Patent Law

Let's Do It Our Way

By Gary Odom and Jordan Kuhn

The USPTO has filed a reply brief in appeal for its righteous battle to enact its Final Solution, changes limiting extravagance on claims and continuations. According to the brief, a rehash of earlier cogent and compelling arguments, the rules are consistent with the Patent Act, and are within the Office's rulemaking authority. If there is a difference between "substance" and "procedure," which the PTO does not perceive, the rules are merely procedural.

Here's a procedural tidbit: make an applicant search the prior art if s/he wants a lot of claims.

The statute is silent on searching, and thus the USPTO may fill the gap. Here, the Office is doing exactly that - promulgating a regulation for searching by an applicant because examiners make more errors as the number of claims increase. The requirement does not shift the examination burden.

That's right, requiring the applicant to search the prior art does not change the examination burden. Regardless of the prior art, the examiner still gets to "make more errors as the number of claims increase." No change, procedurally or substantially. Thus the above statement clarifies that applicant search fee for examination is merely procedural, enriching USPTO coffers with no change in examination quality.

Under the desired Final Solution, an applicant may have a procedural change of being required to search the prior art. There is nothing substantial about it. If an applicant doesn't find any invalidating art, the search had no substance. If an applicant finds invalidating prior art, the application had no substance. Either way, no substance.

We can all agree that the old ways are the best. And new ways are old ways if they're new in an old way, like having a federal agency tell you, peasant-citizen, about a few minor tweaks, how things ought to be, because, gosh, they're just here to help.

The cure for insomnia: read the brief. For those thirsting for more, but not willing to be bored silly, read Patent Docs.

Attitude inspired by that beacon of enlightenment, the delightful and refreshing Republican brain trust, Ms. Sarah Palin, whose existence on the Presidential ticket existentially poses the question: how fast can William F. Buckley spin in his grave?

Full post as published by The Patent Prospector on October 16, 2008 (boomark / email).