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!

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