Wednesday, October 31, 2007

Coverage of the hearing on SKB's request to enjoin implementation of USPTO rules

John White, Director of the PLI Patent Bar Review Course, will be in attendance on October 31, 2007 at ED Va for the GlaxoSmithKline preliminary injunction hearing. Mr. White will call Gene Quinn with updates throughout the day regarding how the hearing is going, providing his insights and impressions. Quinn will then immediately post the reports, thereby providing near real time reports published on the Patent Practice Center blog. The hearing starts at 10:00 am on Wednesday, October 31, 2007.

Patently-O has the text:

There is a good possibility that late on Halloween night, the CAFC will receive an emergency motion for a preliminary injunction or temporary restraining order. How does this work:

Further, within the Patently-O post, Dennis Crouch says:

Although the PTO used Judge Moore and Mark Lemley's article as academic firepower. This rule change is certainly not a "result" of their article.

This is one point in time where the plaintiff would wish for a former district court judge sitting on the bench.

As Bill Clinton might say, it depends on what you mean by "result." Some of these issues were covered in LBE's first comment to the USPTO. Note therein that the USPTO did not even correctly refer to the relevant page in the Lemley/Moore article, which article is "Ending Abuse...", 84 BULR 64 (2004). The comment ended: "The USPTO's reliance on a law review with known, uncorrected, factual errors might be questioned."

Although "Ending Abuse..." might not have been the only reason for the rule change, it was definitely a significant factor. Sadly, "Ending Abuse..." not only contained factual errors but also arguments which were no longer relevant in the year 2004.

Additionally, the comment to which Crouch responded:

how interesting that Judge Moore may have to hear arguments about the new rules that were a result of her article bashing RCEs!

fails to understand that the 2004 Lemley/Moore article barely touched RCEs, for which no data was presented in the 2004 article. When data on RCEs later became available, it became apparent that Lemley and Moore had misunderstood the primary reason people file "continuing" applications.

In passing, LBE tried to post comments on Patently-O but got into a cycle of verification code being repeated. The post finally took:

Of the posts by Crouch, Noonan, etc. concerning the law review article by Professor Lemley and (now) Judge Moore which appeared in volume 84 the Boston University Law Review [BULR; "Ending Abuse of Patent Continuations"], please note

#1. The 2004 law review article in BULR barely touched on RCEs. There is no significant data on RCEs presented in the article.

#2. When data on RCEs later came out, it became apparent that many of the Lemley/Moore conjectures about continuing applications were simply wrong.

#3. There were significant factual errors in the BULR article.

#4. Professor Lemley is not a registered patent attorney. In a later article in the Stanford Law Review on nanotechnology, Professor Lemley credited Gary Boone as being the inventor of the integrated circuit, and did not mention Noyce or Kilby.

#5. In the text in the Federal Register, the USPTO did not even cite the relevant page of the BULR article.

Refer to the April 2006 comment on the proposed rules at


Blogger David Woycechowsky said...

I kind of like the new rules.

I think they will spur patent prosecutors to clearly separate conceptually separable features at an earlier stage, and I think that is useful (long run) for the patentee.

I think they will focus thinking about obvious versus non-obvious permutations of prior art elements at an earlier phase. Now that the standard of non-obviousness is "common sense" that highly subjective threshold should be self-imposed by applicants, and I think the 5/25 rule encourages that to a reasonable degree.

I also think the new rules will cause inventorship to be credited more honestly, even though the rules theoretically create incentives to credit inventorship less forthrightly in certain cases.

I also think the new rules work to the economic disadvantage of large applicants, but not so much to the disadvantage of small applicants.* For example, if an inventor has less than 5/25 total claims to her name, then the 5/25 rule will not impact her. I guess whether this is a good or bad thing depends on whether one's clients are small or large.

Will be interesting to see what happens in the hearing. Will be a lot easier for me, personally, if they just go back to the old way. So, that would be okay with me, too, of course.

My pet peeve with the new rules: You should be able to initially file as many claims as you want, so long as your restriction request, if granted, would put the resulting applications in compliance with the 5/25 rule. These battles over restrictions should be had with a single examiner and under a single application number, rather than be hashed with with x different examiners in y(<=x) different cases.


* by way of contrast, some of the "compulsory license" stuff coming out of the courts these days is terrible for the small applicant (perjoratively aka the "troll").

5:56 AM  
Blogger David Woycechowsky said...

and my BlackBerry is buzzing off the hook as the new rules are enjoined.

11:17 AM  

Post a Comment

<< Home