Patent Law

Gene Quinn (a founding member of White + Quinn P.C. and IPWatchdog.com, lead author of PLI Patent Practice Center blogand teacher of a patent bar review course for the Practising Law Institute) and John White (a founding member of White + Quinn P.C., Adjunct Law Professor at John Marshall Law School and creator of the PLI Patent Bar Review Course) have recently launched the PatentFoolsblog. They offer the following explanation for their launch, "The point of PatentFools is to try and identify wrongs, articulate positions, influence decision-makers and have some fun saving the world for generations to come."

The following is excerpted from their August 22, 2008 post titled,"PTO Should Withdraw GSK Appeal":

The United States Court of Appeals for the Federal Circuit seems to have dealt a big blow to any hopes the Patent Office and the Department of Justice had about possibly convincing the court to overrule the decision of Judge Cacheris with respect to the permanent injunction of the proposed claims and continuations rules.

In Cooper v. Dudas, the Federal Circuit was asked to decide whether the the Patent Office had the authority to interpret the term ?original application,? a term used in a section of the American Inventors Protection Act.  The particular section of the law in question was one that authorized for the first time the ability to file an inter partes reexamination of an issued patent.  Previously, if you wanted the Patent Office to reconsider a particular issued patent you would request a reexamination and then not have the ability to participate in the reconsideration.  With the advent of inter partes reexamination now you can both ask for the reexamination and participate in the proceeding as the Patent Office reviews the issued patent.

The Federal Circuit ruled that the Patent Office does have the authority to interpret statutes, which is the obvious right decision.  The PTO is charged with implementing the law, so it is well established that they, along with other agencies charged with implementing laws, have the authority to interpret the statute.

What makes this decision important, however, is that the Federal Circuit clearly stated what authority the Patent Office has, and as written it is clear that the Patent Office does not have the authority to implement substantive changes to the law surrounding how many continuation applications can be filed and how many total claims can be obtained on a single invention.

Read the full post here and take the opportunity to look around what promises to be a great addition to the world of patent blogs.  Congratulations to Gene and John on their launch!