only a seller, not a buyer. We do (or should) have better things to do with our time. e6k is correct on that point. I will do my best to use my time productively, and responding to e6k's posts are not a good way to do that."
Thank you Discount.
This is the correct way to deal with a troll on any blog.
Ignore them and they will go away.
p.s. - Not all examiners (or ex-examiners) are jaded, but many of us have seen as many abuses by practicioners as practicioners have seen by examiners. The only way to a meaningful resolution is all parties in the prosecution phase working together.
Posted by: JustAnExExmr | May 09, 2008 at 11:37 AM
"The patent is presumed valid unless you prove differently, and if you don't prove differently the Director shall issue the patent. Thus, there is a default right to an issued patent."
All I have to say is that you don't even have a patent to be presumed valid until the Director issues it. Try using the word application next time, though you'll still fail horribly. The only right you have is to be qualified for a patent, this is not a right to be issued a patent. You need to learn to read. Here, I'll let you know what you're doing wrong, you're inferring things that aren't actually written. Reading between the lines of a statute that only the letters of are the law.
"Your comments indicate that you don't want to be bothered with that information."
I'd love to have that information if it is the only way you can point out the differences between the prior art and your invention. If it's not, then kindly don't waste my time and just tell me what the differences are. In any case I don't have that big a problem with the attorney's I work with including their story. It's usually one paragraph long at most. Thankfully.
Classic attorneying pds, taking what is written "By the early 1800s" and turn it into "the early 1800's", you can't take "By" away without losing context for determining what the sentence is saying. And then you have the balls to tell me I'm the one twisting the words. If I say, by the time I reach the store (10:00) I had tied my shoes. Do I mean I tied my shoes at 10:00 10:01 or 9:59-? If you guessed 9:59- you're correct! So, we discuss the time before 1801. By that time (1801) the action that is being related (narrowing the definition of science) has already occured. Notice the events that triggered the shift in the meaning of the term occured as the result of things that happened prior to 1700, laws of motion etc. In any event, there are entire papers written on the subject and I read one about a month back, I'll see if I can find it later, it does much more than address a wiki word "by". Either way, like I said, we're not likely to "solve the mystery" when linguists are not firmly on either side.
"I'll give you an analogy"
Bad analogy since the statutes specifically provide for the presumption of innocence and specifially fail to provide for the presumption of patentability or the issuance of a patent sans conditions. I.e. you are presumed innocent no matter what, end of story, you must then be proven to be guilty for any punishment to be taken against you. In the patent case we have that you are presumed to have applied and you must appear to be eligable for a patent on examination for any action to be taken in your favor (issuing of patent).
The statute provides for the qualification for a patent only. So until you can back yourself up in the statute you have nothing to stand on but bad analogies. I understand what you're trying to say, you don't need analogies, I'm specifically saying that your position is less defensible than mine is and you fail in every response to provide any substantial showing of how the applicant has the right to be issued a patent. You never will find such a showing because it does not exist.
Having a burden to present a case of unpatentability does not in any way give the applicant a right to the eventual issue of his patent from his application. Should the application appear not to be eligable for any reason under the law the patent will never be issued. This means, if I cannot discern the usefulness of your invention it will not be issued as a patent, if I cannot discern the difference between your invention and the prior art it will not be issued as a patent, if I see indefinite terms it will not be issued a patent (this is purely a judgement call in many cases), and one rather large thing, if I cannot discern what the invention IS it will not be issued and then etc. etc. My being required to write down why the application has not been issued does not magically create a right for the patent to be issued nor does it even imply such a right. The only right it implies is exactly what it says "if on examination it appears ..." in other words you have a right to the issuance of a patent WHEN and only WHEN (notice the word "on") examination causes the applicant to appear to be entitled to a patent. At any time prior you have no such right to issuance. A very good case in point is that if I issue an OA and it Sucks horribly but the applicant never replies then he is not issued a patent because it still appears that he is not eligable. But but but you say "that's irrelevant because you just stopped the issue of a patent"
In any event, in re to all the amends I get that say "The applicant's request the grant of a patent" I'll be sure to let them know that I don't have the power to do such a thing. I guess the fact that a patent will never be granted won't bother them a bit and they'll abandon right?
pds pds pds, you're funny if not overeducated.
"#6K, I hope you get to law school quick, because you are really clueless about reading laws. But you're pretty good at making up gobbledygook as you go along. Therefore you may become a great judge one day."
You've stumbled upon my secret agenda ...
Posted by: e#6k | May 09, 2008 at 05:42 PM
pds: "Your problem 6K is your completely inability to put yourself in somebody else's shoes and consider the totality of the situation. Instead, your opinions appear to be based upon the view that patent applications are to be written and claimed for ease of examination. Your proposals completely ignore the requirements that the Federal Circuit has placed on applicants to have an enforceable patent."
Exactly. The resemblence to current USPTO mgmt is uncanny isn't it?
Posted by: Publius | May 09, 2008 at 06:55 PM
""#6K, I hope you get to law school quick, because you are really clueless about reading laws. But you're pretty good at making up gobbledygook as you go along. Therefore you may become a great judge one day."
You've stumbled upon my secret agenda ... "
Just don't sue the dry cleaner for millions if he loses your laundry!
Posted by: Alun Palmer | May 09, 2008 at 07:59 PM
Can I invoke God win's law and mention Hit ler, even though it has nothing to do with what's going on here, and ki ll this thread? It's degenerated into bashing between e6k and others and should just d i e.
Spam filter catches funny things.
Posted by: question | May 10, 2008 at 09:20 AM
Duell said it best over 100 years ago - everything that can be invented has been invented! During my tenure, I intend to kill off all patents. The USA is being plagued by entreprenuers and inventors - what we really need is an army of faceless, mindless bureaucrats, like me. If I can't kill off these patents legitimately by complying with my duties under the patent laws, I will do it illegitimately, with secret reviews, by imposing unbearable costs on applicants (I'm putting the "can't" back in applicant), and by passing regulations that are illegal. The future of bureaucracy is at stake - this is for the greater good of people like me.
Posted by: Jon Dudeass | May 11, 2008 at 08:38 AM
E#6k,
You are wrong. The PTO has to show why the applicant should not receive a patent, the applicant does not have to ahow why he should. That burden of proof is always on the Examiner. Now the burden of evidence can shift to the applicant if the Examiner makes his prima facie case of unpatentability, but ultimately it is always the PTO's burden to prove unpatentability rather than the applicants burden to prove patentability.
One of the many secondary reasons why the rules will be shot down without statutory amendment.
Posted by: Lionel Hutz | May 11, 2008 at 10:31 AM
Lionel, puhlease! Appli-CAN'Ts are evil, wanna-be monopolists, who are just trying to steal money from our wonderful PTO underwriters like Microsoft, who can rely solely on the copyright laws for protection and to whom patents are an annoyance at best. Appli-CAN'Ts must be punished for their evil thoughts, and their applications are presumed to be unpatentable, because all inventions that could have been made were made over 100 years ago.
Posted by: John Dudeass | May 11, 2008 at 01:46 PM
"That burden of proof is always on the Examiner."
I believe I specifically addressed that the burden was, is, and probably always will be on the examiner and that the point is irrelevant. Go ahead, read the thread then post ok? Since you've been helpful in the past I'll point out for you why what you're saying makes no sense. Just because there is no burden to show patentability and there is a burden for the office to show why, on examination, the application has not been issued does not dictate a right to have your patent issued. Why? A simple fill in the blank should suffice to show you why, "I only have the right to have my patent issued when it appears, on examination, that I, the applicant *blank*". If you put in *am entitled to a patent under the law" then +1 for you! Guess what happens until then? No patent is issued, ever. This basically tells you something. That something is that if your application never appears to be patentable then something will never happen? Guess what that something is? Ahh yes. Your application will never be issued. Let me tell you something else, you know those cases that have 5 nonf's? Statutorily rejected, even if the references are rubish or the claims are not indefinite etc.. If it does not appear, on examination, that the applicant is entitled to a patent then we are to communicate that to the applicant. That does not mean that such communication must be correct. If you will, we have the "right" to be "wrong" until ordered by the court (on an appeal, or civil action) to do something other than reject, at least, by the statute that seems to be the case. Of course doing so might look bad, but that also is irrelevant to the discussion at hand.
"(I'm putting the "can't" back in applicant)" lulz, that's pretty funny! Good one! As we speak I will be putting the "ion" back in examination.
Posted by: e#6k | May 11, 2008 at 05:19 PM
"That does not mean that such communication must be correct. If you will, we have the 'right' to be 'wrong' until ordered by the court (on an appeal, or civil action) to do something other than reject."
Unbelievable ... actually it isn't unbelievable. Here we have an examiner, a federal government employee, that is stating that examiners do not have to follow the law until told to do so. You are an embarrassment to every examiner out there that tries to do the right thing.
You are drunk on the power that the USPTO provides its examiners (through lack of proper oversight). Ever hear of the expression "abuse of power." If your actions even come close to matching your attitude and your writing, you personify that expression. It is attitudes like yours that give government employees their well-deserved poor reputation.
"No patent is issued, ever. This basically tells you something. That something is that if your application never appears to be patentable then something will never happen?"
Yet again, you ask the wrong question. As stated in 35 U.S.C. § 102, "[a] person shall be entitled to a patent." The question that SHOULD be asked is whether you (as the examiner) can find something that makes the claimed invention unpatentable. If not, then allow the patent application to issue as a patent.
You are just the gate keeper. Once the applicant appears before the door, the applicant is entitled to go through the door unless you can show otherwise.
Posted by: pds | May 11, 2008 at 08:03 PM
"Here we have an examiner, a federal government employee, that is stating that examiners do not have to follow the law until told to do so."
No. 1, as you well know, I'm a crazy guy in a mental institute. This particular institute happens to be located off the side of I-95 as you approach Alexandria Va. No. 2, I never said that we don't have to follow the law. What I said was that there is no statutory requirement for us to be right in an action. If there were then why do you suppose there are so many 2nd nonf's coming your way (allegedly)? All those examiners would be fired already amirite? There are plenty of examiners that horrible art looks good to, and so it does not appear that you are entitled to a patent, sub in 112's etc. as needed. Just because some of us do good work here (we make pretty designs on paper) doesn't mean that everyone here is required to be perfect.
"You are drunk on the power that the USPTO "
No, I'm quite sober, though my belly is hurting right now, I totally need to cut back on the grande's. I was thinking about granting a patent this week, but lo and behold I lack that power! I suppose I should inform the applicant of why the patent is not being issued, shall we call this an objection or rejection? Hmm, since it's technically neither I don't suppose any notification is required by 132, I'll just set the case aside.
"You are just the gate keeper."
That's correct, I'm a gate keeper at a gate that not *required* to move until someone in a position of power inside says so or it appears the person wanting in is entitled to go inside. Funny enough, there are security guys downstairs that apparently do the exact same thing I do, I have to lol at that.
"Once the applicant appears before the door, the applicant is entitled to go through the door unless you can show otherwise."
Unfortunately for you, that's not what the statute says. If it did you would have cited it 1500 ways till sunday already.
"The question that SHOULD be asked is whether you (as the examiner) can find something that makes the claimed invention unpatentable."
Says who? You?
Alright let's cut the crp, your cuteness and mine are old.
Tell me pds, in re to the only thing of substance in your post, does 102 entitlment to a patent over-rule all the rest of the statutes for purposes of complying with 131? Section 131 is quite clear that you must appear to be entitled to a patent under the law. Does it mean some of the law, aka 102 or does it mean all of the law, 101, 102, 103, 112 etc? I see that 112, nor anywhere else, makes any specific mention of the availability of using 112 to reject an application. I wonder why it is so widely used? Either way your position is bonked, if you consider it to be entitled to a patent under all the laws then there is plenty of laws the application may fail, and if you consider it only 102 then apparently I've been making rejections all wrong (as has all of the office) and 103's saying a patent may not be obtained is irrelevant because the applicant is still entitled amirite?
In any case, "on such examination it appears that the applicant is entitled to a patent under the law" will always be the undoing of your position. What appears to one man to be one thing may not to another. It is of course a judgement call. A judgement call which you must convince someone up the chain of "power" to make in your favor so that you officially appear to be entitled to a patent, else, you get to appeal to the fed. circ. or undertake civil procedings if you ever want it issued. End of story. In the mean time I'll probably grant that patent this week.
Posted by: e#6k | May 11, 2008 at 10:29 PM
e#6k,
A habit I learned a long time ago and still practice is to always read the sections of Title 35 relied upon in an office action before addressing the merits of the action. Just now I took a quick look at 103 and 112 and noticed what I would call a "data drop". Of course 103 speaks in terms of one having ordinary skill in the art to which the invention relates. Curiously, 112 addresses itself to any person skilled in the art. Indeed this seems a bit unusual. An person only modestly skilled in the art may be totally mystified, and yet a person who knows the art like the back of his/her hand may fully comprehend the written description and be able to practice the invention.
I never cease to be amazed at how sections I have largely taken for granted contain subtle nuances that have previously escaped my attention.
Posted by: M. Slonecker | May 12, 2008 at 12:00 AM
e6k-
You're usage and interpretation of "rights" doesn't match any known legal interpretation and look on the surface like your random speculations. Rights are often subjected to procedural requirements - see my fourth amendment discussion above. I realize that none of that will make any difference to you. Probably the Supreme Court and entire history of jurisprudence is totally lost on this concept, but you are here to straighten us all out. Apologies for the interruption: as you were.
Posted by: Wasn't me | May 12, 2008 at 02:24 AM
"I realize that none of that will make any difference to you."
No, actually that does, it had in fact occurred to me during my postings that it might be taken that way. And the reason that it sounds that way is because I am taking the word "right" to be used in this case as a right without a positive condition coming to pass, i.e. that regardless of whether or not on examination it appears that the applicant is entitled to a patent under the law he is entitled to the issue of a patent. That is to say that examiners are either making rejections or objections or else they let the application fly on magic wings to the printer. Remember what the nature of the argument I'm making is, it is merely the argument that the examiner/spe/director are granting patents, as well as making rejections, as opposed to merely rejecting them if the need should arise, or just allowing it to go on it's merry little way. It in fact requires a positive confirmation activity on the part of the office to grant patents. If it were not for the self-entitled feelings of pds (and others he represents quite well) then the opposite argument, that patents are magically issued as long as the gate keeper doesn't get in the way, would never even be made because it is so outrageous. I have right now on my docket cases that "pray for the granting of a letters patent". Perhaps they feel like the office is not in the business of granting patents, they just felt like throwing that in.
Let me sum this up for you in a sentence. The issuance of a patent requires a positive action on the part of the office rather than merely the absence of a negative action.
More specifically, the statute does not perform the positive action on it's own, or otherwise require that it be taken in the absence of a positive action (verification by an employee of the office that it appears the applicant is entitled to a patent).
Posted by: e6k | May 12, 2008 at 03:24 AM
e6k:
No statutes perform positive actions on their own, so this one is hardly unique. The operations are as you describe, and yet applicants have a presumed right to a patent on their application. If the office sits silent at all levels refusing to lift a finger regarding an application, with no other reason than "we wish to remain silent and not act on this application", then a judge will eventually order the director to issue a patent on the application (or be held in contempt) because the applicant does not need to show anything and in our hypothetical the office has decided to say nothing. There would be other intermediate procedures, but in our hypo the office does not respond to any of those because we're testing the complete silence of the office.
Of course, in reality, the silent examiner would be fired and the application sent to another examiner who would bother to examine it, but we're already counting angels dancing on pinheads in this thread anyway.
Posted by: Wasn't me | May 12, 2008 at 03:40 AM
"the silent examiner" - I love it! I think Melville actually had e6k in mind when he wrote Bartleby, the Scrivener:
"In this very attitude did I sit when I called to him, rapidly stating what it was I wanted him to do—namely, to examine a small paper with me. Imagine my surprise, nay, my consternation, when without moving from his privacy, Bartleby in a singularly mild, firm voice, replied, 'I would prefer not to.'"
Had Bartleby been just a bit more hip, he would have thrown in an LOL or two.
Posted by: Leopold Bloom | May 12, 2008 at 08:40 AM
E#6K wrote "Just because there is no burden to show patentability and there is a burden for the office to show why, on examination, the application has not been issued does not dictate a right to have your patent issued."
Actually, that's Logic 101. If the Office must show why my patent application should not issue as a patent, then my patent issues, then the default position is my patent will issue.
It's not a "right." Contrary to what some posters on here think, there is no Constitutional right to a patent. But it is the law. If that's your premise, that's a minor semantic distinction.
The statute is worded such that the PTO has no choice but to issue my application as a patent unless it can prove it shouldn't issue. I would characterize this as a right.
Posted by: Lionel Hutz | May 12, 2008 at 06:26 PM
The "then my patent issues" should be "or else my patent issues" in my post of 6:26 pm
Posted by: Lionel Hutz | May 12, 2008 at 06:32 PM
"then a judge will eventually order the director to issue a patent on the application (or be held in contempt) because the applicant does not need to show anything and in our hypothetical the office has decided to say nothing."
What you are referring to good sir is a different method of having the patent issued, see the section about civil procedure. If you wish to pursue it then so be it. It still will not give you any actual, or presumed rights to the issue of a patent in the absence of the pto's action. You will notice that in the section on the civil action procedure method of obtaining a patent that it is basically the court issuing you a patent, rather than the examiner, which is permitted, but the process still required a positive action on the part of the gov. You will also notice something strange, you are only permitted to take civil action (at least under Title 35, idk about other ones that you may know of that might allow it) after you have appealed to the board, which of course you can only do after you are twice rejected. Idk, maybe there are other civil remedies that you can tell us about, I for one am interested to hear about it.
That said, I do not see any place in Title 35 that would allow for a judge to hold the director in contempt. What I do see is a section on civil action that allows a judge to adjudge the applicant entitled to a patent and thus authorize the director to issue a patent on compliance with the requirements of the law. Now, I'm not sure, does the part in 145 authorize the director to issue a patent as being in compliance (as judged by the judge) with the law, or does it merely authorize the Director to issue such patent on compliance with the requirements of the law (as is already the situation?!?!)?
IRL you think the examiner would be fired. I don't believe so. I'll tell you why. I know of some cases that are experiencing the very thing which you are portraying as a situation that could arise (sans the judgement part, yet, because applicant's rarely wish to forgo the option of the CAFC to instead get a civil action which they must pay for in full, See 145). And of course, all those app in the backlog? They're just the same as any app that an examiner has done a 99.9% complete examination on but which haven't been finished, at least in terms of being issued, or having an action rendered therefore. The only difference is workflow/docketing and let's not even into guys letting cases sit as their oldest new by doing makeup workflow from the amended docket. That's why they implemented the date case goals I imagine. Still, I haven't heard about anyone getting fired for not meeting a date goal. They can just say they're still working on that one and maybe tell the spe what the holdup with completing exam is. Maybe that hold up is that they don't feel as if it has been searched thoroughly enough, or something else.
Still waiting to see where or why there is such a presumption or actual right to a patent on their application. Overall, I disagree that any presumption or right exists or is implicitly present, there is merely a willingness on the part of the office to grant them, and that is all.
I loled Bloom. That is possibly the very best snippets of a paper I've read in a while. I'll read the whole thing tonight sometime. http://www.bartleby.com/129/
"It is not seldom the case that when a man is browbeaten in some unprecedented and violently unreasonable way, he begins to stagger in his own plainest faith. He begins, as it were, vaguely to surmise that, wonderful as it may be, all the justice and all the reason is on the other side. Accordingly, if any disinterested persons are present, he turns to them for some reinforcement for his own faltering mind."
This happens all too often on these boards amongst you law folk except it is usually happening when the browbeating is not especially violently unreasonable, but is instead more like extemely reasonable.
"Actually, that's Logic 101. If the Office must show why my patent application should not issue as a patent, then my patent issues, then the default position is my patent will issue."
First off the statement you quoted of me was perhaps my mistating what the statute requires because I was addressing an alternate point that did not require me to get very specific. But, forgetting for the moment that logic dictates that there may be innumerable things other than a rejection/object that might be the cause of your application not issuing (such as my not having the power to grant patents), the statute does not say that the office must show why your patent app should not issue. What they must do is notify you of any objections/rejections that the examiner may wish to make. These two statements are not synonymous, you merely take them to be because you wish to base a fallacious argument upon them being so. I could go on, but that should suffice.
"The statute is worded such that the PTO has no choice but to issue my application as a patent unless it can prove it shouldn't issue."
At precisely which moment must a patent be issued? Hmm? I was unaware of any statutory deadline. Maybe that's because there isn't one. Maybe that's why there is even the possibility of ever having a backlog, because the apps are allowed by the statute to sit and sit and sit. Also, you should notice that there is a specific statute for situations where the pto chooses not to issue your application, therefore it must obviously be allowable for the office to take such an action. You can find this statute easily it refers to civil action, though apparently you can only even do that after you've been to the board. 145? iirc. I'm unaware of any other means to obtain a patent from the office. Perhaps some suit about administrative inaction or some other such thing that I'm not familiar with?
Posted by: e#6k | May 12, 2008 at 06:44 PM
Just great, the PTO will waste more money on these rules which could be better spent on hiring new examiners and providing the current ones additional bonuses.
Posted by: patent leather | May 12, 2008 at 06:50 PM
Mr. e6k -- So the patent office has complete discretion as to whether it examines properly filed patent applications? It can even wait 20 years to examine it?
Posted by: question | May 12, 2008 at 07:10 PM
Well question, let me ask you something first, what do you think the pending time is going to be when the backlog reaches 40 million?
But as to your question, no, it does not have discretion as to whether it examines properly filed applications. I have never stated such a thing. I have stated that they have discretion as to how long the examination takes, and how long it takes to commence examination. Also I have stated that applicants may have legal remedy for such a situation lasting an unusual amount of time. As to 20 years, well, I guess we'll see if the pto can wait 20 years in about 15 years if things keep going the way they are. Anyone heard the delta on the backlog lately?
Posted by: e6k | May 12, 2008 at 08:44 PM
The delta would stop growing if they got rid of the nonsense of the last few years:
1. Bouncing amendments because the label on claim had a minor error.
2. Bouncing appeal briefs for immaterial matters of form
3. Second pair of eyes gamesmanship that overrules examiners.
Posted by: buttercup | May 13, 2008 at 12:14 PM
The Fed. Circuit does not have jurisdiction to hear this appeal. The challenge was under section 702 of the APA, not title 35. Nothing in 28 USC 1295 gives the Federal Circuit jurisdiction.
Posted by: Jurisdiction? | May 14, 2008 at 09:14 AM
The Federal Circuit can hear appeals of cases brought in the District Courts under 28 USC 1338, which states, in relevant part:
(a) The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents, plant variety protection, copyrights and trademarks. Such jurisdiction shall be exclusive of the courts of the states in patent, plant variety protection and copyright cases.
Does 35 U.S.C. § 2. give rise to a cause of action? No.
I know patent lawyers think we should be treated differently, but the PTO's rulemaking should be treated like every other agency's rulemaking. The Federal Circuit can only hear cases within its narrow jurisdiction that is outlined in 28 USC 1295. I rather this apppeal go to real judges who actually understand these rulemaking issues.
Posted by: Jurisdiction? | May 14, 2008 at 09:27 AM