Saturday, December 06, 2008

IPWatchdog summarizes Tafas oral argument

An mp3 of the oral arguments in Tafas is available. The gist of the report on the Tafas oral arguments on Dec. 5 from IPWatchdog-->

It is hard to imagine that GlaxoSmithKline and Dr. Tafas could have drawn a better three judge panel then the did for this appeal of Judge Cacheris’ ruling. The judges assigned to the panel hearing the case were Judges Rader, Bryson and Prost, who took turns laying it on the government attorney, USPTO General Counsel Toupin. It is hard to imagine based on the barrage of questions thrown at Toupin that this panel is going to do anything other than affirm Judge Cacheris’ decision and rule that the claims and continuations rules were beyond the authority of the Patent Office and cannot be implemented.

Also, compare footnote 10 of the 2006 article The Proposal To Restrict Continuing Applications, 88 J. Pat. & Trademark Off. Soc'y 743 with IPwatchdog text-->

The only thing that I wish that Desmarais or Moore had brought up was the fact that these rules would have done nothing to expedite the patent process. In testifying before Congress in February of 2008, Undersecretary Jon Dudas explained to Congressman Berman that these rules would have minimal impact on the number of new applications filed and estimated that even with the rules there would only be a reduction in the number of application on the order of about 5,000 applications. So all of this to expedite the patent process and address the backlog for a benefit of about 1%? And the rules affect the most commercially relevant of all patents.

**John White made a reference to Kafka and noted of Chevron arguments:

Judge Bryson had one of those "you can't be serious" moments relating to the PTO view of what latitude they believed they had in view of Chevron deference. He restated the PTO argument thusly: The PTO is to be given Chevron deference to tell the Court what it is they should be given Chevron deference for under the statute. Sure, that's it PTO. You're to be given deference to interpret the statute as to PTO operations. What becomes onerous or inconvenient, eliminate. Sort of a "Post Office" view of the world. (Stop doing what is hard, and charge more for what is left to you to do because, after all, you still need the revenue!)

[Of Kafka--> Parker B. Potter, Jr., Ordeal by Trial: Judicial References to the Nightmare World of Franz Kafka, 3 Pierce L. Rev. 195 (2005)["Since the mid 1970s, however, Kafka's name has appeared in more than 400 opinions written by American state and federal judges."] ]

See also 271blog Tafas v. Dudas Oral Arguments Completed at the CAFC

***Lest we forget, the USPTO, back in the beginning, relied on Lemley and Moore's "Ending Abuse" law review article in BULR for these rules. The expected CAFC decision will be a stinging rebuke to a number of legal academics. Of the Lemley arguments, it turned out that "there was no there there."

DowJones quoted Lemley in the text:

Stanford University law professor Mark Lemley said that if the patent office loses, any reforms in the patent system will have to come from Congress, which has been unable to move forward on patent-reform legislation in recent years.

"It's a significant piece of any patent-reform effort to try to weed out abuses of the continuation process," Lemley said of the patent office rules. "If the patent office can't do this, it's not clear what can be done."

See also

Ravicher as a recycled Lemley-ism?


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