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. 

 faketeeth

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.

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