That didn’t take long …
Patently-O has the report: a day after the PTO published it’s new continuation and claiming rules, a suit’s been filed challenging the regulations on a host of theories.
A few thoughts …
(1) The constitutional arguments are just silly, proposing standards that have never been the law and aren’t going to be any time soon.
(2) The regulatory / Patent Office power arguments aren’t as silly, but they’re close. In my view, here’s what anyone who wants to knock out the new regulations on the ground that they’re beyond the Patent Office’s longstanding, sweeping power to “establish regulations, not inconsistent with law, which shall govern the conduct of proceedings in the Office,” 35 U.S.C. section 2(b)(2)(A), needs to be able to explain: As a matter of regulatory power, how are the continuation rules any different from, e.g., the rule that the application be presented in English (37 C.F.R. section 1.52(b)(1)(ii))? Or, for that matter, that it be presented on a particular type of paper (37 C.F.R. section 1.52(a)(1))? And it’s not enough to shout, as the complainers typically do, that section 120 provides for continuation applications. A continuation application filed in Finnish, or in white print on black paper, won’t be accepted. Why should the third, or fourth, or fifth continuation application be accepted, without any explanation from the applicant about why the claim amendments and/or supporting arguments couldn’t have been presented earlier? How are the new rules different, given that — like the rule requiring an English-language disclosure — these rules are reasonably (if not perfectly) designed to help the Patent Office do its job of evaluating whether a given claim passes muster under the Act (including the written description requirement of section 112!)? Unless someone has a cogent answer to this question (and I haven’t heard one yet), the Patent Office rules strike me as an eminently reasonable, lawful exercise of the Office’s regulatory power to create an effective examination process at the Office.
Strongly disagree. See 35 u.s.c 2, which states “(2) may establish regulations, not inconsistent with law, which…” 35 u.s.c. 120 states, “shall have the same effect…” Note that it does not say “may have the same effect.” The new rules are clearly inconsistent with law. And this has nothing to do with 112.
Comment by Bill — August 23, 2007 @ 10:45 am
Bill,
I don’t think that’s a persuasive argument. It’s true that section 120 says “shall have the same effect.” But that assumes the continuation is, in fact, properly presented. For example, a continuation that’s filed in Hungarian wouldn’t be valid, and so won’t — and shouldn’t — “have the same effect.” The requirement that the application be in English is, so far as I’m aware, entirely a matter of regulation; the statute itself contains no such requirement.
In just the same way that an English-language rule is not “contrary to law,” a rule that requires an applicant to show good cause after using a reasonable number of continuations as a matter of right (here, the Office thinks 2 is reasonable, and I don’t have a view on that) is not “contrary to law.” Far from it: it helps the Office do a better job policing, among other things, compliance with section 112’s written description requirement (which, by the way, is why this has everything to do with section 112).
Joe
Comment by Joe — August 23, 2007 @ 2:47 pm
I think that not only is Bill’s argument a winner, it’s pretty much unassailable. Remember, the USPTO’s regulations try to restrict serial continuations indirectly by interfering with the applicant’s attempts to comply with a mere ministerial procedural requirement set forth in the statute, i.e. inserting a specific reference to the earlier filed application. In other words the regulations are akin to the act of tripping an inventor racing to the post office to file an application by a statutory deadline. Explain, for example, the diferrence between these regulations and one that states that, in a third continuation, after the mailing of a first office action, the USPTO will not accept or enter any amendments mailed prior to the expiration of six months from the mailing date of the first office action (meaning that the applicant is forced to abandon the continuation).
Implicit in this tortuous procedure seems to be an admission that the USPTO is obligated to examine the application for patentability. See, for example, 35 U.S.C. 102 (”A person SHALL be entitled to a patent unless . . . “) and 35 U.S.C. 131 (”The director SHALL cause an examination to be made of the application . . . and if it appears that the applicant is entitled to a patent under the law, the director SHALL issue a patent therefore.”) The USPTO cannot shift the legal standards for patentability, they can only implement procedures to facilitate examination of applications for the entirely legal determination of patentability.
The U.S. Code sets forth clear steps, which if followed, WILL attain the benefit of an earlier filing date and the USPTO, while authorized to implement them, can’t shift the intial legal requirements for an application’s ELIGIBILITY for a priority claim. The requirement that an application contain a specific reference to the earlier-filed application is solely intended to effectuate notice, both to the public and to the patent office, of the priority claim so as to establish what is prior art and what is not. The inclusion of a reference to an earilier filed application is not a blessing to be bestowed upon an applicant after the USPTO’s review and approval.
Look at it this way. I file a fourth continuation having claims identical to those originally filed in the parent but never allowed as being too broad. Thus, I cannot submit a statement that the claims couldn’t have been included in the parent because they were, in fact, presented in the parent. In the application, as filed, there is a specific reference to every application in the chain. By law, that application is, at the instant it is filed, entitled to the benefit of the earlier filing date of the very first parent. Nothing in the U.S. Code can be remotely interpreted as extending to the USPTO the regulatory authority to unilaterally strip the application of that benefit once it has been perfected, let alone by such a petty means as “not entering” or “deleting” the reference so that the application, though filed in compliance with the statute, no longer does. Stated differently, it’s inconceivable that the USPTO has been given the authority to modify or amend an application so that it NO LONGER complies with the procedural requirements set forth by statute.
Finally, the idea that these regulations are akin to margin and language requirements is absurd. First, such format regulations merely regulate how to file an application, not whether you can file an application in the first instance, or what claims and arguments can be raised in the application. Second, margin requirements etc. set forth clear procedures by which an applicant has the ability to definitively file an application in compliance with the regulations. These regulations, in contrast, put the applicant at the mercy of the patent office’s subjective determination, after an application is filed, of whether the claims or arguments could have been raised earlier.
Comment by kurt — September 26, 2007 @ 3:24 pm
Let me add a few comments. The original poster seems to be arguing from the premise of what the regulations functionally do, rather than what they procedurally do. The USPTO wants to restrict the number of continuation applications filed by limiting the number of chances an applicant gets at “continuing” applications, and feels that this is a reasonable regulatory act. But the US code never separately defines “continuation” applications, as such, merely stating that a nonprovisional application claiming subject matter disclosed in an earlier application gets the earier filing date so long as applicant does X, Y, and Z.
Assume an applicant files a continuation, as the USPTO defines them, along with a proper priority claim and during the pendency of an application in the claimed chain. The office is required to examine that application, not only by the terms of the US Code (Section 131 comes to mind) but because the continuation application may well have patentable claims even without considering the priority benefit.
Then, the question becomes whether the claims are patentable over the prior art. If the claimed benefit is considered, less prior art is available than if it is not. Any blanket regulation stating that in any of circumstances A to Z the USPTO won’t recognize an applicant’s otherwise proper priority claim, amounts to the USPTO substantively shifting its legal burden of proving unpatentability. This would be an act of legislation rather than regulation. The USPTO tries to overcome this by the contrivance of “deleting” the reference that invokes the priority claim, but the effect is the same; the USPTO is “restricting” continuation practice only in the sense that they are expanding the boundaries of prior art available to cite against selective applications, thereby making it easier for an Examiner to reject the claims in examination. If anything, there has to be a pretty good procedural due process argument here, as the agency in charge of evaluating the legal patentability of claims in a particular application is also asserting the ability to decide what prior art is and is not available based on it’s own judgement call of whether the presently claimed subject matter could have been asserted in an earlier application.
Many of the other regulations are suspect as well. The USPTO claims that they can issue a restriction requirement at any time during prosecution, but says that a divisional will not count against the numerical limitations on continuing applications only if the claims presented therein are identical to the parent and have not been examined. Assume an applicant files an application with five distinct inventions. The application is prosecuted to the point where every claim distinguishes over the prior art, and the Examiner, at the last minute, gives a proper restriction requirement. The applicant would then be precluded from even patenting all of the claimed distinct inventions, as the applicant could, at most, file an additional two divisionals when there are four more inventions to patent.
The patent office also wants to retain the ability to require cancellation of patentably indistinct claims from all but one of a group of applications even though the applicant has submitted a terminal disclaimer. This, in effect, means that the patent office is denying claims that are patentable by law. I’ve spoken to colleagues who think that the patent office only intends to use this measure in cases of statutory double patenting cases, but I’m not so sure of that. Why, for example, would the USPTO not simply leave it to the Examiner to make a substantive rejection of each of the claims.
Comment by kurt — September 26, 2007 @ 5:52 pm
See the Glaxo v. Dudas complaint on the patentlyo blog for reasons why the rules are illegal. A very well written complaint. I can’t really think of any solid rebuttal the USPTO can make.
Also, as far as filing an application in Hungarian, the USPTO would actually accept this to accord a filing date, the application would just have to be translated first into English in order to remove a 112 rejection. So the USPTO language requirement (and its other formal requirements) do not affect an applicant’s filing date and can be corrected at a later date.
Only people who prosecute patents for a living can really appreciate the gravity and harm of these rules.
Comment by Bill — October 14, 2007 @ 10:58 pm
Bill,
I have looked at the Glaxo complaint. I don’t think it does any better grappling with the scope of 35 U.S.C. section 2 question.
On the “filing in Hungarian” point - okay, it gets the applicant a filing date. What it doesn’t get is substantive examination. And substanive examination is what the continuation rules are all about.
Also, importantly, I’m not arguing about the ultimate wisdom of the rules. They may be quite foolish, from this or that perspective. What I’m talking about, and what I think these lawsuits are bound to focus on, is whether the Patent Office has the regulatory power to make the judgment call about processing applications, and policing compliance with section 112 as claims change over time, that the rules represent.
Thanks for looking at the blog!
Joe
Comment by Joe — October 14, 2007 @ 11:31 pm