Posts Tagged: "claims and continuation rules"

Tafas and GSK were recognized with this prestigious award for their successful legal challenge to the claims and continuations rules made final in 2007 by the United States Patent and Trademark Office. Dr. Tafas was first to file his complaint against the USPTO, which was filed the day after the final rules were announced in August 2007. The rules were not to go into effect until November 1, 2007, and for some time it seemed as if Dr. Tafas alone would take on the Patent Office. In October 2007, after previously promising to challenge the rules, GSK filed its complaint. Armed with the benefit of the Patent Office response to the Tafas complaint, GSK was able to assault the rules from another flank and with full knowledge of how the Patent Office postured itself to defend against Tafas. By challenging immediately Dr. Tafas and his attorneys (Steven Moore and James Nealon of Kelly Drye) did an enormous service for the industry and took the fight to the Patent Office. They exposed the Patent Office and in tandem with GSK were able to keep the USPTO on their heels throughout the proceedings.

PLI is offering scholarships for unemployed attorneys and they are also hosting Winning Strategies for Managing Your Career 2010 for the special price of $25. From time to time PLI also gives away ethics credits for free, and pro bono training. In reality, an announcement of scholarships and $25 programs hardly comes from the shameless commerce division, and for that reason I hope that you will consider helping spread the word.

On December 21, 2009, I embarked upon identifying the top 10 patent stories of the decade, which ends as we usher in the new year.  The Top 10 Part 1 identified what I thought were in the bottom half of the top 10, and while any top 10 list is sure to be at least somewhat controversial, it seems as…

Earlier today the Chief Judge Paul Michel of the United States Court of Appeals for the Federal Circuit issued an Order declaring the pending appeal of Dr. Tafas and GlaxoSmithKline moot due to the fact that USPTO Director David Kappos has withdrawn the rules. The Federal Circuit per Judge Michel, however, denied the motion of the USPTO and GlaxoSmithKline to…

Late this evening attorneys representing Dr. Triantafyllos Tafas filed a Reply to Motion for Dismissal of Appeal and Request for Remand. In this filing Tafas points out that the decision made by USPTO Director David Kappos to withdraw the claims and continuations rules does moot the appeal, there is a difference between mooting an appeal and vacating an underlying district…

By now most are likely aware of, or rapidly becoming aware of, the fact that the United States Patent and Trademark Office has finally done the right thing and has scrapped the claims and continuations rules that have divided the patent community for the last 26 months.  It is impossible not to recognize the new and refreshing tone set by…

PRESS RELEASE: GlaxoSmithKline (NYSE: GSK) today announced that it has reached agreement with the United States Patent and Trademark Office (USPTO) to join the USPTO’s motion to dismiss its litigation over Final Regulations published in August 2007 (Triantafyllos Tafas and SmithKline Beecham Corporation, SmithKline Beecham PLC and Glaxo Group Limited vs. David J. Kappos and the United States Patent and…

I wish I had some inside information to pass along, but I do not.  All I can seem to come up with is unsubstantiated rumor and innuendo, but the report the other day from Patently-O that Duke Law Professor Arti Rai is heading to the Patent Office to fill a long vacant policy setting position has too much of a…

One month ago today David Kappos was confirmed at the Undersecretary of Commerce for Intellectual Property and the Director of the Patent and Trademark Office, and days later he was sworn in by Commerce Secretary Gary Locke.  Since Kappos took control of the USPTO the outward appearance of things has been slow, save his nomination of Robert (“Bob”) Stoll to…

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…

I am writing this article from 32,000 feet as I fly across country to teach the PLI Patent Bar Review Course in Costa Mesa, California, which is just inland from Newport Beach, and not far from Huntington Beach and Laguna Beach, places I would rather be than almost anywhere else in the world, although Hawaii and New Hampshire are very…

Last Thursday I wrote regarding the USPTO, GlaxoSmithKline and Dr. Tafas jointly requesting an extension of time within which to either request reconsideration or rehearing en banc of the Federal Circuit’s decision in the claims and continuations saga.  This morning I learned that the Federal Circuit has granted the requested extension of time, so the parties have until the end…

I just received word that the United States Patent and Trademark Office, Dr. Triantafyllos Taffas and SmithKline Beecham Corporation (i.e., GlaxoSmithKline) filed a joint request for an extension of time to request either reconsideration or rehearing en banc at the United States Court of Appeals for the Federal Circuit.  The motion seems to be primarily provoked by the government who…

I knew it was bad news when I saw that Judge Rader did not write the opinion, but rather concurred in part and dissented in part.  But, as I predicted, the Federal Circuit issued its decision while I am in Chicago teaching the PLI Patent Bar Review Course and unable to devote real time to writing about the GlaxoSmithKline and…