On Thursday, August 13, 2009, U.S. Secretary of Commerce Gary Locke conducted a ceremonial swearing-in of Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos. In his remarks before thousands of employees on the USPTO campus, Secretary Locke said “David is taking on a big job… Promoting and protecting U.S. inventions, innovation and creativity directly affects our nation‘s welfare and prosperity.” In his remarks at the ceremony, the New PTO Director took a not so subtle swipe at his predecessors, James Rogan and Jon Dudas, by saying: “To meet Secretary Locke’s direction to me, I will be HERE at the USPTO. I will minimize overseas travel, and focus domestic travel on listening to the U.S. innovation community and discussing our agenda with them.” The capitalization of the word “here” is found in the official copy of Kappos’ remarks published on the USPTO website. Those familiar with how the Patent Office has run over the last 8 years remember that Rogan, and to a lesser degree Dudas, famously traveled the country and the globe. No doubt anything Kappos can do to demonstrate there is a new Sheriff in town will be welcomed by the patent bar, and all those who rely on the work done by the USPTO to assist them in achieving their business objectives.
Now with Kappos installed at the USPTO all eyes, and rampant speculation, turn to what will become of the claims and continuations rules. As most probably know by now, just over two weeks ago the Department of Justice asked the United States Court of Appeals for the Federal Circuit to slow down its en banc consideration of the Judge Cacheris’ famous, or from the PTO point of view – infamous, decision to preliminarily and then permanently enjoin the USTPO from enforcing the claims and continuations rules that were to go into effect on November 1, 2007. For a chronology through the original 3 judge panel hearing at the Federal Circuit see USPTO v. GSK & Tafas Chronology (published December 3, 2008). Of course, after that was published, the 3 judge panel, with Judge Rader in dissent, awarded a victory to the Patent Office except with respect to the limits on continuations. Perhaps most importantly, this panel decision opined that pretty much whatever the Patent Office wants to do is procedural, even when the promulgated rules substantively affect rights. Of course, this decision was purely ridiculous. Calling an examination support document merely “another document” and likening a hard cap on claims absent an ESD to a statute of limitations shows a complete lack of understanding of patent practice reality. Luckily, the full Federal Circuit decided to rehear the case en banc.
In a twist that is strange in many ways, the Department of Justice on July 28, 2009, asked the Federal Circuit to hold off on moving forward with the rehearing of the claims and continuations appeal pending the installation and arrival of David Kappos. Specifically, the DOJ filing explained that it would be prudent to hold off and allow Kappos, who had already been nominated, to take position at the USPTO and “determine what course the USPTO should take in the future with respect to those rules, including whether to rescind the rules.” I have never seen or heard of such a petition being filed, but the DOJ and the parties agreed that this would be the prudent thing to do. This is something that I have been suggesting for many months, starting at least as early as December 3, 2008, in USPTO v. GSK & Tafas Chronology (see paragraph 2), and then again when I wrote about my Patent Wishes for the New Year (see #5).
Shortly into 2009 I started receiving phone calls and e-mails strongly suggesting that I stop encouraging the Patent Office to withdraw the rules and moot the appeal. The prevailing thinking seemed to be that this was the sensible thing to do and that the Patent Office may actually get wise and do just that. Presumably, there were some that thought that the Patent Office might listen to me and consider my suggestions. Obviously, that was not the case and never had any chance of being the case. For reasons I will never fully understand, in this time frame the Patent Office simply thought they knew better and were not about to take suggestions. This elementary school way of dealing with the patent bar was evidenced over and over again, but never more forcefully than when each and every comment received relating the the claims and continuations rules, including all 300+ unique comments and observations, were summarily rejected by the USPTO. I found it both humorous and humbling that there were some who thought the PTO might listen to me.
Notwithstanding, at this point in time it seemed like everyone agreed that the Federal Circuit was going to affirm Judge Cacheris’ ruling, and there were many influential people who wanted to hear what the Federal Circuit had to say about the examination support document, because after all, there was no way that the Federal Circuit could be dupped by the PTO’s arguments that the examination support document was just another document the PTO could legitimately require. PTO General Counsel Toupin even erroneously cited Federal Circuit precedent in the area of inequitable conduct in order to suggest that there would be few if any real concerns associated with preparing and filing an ESD, which some refer to as an “express suicide document,” and what I have always called the rope to hang yourself. Luckily Judge Rader called Toupin on this, but ultimately to no avail given Judge Rader’s rational, and dare I say correct, view of the case was out-voted on the panel level. See Oral Arguments Completed.
Then after the 3 judge panel decision erased Judge Cacheris’ scathing rebuke of Patent Office rulemaking, again on April 13, 2009 (see comment #3 – USPTO Budget Crisis), I once again started saying that the rules should be withdrawn. This was followed on April 23, 2009, when I wrote that if I were the Director of the PTO I would immediately withdraw the rules (see penultimate paragraph) and take the extremely Patent Office friendly opinion announcing virtually everything the PTO could ever want to do is procedural.
Then once the full Federal Circuit decided to rehear the case and vacate the original panel decision, the Patent Office is left like Superman with a bar of kryptonite stuck in his pocket, like Batman without a utility belt or perhaps a gambler who ignored common sense, played recklessly and nevertheless won the jackpot, only to keep playing long enough to lose all winnings and the money brought to the casino in the first place. Yes, it seems that the Patent Office failed to take the words and wisdom of Kenny Rodgers to heart. You absolutely, positively have to know when to hold them, know when to fold them, know when to walk away and know when to run, and the time for running was after the 3 judge panel of the Federal Circuit granted the Patent Office great big awesome genie powers!
If and when Kappos orders the claims and continuations rules withdrawn I will feel great pleasure in the fact that my suggested course of action from many months ago was finally adopted by the Patent Office. Like so many other times that I have been told I was naive, wrong or embarrassingly incorrect, I will once again prove myself right. I am no visionary, but I do think I look at most things rationally, logically and with a fair amount of common sense. There simply was nothing to be gained by the Patent Office assault on the most commercially relevant innovations that the patent system is supposed to encourage most. There was nothing to be gained by alienating the patent bar, making ridiculous arguments and all the while allowing pendency and the patent backlog to run out of control. There was also no reason to look a gift horse in the mouth when the PTO won a surprise victory in March thanks to Judges Prost and Bryson. So if and when Kappos does what we all are expecting, I will feel some pride and a whole lot of sadness. It didn’t have to come to this, it should never have come to this, but if this is how and why the new Sheriff has been invited into town then maybe in the long run the frustration, pain and needless anxiety will all be worthwhile.