Patent Law

Thwarting

By Gary Odom and Jordan Kuhn

In the Eastern District of Virginia today, savvy Judge James Cacheris heard oral arguments on whether the USPTO may implement its proposed examination rules changes. The crucial issue is whether the changes are substantive, which they are. Textbook interpretation is that the patent office is proscribed by law from promulgating substantive changes, and from applying them retroactively, as in this instance. The sanctimonious PTO argued that the changes were not substantive, but if even they were, the agency had authority. Judge Cacheris swore to render decision ASAP, but "there is a lot of paper to consider."

Judge Cacheris will rule that at least some, if not all, of the proposed changes are substantive, and that the agency does not have statutory authority to make them, or, at the least, in the manner in which they were made. The decision, when it comes, will be analytically copious and cogent, anticipating the next move in this chess game: the patent agency will most certainly appeal.

The current injunction freezing implementation will remain in place pending appeal outcome.

The USPTO will refine its arguments while sharpening its knives, as the opposition sticks to its guns, and fortifies with more amici chirping.

If nothing else, the taint of failing to abide by Administrative Procedures Act (APA) rules during promulgation, and subsequent cover-up, is likely to result in the agency being forced to go back to square one and start the process all over. Even by the time the appeals court takes the matter up, the puckeys now running the PTO will be toast: tossed by a new administration for performing such shambolic shenanigans in the first place. But before that happens, the agency may try to do an end-run by crafting new "procedural" rules, attempting to achieve a similar effect of offloading examination at applicant expense; they may be contemptuous, but they are cunning.

Other coverage: in the moment at PLI; Patently-O (great coverage there by Jill Browning); Patent Baristas. The Patent Prospector has covered this story repeatedly; please check the Patent Office archives.

Full post as published by The Patent Prospector on February 08, 2008 (boomark / email).