Anticipate This!™ | Patent and Trademark Law Blog

GSK Comments During Public Comment Period.

Posted in General Commentary by Jake Ward on October 31, 2007

A question was raised earlier today by an AT! reader as to why GSK waited until the “last minute” to raise the issues of the present suit against the USPTO?  We thought this an excellent question.

The AT! notes that GSK did submit comments during the public comment period for the USPTO’s consideration.  GSK’s comments may be found here.   

Upon review, a number of the comments are strikingly similar to the arguments made in the GSK complaint.  For example, see the below excerpt from the Executive Summary of GSK’s comments:

(May 2, 2006)

While GSK appreciates the position in which the Patent Office currently finds itself, GSK must oppose the proposed rulemaking because: (1) the Patent Office lacks authority to implement the proposed rulemaking; and (2) even if the Patent Office were to have authority, the proposed rulemaking will not work to meet the stated goals of the Patent Office of reducing workload and improving quality of examination. If the Patent Office decides to enact the proposed rules despite the lack of authority to do so, GSK requests consideration of alternatives, such as those discussed below. The proposal of  alternatives by GSK should not be viewed as an admission by GSK that the Patent Office has the authority to enact any of the proposed alternatives or even that GSK views the alternatives as rendering the proposed rules acceptable. GSK reserves the right to challenge any final rules through the appropriate legal channels.

At a minimum, GSK submits that the following points should be considered when revising the proposed rulemaking: (1) clarify sufficient showing for additional continuation/RCE; (2) provide a non-limiting list of reasons allowed for filing additional continuations or RCEs; (3) revise standard for obtaining additional continuations/RCEs; (4) draw a distinction between RCEs and continuations; (5) do not make the proposed  rules retroactive; (6) allow divisional applications to claim priority to parent; (7) consider allowing for deferred examination; (8) clarify what is meant by language of proposed 1.78(f)(1); and (9) clarify what is meant by “substantial overlapping disclosure” in proposed 1.78(f)(2).

As the Patent Office has been most solicitous of comments regarding ways to improve the proposed rules rather than comments attacking the rules as unworkable, the body of these comments is organized to focus first on proposed alternatives, followed by an explanation of the reasons that the Patent Office lacks authority to enact the proposed rules as well as reasons that the proposed rules will not be effective to meet the stated goals of the Patent Office.

(Emphasis mine).

These and the many other comments submitted during the comment period apparently did not sway the USPTO significantly, as evidenced by the promulgation of the new claims and continuations rules package (now temporarily enjoined).  Your comments are always welcomed here, however, so feel free to leave us your thoughts!

USPTO Notice of Preliminary Injunction.

Posted in Practice Commentary by Jake Ward on October 31, 2007

Per this USPTO notice, early evening of October 31st:

The United States Patent and Trademark Office (USPTO) published a final rule notice in the Federal Register to revise the rules of practice in patent cases relating to continuing applications and requests for continued examination practices, and for the examination of claims in patent applications. See Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications, 72 Fed. Reg. 46716 (Aug. 21, 2007) (Claims and Continuations Final Rule).  The final rule notice published in the Federal Register indicates that the effective date for the changes to the rules of practice in the Claims and Continuations Final Rule is November 1, 2007.

On October 31, 2007, the United States District Court for the Eastern District Court of Virginia, however, issued a Preliminary Injunction enjoining the USPTO from implementing the changes in the Claims and Continuations Final Rule.  Therefore, the changes to the rules of practice in the Claims and Continuations Final Rule will not go into effect on November 1, 2007.

USPTO employees are to continue processing and examining patent applications under the rules and procedures in effect on October 31, 2007, until further notice.

This Web site will be updated and USPTO customers should monitor this Web site for any updated information.

To proceed to the previously-prepared materials regarding the Final Rule, click here.

JW Note:  One may question why it took USPTO management so long to post this notice, particularly when the IP blogosphere was made aware (and was busy spreading the word) of the PI around noon today?

USPTO Enjoined From Making Rules Effective.

Posted in Litigation Commentary by Jake Ward on October 31, 2007

Per the distinguished gentlemen at the PLI Blog (link), GSK has succeeded in its injunction hearing at District Court (E.D. Virginia) this morning.  A preliminary injunction has been issued to block the new claims and continuations rules from taking effect tomorrow, November 1st, as orginally scheduled.  A decision on the merits of GSK’s case will be made in the coming months.

According to John White, “there was an audible sigh in the courtroom when Judge Cacheris said the rules were enjoined.” It is safe to say that many more audible sighs will be heard today in patent law offices nation-wide.

JW Update, 5:42 PM:  The Preliminary Injunction order was just released.  May be found at the AT! here.  Many thanks to Gene Quinn and John White at the PLI Blog for staying on top of this matter and keeping the IP blogosphere updated throughout the day!

They Invented What? (No. 71)

Posted in They Invented What? by Jake Ward on October 31, 2007

JW Note:  Wishing you a Safe and Scary Halloween 2007! 

U.S. Pat. No. 5,569,036:  Custom fit teeth. 


What is claimed is:

1. A method of preparing an anatomically disproportionate artificial tooth apparatus for use in a human mouth with human teeth, comprising the steps of:

(a) molding an anatomically disproportionate artificial tooth having an interior cavity;
(b) thereafter inserting an impression compound into said interior cavity;
(c) thereafter coating said interior cavity with said impression compound forming a liner whereby an anatomically disproportionate artificial tooth assembly is formed;
(d) thereafter positioning said anatomically disproportionate artificial tooth assembly over at least one of said human teeth in said mouth;
(e) thereafter waiting 3 to 10 minutes with said anatomically disproportionate artificial tooth assembly in position whereby said impression compound sets; and
(f) thereafter removing said anatomically disproportionate artificial tooth assembly from said mouth.


Senator Schumer Asks PTO to Delay Implementing New Rules.

Posted in Practice Commentary by Jake Ward on October 30, 2007

On Thursday, October 25, 2007, Senator Charles Schumer (D-NY), a Judiciary Committee member, sent the USPTO a letter raising concerns about the claims and continuations rules and requesting a delay in implementation of the new rules so that all parties can make further inquiries. 

The letter and further commentary are available via Gene Quinn at the PLI Blog.

S. 1145: Patent Reform Act of 2007 – Update.

Posted in Statute Commentary by Jake Ward on October 30, 2007

In case you didn’t have enough to worry about with the upcoming implementation of the new USPTO claims and continuations rules (pending a preliminary injunction in GSK v. USPTO, of course) below is a quick update on the Patent Reform Act of 2007.

S. 1145 is presently being considered by the Senate.  The bill is sponsored by Sen. Patrick Leahy [D-VT], Sen. Robert Bennett [R-UT], Sen. John Cornyn [R-TX], Sen. Larry Craig [R-ID], Sen. Michael Crapo [R-ID], Sen. Orrin Hatch [R-UT], Sen. Ken Salazar [D-CO], Sen. Charles Schumer [D-NY], Sen. Gordon Smith [R-OR], and Sen. Sheldon Whitehouse [D-RI].  

On September 7th, 2007,  identical bill H.R. 1908 passed the House by roll call vote (73% of Democrats supporting, 67% of Republicans opposing.)

Notable provisions of S. 1145 include:

  • Defining “inventor” to include a joint inventor and coinventor;
  • Switching to a first-to-file system from the present first-to-invent system; 
  • Revising procedures for patent interference disputes;
  • Revising requirements for an inventor’s oath or declaration to allow substitute statements in specified circumstances (e.g., death or disability) and supplemental and corrected statements;
  • Allowing a third party assignee (other than the inventor) or a person with a proprietary interest to file a patent application;
  • Modifying provisions relating to damages for patent infringement to: (1) require a court to conduct an analysis of a patent’s specific contribution over prior art; (2) allow increased damages for willfull patent infringement; and (3) expand the prior user defense;
  • Renaming the Board of Patent Appeals and Interferences as the Patent Trial and Appeal Board and revising provisions relating to the Board’s composition, duties, and authorities;
  • Allowing a person who is not the patent owner to file a petition with the Board to cancel a patent as invalid (post-grant review), and setting forth procedures for the consideration of such petitions, including provisions to prevent harassment of patent owners and abuse of process;
  • Allowing third parties to submit documents relevant to the examination of a patent application; and
  • Revising venue requirements for civil patent actions against individuals and corporations to allow actions to be brought in the judicial district where either party resides (currently, where the defendant resides) or where the corporation has its principal place of business or was incorporated.

Information available via GovTrack:  An independent, non-partisan and non-commercial website that brings together information on the status of federal legislation, voting records, and other congressional data from official sources.  Also includes floor speeches on the legislation, which are quite interesting to read.

See also comments from Patently-O related to the bi-partisan nature the present lack of the requisite 60 votes to close debate on the bill.

Unabashed About Their Typical Prosecution Strategy.

Posted in Litigation Commentary by Jake Ward on October 29, 2007

The U.S. Patent Office has filed a reply brief in GSK v. USPTO, available via Patently-O here.

AT! notes one set of comments in the brief that state: 

Plaintiffs are unabashed about their typical prosecution strategy . . .

whereby Plaintiffs file

. . . a first patent application containing a broad disclosure with the understanding that [they] will prosecute narrower and/or additional patent claims in continuing applications, based on further extensive research.

While this type of strategy may be advantageous to Plaintiffs and others, its effects on the efficiency of the USPTO are profound.

Also notable in the Patent Office’s arguments is the statement that the USPTO will suffer considerably more harm than Plaintiffs if the Court issues a preliminary injunction.  Specific harm alleged by the Patent Office includes: 

1) the loss of revenue due to the considerable time spent in preparing and training (and retraining if necessary) USPTO employees on the new rules;

2) expected critical computer system problems due to changes made to the computer systems in anticipation of the new rules; and 

3) the hampering or halting of the anticipated synergistic effect of the new rules when combined with other recent and proposed rules (accelerated examination, IDS, alternative claims, etc.) to “begin healing [the] wounded [patent] system.”  

AIPLA Amicus Brief in GSK v. USPTO.

Posted in Litigation Commentary by Jake Ward on October 26, 2007

The American Intellectual Property Law Association (AIPLA), feeling pressure from its membership, filed an amicus brief yesterday with the E.D. Virginia in support of GSK’s challenge to the new USPTO claims and continuations rules. 

The brief focuses primarily on the irreparable harm that the rules will cause, both in signficant loss of patent rights and in compliance costs.  

A copy of the brief is available via the PLI Blog here.