Anticipate This!™ | Patent and Trademark Law Blog

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.”  

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