Comments on: Federal Circuit to Rehear Tafas and GSK v. Doll

By: World's Greatest Inventor

World's Greatest Inventor — Thu, 09 Jul 2009 01:29:43 +0000

System and Method of Retaining Blog Comment Content

I claim:

1. A method of entering a comment in a blog having a captcha, comprising:
a) Typing the comment;
b) Selecting the comment;
c) Typing CTRL-C;
d) Typing the captcha; and
e) hitting a submit button.

By: patent leather

patent leather — Tue, 07 Jul 2009 22:19:55 +0000

The previous opinion was very significant in that it ruled that RCEs can be limited. While some may say that you could just file a continuation in place of an RCE, the USPTO has discretion as to when they pick up a continuation for examination (e.g., they could put them at the end of the queue, requiring the applicant to wait another 3 years) thus effectively killing RCE practice which is what Doll wanted to do in the first place. I can’t imagine any other USPTO administration would be crazy enough to try to limit RCEs (especially now with the huge backlog at the Board), but nothing the USPTO does would surprise me anymore.

However, the en banc panel may address a bombshell– that 35 U.S.C. 120 really only provides for 2 serial continuations. See the Bryson dissent and read 120 carefully. Judge Michel once said publicly he thought continuation practice was harmful (I don’t remember his exact words) and I worry that the CAFC could set the stage for the USPTO to reenact a modified form of the rules, this time with a hard 2 application limit on serial continuations but with no limit on parallel continuations. This is probably unlikely, and would invalidate some issued patents that are more than 2 serial continuations deep.

(Gene, if you mistype in the captcha code and have to hit the back button on your browser, the poster loses his entire post! Not sure if there’s anything you can do).

By: Gene Quinn

Gene Quinn — Tue, 07 Jul 2009 17:43:05 +0000

EG-

I have to think that this means either that the CAFC is going to agree with Cacheris or that the PTO is going to get a total victory. I cannot imagine a total victory, so I think you are right. These rules are in big trouble!

If only the PTO had done the reasonable thing and withdraw the rules like I suggested and start over they would have been able to stand on a ruling saying that even substantive changes to the Patent Act are merely procedural. If they lose it will be one of the most dumb things government attorneys have ever done. The panel gave the PTO everything they could have wanted and then a little more!

-Gene

By: Yoav

Yoav — Tue, 07 Jul 2009 14:31:23 +0000

Dear Gene,
Although I am a new comer to this blog, a question if I may.
I wonder in regard to gene patents in vieew of recent developments.
Sincerely yours,
Yoav

By: EG

EG — Tue, 07 Jul 2009 14:10:45 +0000

Gene,

This grant of rehearing en banc by the Federal Circuit suggests these nefarious (and oxymoronic) claim-continuation limitation rules are in trouble. The interesting question is whether the PTO will ask to pull this rules package before the Federal Circuit ax falls. I doubt the PTO wants a ruling on the merits by the en banc Federal Circuit that says they don’t have the authority to enact this rules package as it would certainly undermine their authority on the other pending appeals, Markush group, and IDS rule packages.