Patent Law

The challenge against the USPTO’s implementation of its new continuation and claim rules continues into its seventh month. On Friday, February 8, Judge Cacheris is hosting oral arguments on the competing motions for summary judgment.  Previously in this case, Judge Cacheris indicated his holding from the bench — this case may be no different.  

As I have mentioned before, at best, this case is a likely partial-winner for Tafas. The patentee’s two best arguments are (1) the illegality of strictly limiting the number of continuations and (2) retroactivity problems.  Two additional arguments are also potential winners: (3) that the ESD requirements are vague (not just costly) and (4) that the PTO followed improper procedures in implementing the rules.

Even if the rule challengers win, the PTO would still be able to implement portions of the new rule that limit the number of claims in newly filed applications.  However, the court could potentially require that notice-and-comment process be entirely redone — thus changing the timing.

• Docket & Briefs on Justia
• Polestar Amicus is particularly interesting [as discussed by PatentHawk]
• PLI’s Quinn will be blogging from the event.
• Regarding Paragraph two above, I also predicted the Patriot’s to win. . .