Two years of fear and loathing have ended, as the USPTO has announced that it is rescinding the “Continuations” and “Claims” rules that have been hanging over the heads of practitioners, and will move to dismiss/vacate the pending lawsuit over the rules. Like a legal sword of Damocles, there was always the chance that the rules would drop into place and cut-off our ability to prosecute patent families to completion. Remember, earlier this year the Federal Circuit gave the PTO permission to implement all but the rule limiting continuations. As an attorney who felt forced to begin to compress claim sets in pending applications near the eve of the rules going into force in 2007, the potential financial hardships to small pharma/biotech companies attempting to protect nascent technologies in a step-wise fashion was manifest. And did it ever make sense, at a time when PTO filings were dropping off, to implement rules that would further reduce filings? (One senior Examiner/union rep told me that opposition among the Examiners was almost universal.) Luckily, Glaxo and Dr. Tafas had the nerve to challenge the right of the PTO to promulgate such rules. They didn’t win it all in court, but bought us all time for a new Administration and blessed restraint.
Archive for October, 2009
Director Kappos Kills Prosecution Regulations Package
Thursday, October 8th, 2009Hal Wegner Wakes Up ACI Biotech Patents Forum in Boston
Sunday, October 4th, 2009On Sept. 30th, Harold C. (Hal) Wegner gave a talk on current developments that emphasized the importance of inter partes reexamination, particularly as a weapon of patent destruction. His opinion, summarized by me, is that KSR is increasingly being applied to biotech claims by Examiners. Applicants then are forced to put in declarations arguing secondary factors and to argue criticality in order to get claims allowed. Requestors are aware that, during inter partes reexamination at the PTO level, 60% of patents have all their claims cancelled and 80% have independent claims cancelled. Attacker-requestors will put in declarations to show that “everything was expected.” If the Examiner and the Board support the attacker, patentee is dead since, if the attacker put in substantial evidence, the Federal Circuit will give deference to the PTO finding. Also, if the attacker argues that a claim should be interpreted so as to read on the prior art, claim interpretation will be an open question before the Federal Circuit, who reviews claim construction de novo as a question of law.
On the other hand, Hal noted that, in the past, almost no merits appeals ever reached the Board from reexamination proceedings. This is in part because it is easy for either party to slow the proceedings nearly to a standstill by submitting boxes of prior art (I have seen a patentee in litigation do this) or by introducing hundreds of claims. Hal also noted that, as of 2002, no reexaminations had been concluded by appeal to the Federal Circuit. If Director Kappos manages to shorten the appeal process at the Board, as by moving Examiners from the corps to the Board, in the fairly near future all of these patent-killing mechanisms could rise in prominence.
