Patent Law

Sop

By Gary Odom and Jordan Kuhn

6,310,269 claims a tampon with a solid fiber core denser than radially projecting ribs, the ribs being narrower at their base at the core than at their distal ends. McNeil, the patent holder, requested reexamination based upon an uncited Japanese patent application. The examiner rejected the claims over the prior art, and the BPAI agreed. McNeil appealed to the CAFC.

In re McNeil (CAFC 2008-1546) precedential

There was an issue of whether McNeil timely appealed. The PTO has the nasty habits of not notifying applicants on the date which they mark a paper, and on denying applicants based on any bureaucratic detail they can latch onto.

The PTO argues that both 35 U.S.C. § 142 and 37 C.F.R. § 1.304(a)(1) state that the time to appeal runs from "the date of decision," and the opinion says "Decided: May 30, 2008," so it would be contrary to the language of the statute and the regulation for us to deem the date of decision to be the date the order was mailed. While this argument has some superficial appeal, the inner workings of the agency are far more important than the PTO admits. Based on the evidence before us, it appears that only when an opinion is released to the public (or at least the parties) is it truly decided--until then, it is possible for the Board to decide to revise it.

The nut of the problem with the patent office, in this instance, and far too often for the office to be considered competent -

It is not entirely clear, however, that the Board understood McNeil's claim.

Then again, there is a yawning difference between competent and "good enough" for government work. The USPTO has a long-standing tradition of the latter, something no patent "reform" can ever fix.

Reversed.

Full post as published by The Patent Prospector on August 02, 2009 (boomark / email).