Tuesday, November 17, 2009

Dudas whacked by PatentHawk, but what about Lemley?

In a post titled Heritage of the Heretic, Gary Odom [Patent Prospector / PatentHawk] goes after former-USPTO Director Jon Dudas:

In the ultimate backfire, political hack Jon Dudas has left his mark on the patent office. Dudas demeaned the PTO by being openly hostile to its bread-and-butter clientele, patent applicants, with proposed rules that would limit claims and even applications, in a banal attempt to address pendency.

There was a link to Patent Docs, which discussed the CAFC decision, but which did not mention the name Dudas. There is also a link to Patently-O, wherein the word "Dudas" arises once, in a comment:

However, a caveat in the Tafas case: "Because this case involves the legality of the Final Rules, a determination of their validity does not turn on facts unique to a particular plaintiff or on any disputes regarding such facts" Tafas v. Dudas, 541 F. Supp. 2d 805, 808

The "end of the proposed rules" came under the Kappos regime, whose request for vacatur of the Cacheris decision within ED Va got no traction at the CAFC:

The motion’s statement that an intervening regulatory change is directly analogous to an intervening statutory change is not persuasive. The agency does not control Congress; but it does control the decision to rescind the regulations. Thus, it
was the USPTO (the losing party in the district court action) that acted unilaterally to render the case moot, and vacatur is not appropriate.

Way back at the beginning of this saga, there were a lot of folks who criticized the proposed rules. Many people have strongly criticized former Director Dudas as to the rules, and whether or not they would have had a significant impact on patent application backlog. [LBE himself brought up this point to Eli Kintisch, who once wrote a puff piece on continuations for the journal Science, but who chose to ignore the obvious disconnect between the rules and impact on backlog.]

However, not so many people, writing on blogs or elsewhere, have discussed the role within the rules story of Mark Lemley and Kimberly Moore, who, via their law review article "Ending Abuse of Patent Continuations" [ 84 B.U. L. Rev. 63 (2004) ], served as the inspiration for the proposed rules. Theirs was the one law review article cited in the Jan. 06 Federal Register to justify the need for the rules. It was Lemley/Moore who minimized and challenged the article of Robert Clarke, an employee of the USPTO, who tried to set the grant rate/continuation interrelation right. [But of Lemley/Moore and the rules, see Comments on continuation practice proposal appearing in the Federal Register (Jan. 2006) ]

See also

Law Review on continuation application issue

Ta-tah to Quillen/Webster/Lemley?

The 97% grant rate that never was

Issue of continuations in patent reform proposal, H.R. 2795

"Hitler" attacks the anti-IP academic elite

**Comment to Patent Docs on 23 Nov 09

The issue expressed in the text -- They also argue that applicants assert the right (purportedly improperly) to submit claims in such continuation applications that encompass subject matter not disclosed in the specification and in fact developed by their competitors. -- was discussed in JPTOS, pp. 743-746 (Sept. 2006).

Nuances related to the JPTOS article appear in

***A comment at discovermagazine evokes the lack of penetrating thought about some of the law review articles in patent reform:

We may never know how much of the scandal stemmed from an ideological crusade, and how much was simply ambition to rise in academia. Unfortunately, the current system of reward for scientists, in which their rank is largely determined by a quick perusal of the length and source of a publication list by funding bureaucrats rather than a penetrating analysis of their work by true peers, fosters such shoddy work.

The academic work underlying patent reform has been shoddy.


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