Tuesday, November 18, 2008

The PTO should wait for the courts on Tafas? Is there a choice?

The law review article entitled BAD MEDICINE: ECONOMIC DISADVANTAGE AND CLAIM LIMITATION IN AN AILING PATENT OFFICE [Elisabeth Marie Koehnemann, 15 J. Intell. Prop. L. 343] ends with the following conclusion:

Whether or not the claim limitation rules proposed by the PTO are finally implemented, the significant problems present within the PTO will still burden the already sluggish patent prosecution system. The new rule changes will make the PTO's job easier by shifting more of the time and expense burden of examining a patent application to the applicant. The implementation of the new rules may result in fewer applications being filed or allowed, with narrower patent coverage on any patents ultimately awarded. A reduction in patent filings will ultimately have a negative effect on the American people because this will likely lead to less innovation and disclosure of inventions to the public.

It is better to adapt the PTO procedures than to encourage inventors to file less often. n163 Given the significance of these changes, the PTO should not adopt new rules unless and until the Court decides the legal challenges relating to the [page 367] proper rulemaking authority, n164 or Congress acts to address the issues through the pending patent reform legis-lation. Without a proposal arising from extensive commentary from not only the PTO but also patent practitioners and attorneys, adopting unreasonable new rules with questionable statutory authority would be a harmful and inefficient maneuver for the U.S. patent system.


Footnote 47 observes: Yet, the utility of relying on published patent grant rates when making patent reform decisions is questionable due to difficulties in calculating patent grants rates. See Ron D. Katznelson, Bad Science in Search of "Bad" Patents, 17 Fed. Cir. B.J. 1 (2007/2008) (discussing complications involved in grant rate calculation); Mark A. Lemley & Bhaven N. Sampat, Is the Patent Office a Rubber Stamp? 4-9 (Stanford Public Law Working Paper No. 999098, 2007), available at http://papers.ssrn.com/sol3/papers.cfm?abst ract id=999098 (identifying data controversies in calculating patent grant rates).

Footnote 38: See Mark A. Lemley & Kimberly A. Moore, Ending Abuse of Patent Continuations, 84 B.U. L. Rev. 63, 71-72 (2004) (describing the distribution of prosecution time including a patent with a total prosecution time of more than forty-four years).

Author Koehnemann has yet to connect the dots between Lemley's rejection of Clarke's approach/adoption of Quillen's approach in Ending Abuse of Patent Continuations and Lemley's acceptance of Clarke's approach in Is the Patent Office a Rubber Stamp? The hand is quicker than the eye for some.


See Equal Protection Violations at the US Patent Office, which mentions US patent 7,451,889 about a carry-out food container.


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