Patent Law

Dead Man's Hand

By Gary Odom and Jordan Kuhn

Lame duck USPTO lawyer James Toupin did his best to sew a silk purse from a sow's ear in oral arguments at the CAFC today, in USPTO v. Tafas & GSK. Of course, anyone who will say anything to win arguments is oxymoronic to having integrity. In this case, the disgraceful USPTO argued that its rules to limit continuations are piddling, while the reality is the rule changes are substantial, and the likely impacts considerable.

Hal Wegner on the PTO sham of it all.

In the rebuttal argument, attention was focused upon the "hard limit" that the PTO has set of two continuing applications. The General Counsel vigorously defended the rules as permitting additional continuing applications through a petitions process. Yet, it was never mentioned that it would be unlikely that applicants filing a petition would receive a timely answer. Since the PTO fails to issue petitions decisions in a timely manner, the deadline for a continuation would expire before a decision on the petition is reached. The PTO's argument against the "hard limit" is a sham because the PTO cannot be counted upon to render a timely decision on petitions.

The presiding judge pointedly questioned Toupin about the rules limiting claims. Toupin answered there was no limit, because any applicant could go whole hog by filing an ESD (Examination Search Document). ESD requires exhaustive prior art search, and so is only feasible in areas with limited prior art. The judge then noted the tremendous complexity involved with ESD, and how it would effectively never be suitable for applicants. Then Toupin was asked, if he were counsel to a pharmaceutical company, whether he would recommend ESD. Toupin gave an unqualified yes. Riotous laughter echoed in the packed courtroom to the answer, and as the presiding judge advised Toupin to seek employment in the electronics or other industry.

Gene Quinn at IPWatchdog nicely covers the oral arguments. Gene hits the nail on the head on the Office's subterfuge of significance.

In testifying before Congress in February of 2008, Undersecretary Jon Dudas explained to Congressman Berman that these rules would have minimal impact on the number of new applications filed and estimated that even with the rules there would only be a reduction in the number of application on the order of about 5,000 applications. So all of this to expedite the patent process and address the backlog for a benefit of about 1%? And the rules affect the most commercially relevant of all patents.

Today's oral arguments (mp3 format).

Full post as published by The Patent Prospector on December 05, 2008 (boomark / email).