Friday, October 09, 2009

What happened to Dr. Triantafyllos Tafas?

In an article titled New Chief of Patent Office Takes Aim at a Massive Backlog , AMY SCHATZ writes:

U.K. drug maker GlaxoSmithKline PLC challenged the Bush administration's rules in federal court in 2007. It was joined by pharmaceutical and tech companies and universities, which worried the rules would limit their ability to get quality patents.

There was no mention of Dr. Triantafyllos Tafas, who was the first to challenge the rules.

Even the USPTO press release, which does mention Tafas, obscures the fact that Tafas was the first to challenge the rules:

In the fall of 2007, GlaxoSmithKline and Dr. Tafas brought suit against the USPTO in the U.S. District Court of the Eastern District of Virginia and sought a preliminary injunction to stop the Claims and Continuations Rules from becoming effective, which the district court granted. In April 2008, the district court ruled in favor of GlaxoSmithKline and Dr. Tafas on the merits and permanently enjoined the rules, preventing the agency from implementing them. The agency appealed to the U.S. Court of Appeals for the Federal Circuit.

Shatz also wrote:

Although the office has traditionally operated with a backlog, the pile has increased in recent years. Even though there has been a drop-off in applications during the recession, it hasn't helped examiners catch up. One reason is that overtime has been cut, so examiners spend fewer hours processing applications. What's more, because the office is entirely funded by user fees, the dropoff has left it with a budget gap.

What Shatz neglects to disclose is that the proposed rules on continuing applications would have had marginal impact on the backlog, affecting fewer than 5% of all applications. Further, it isn't clear that examiners spend fewer hours processing applications; it is more a question of "when" they spend those hours. Shatz also did not mention that when the USPTO was hiring new examiners, the USPTO was losing about one examiner for every two hired.

In the movie "State of Play", hardcore investigative reporter Cal McAffrey (played by Russell Crowe) makes various comments about the "upchuck" put up by bloggers, as he shows the ropes of real reporting to blogger colleague Della Frye. In the real world of intellectual property reporting, it is the IP bloggers, not the reporters, who are getting it right. The whole history of the rules package, including the influence of the law review article "Ending Abuse..." by Lemley and Moore and the related "quality" papers by Quillen and Webster (and the interplay with the paper of USPTO employee Robert Clarke) is being altered before our eyes by the "popular" press. In the real world, unlike the world of "State of Play," deadlines are not pushed forward so that ample facts can be gathered, and stories are written based on what a writer can find out in a very short time.

In a piece titled R.I.P., Patent Rules Changes, Hello Patent Reform Bill Push , Erik Sherman wrote:

Had the rules gone through, the fallout would have settled mostly on other industry: biotech and pharma. In fact, many high tech giants supported the package — largely because it would have helped lock out newcomers to the IP banquet table. As competitive tactics, it may have made sense.

Erik might take note of the fact that the IT folks were themselves quite adept at writing continuing applications, and putting out low-quality applications.

See for example Comments on Proposed Changes to the Rules on Continuing Applications, published 71
Fed. Reg. 48 (3 January 2006)
including the text:

With continuations, people are "basically refiling the same application
over and over again," said David Simon, chief patent counsel at Intel Corp. "If you are
not happy, you can just come back again, and the patent office can never be sure when
they are finished with a case. In some instances, examiners just give up." One notes that
Intel is no stranger to continuation practice, as the following (partial) list of patents
assigned to Intel illustrates:

[long list of Intel patents granted on continuation applications]

Of "quality", see, for example,
IBM patent application on scheduling business meetings
, which begins

In the flap that followed IBM's patent application on outsourcing methods (20090083107), IBM spokesman Steve Malkiewicz said Monday, 30 March 09 the application would be withdrawn because it "is contrary to our patent policy on business methods."

Of Sherman's text on the wish list in patent reform, including:

pre-issuance submissions of information, meaning third parties would be able to offer information to challenge whether a patent should be issued before it’s issued but after the application is made public

Please note that CURRENTLY-EXISTING 37 CFR 1.99 (a) states:

A submission by a member of the public of patents or publications relevant to a pending published application may be entered in the application file if the submission complies with the requirements of this section and the application is still pending when the submission and application file are brought before the examiner.


Post a Comment

<< Home