The United States Court of Appeals for the Federal Circuit will hold oral arguments in the case between the United States Patent & Trademark Office and Dr. Tafas and GlaxoSmithKline on Friday, December 5, 2008 at 10am. I have followed this case since the very beginning and will be in attendance in the gallery to hear the arguments. I plan on posting my thoughts and comments on the arguments by sometime mid-afternoon, so please check back for early accounts on the questions asked and how the events of the day unfolded. Of course, I will be expanding coverage over the days, weeks and months to come leading up to the decision by the Federal Circuit.
Perhaps I am being naive or overly optimistic, but I still believe that at some point the government is going to withdraw the claims and continuations rules and moot the appeal before the Federal Circuit issues a decision. That is the only responsible thing to do because I see absolutely no chance that the Court will do anything other than affirm the decision of Judge Cacheris, which would potentially chill efforts of all agencies, not only the Patent Office, to issue rules moving forward. Time will tell.
With no further ado, here is the chronology of major events starting with the publishing of the proposed rules in January of 2006 through today.
January 3, 2006
The United States Patent & Trademark Office published Federal Register notice proposing a revision to claims rules and the examination of claims in patent applications. The Office proposed to focus its initial examination on the claims designated by the applicant as representative claims. The representative claims would be all of the independent claims and only the dependent claims that are expressly designated by the applicant for initial examination. The Office also proposed that if an application contains more than ten independent claims (a rare occurrence), or if the applicant wishes to have initial examination of more than ten representative claims, then the applicant must provide an examination support document that covers all of the independent claims and the dependent claims designated for initial examination.
Also on this day the USPTO published a Federal Register notice proposing limit on continuation applications. The USPTO proposed a revision to the patent rules of practice to allegedly better focus the application process. The revised rules would have required that second or subsequent continued examination filings, whether a continuation application, a continuation-in-part application, or a request for continued examination, be supported by a showing as to why the amendment, argument, or evidence presented could not have been previously submitted.
August 21, 2007
The USPTO published a Federal Register notice setting forth the Final Rules on Claims & Continuations, which are announced to become effective on November 1, 2008. See New PTO Rules Package Arrives and Draconian PTO Claims Rules.
August 22, 2007
Dr. Tafas files a Complaint with Attachments, thereby starting a lawsuit against the United States Patent & Trademark Office that challenges the propriety of the claims and continuations rules made final on August 21, 2007.
October 10, 2007
GlaxoSmithKline files a Verified Complaint in the United States District Court for the Eastern District of Virginia challenging the proposed claims and continuations rules.
October 15, 2007
GlaxoSmithKline files a Motion for Temporary Restraining Order and Preliminary Injunction and a Memorandum of Law in Support of TRO & PI Motion. This filing is accompanied by a Proposed Order, the Declaration of Sherry M. Knowles, which conainted six Exhibits (Exhibit 1 | Exhibit 2 | Exhibit 3 Exhibit 4 Exhibit 5 | Exhibit 6) and the Declaration of Harry F. Manbeck, Jr.
October 17, 2007
Gene Quinn, US Patent Attorney and Editor of the PLI Patent Blog issues a Call to Action Against the Patent Office, urging those who will be affected by the new claims and continuation rules to join the fight started by Dr. Tafas and GSK by filing amici briefs explaining to the district court that this is not just an issue of importance to one inventor or to one particular pharma company, but is a matter of great importance to everyone who utilizes the US Patent Office.
October 25, 2007
United States Senator Charles Schumer writes a letter to Jon Dudas, the Undersecretary of Commerce for Intellectual Property, asking Dudas to consider a delay in implementing the claims and continuation rules because there is great concern as to the impact those rules may have. See Senator Schumer Asks PTO to Delay Implementing New Rules.
AIPLA, IBM and SanDisk take action to support the challenged against the proposed claims and continuations rules.
October 28, 2007
The USPTO files a brief opposing the requested temporary restraining order and preliminary injunction relative to the proposed claims and continuations rules.
October 30, 2007
It is reported by Gene Quinn that the Amici Are Out in Force, with briefs and requests to file briefs in support of Dr. Tafas and GSK flooding into the Eastern District of Virginia.
October 31, 2007
Judge Cacheris of the United States District Court for the Eastern District of Virginia issues a Memorandum Opinion ordering the claims and continuation rules preliminarily enjoined, thereby prohibiting them from becoming effective on November 1, 2008, as had been planned by the USPTO.
November 14, 2007
The USPTO files its Answer to the Tafas Complaint.
February 8, 2008
Judge Cacheris holds a hearing on the pending Motion for Summary Judgment filed by GlaxoSmithKline, Dr. Tafas and the USPTO. See John White Reports – No Decision Today and Recap of GSK/Tafas v. USPTO SJ Hearing.
April 1, 2008
Judge Cacheris issues a Memorandum Opinion granting GSK and Tafas’ Motion for Summary Judgment, permanently enjoining the claims and continuations rules. See GSK & Tafas Prevail… Claims & Continuation Rules OUT! The ruling issued by Judge Cacheris is a scathing indictment against the USPTO and their efforts to ram through rules that clearly contradict the express provisions of the Patent Laws enacted by Congress.
July 18, 2008
The USPTO filed its Appeal Brief with the United States Court of Appeals for the Federal Circuit.
July 29, 2008
A number of law professors file a Brief in Support of the USPTO with the Federal Circuit in a misguided attempt to urge the Court to uphold the Final claims and continuations rules. The brief laments the serious problems created by unlimited continuations, but does not acknowledge that only an infinitesimally small percentage of annual patent applications filed are continuing applications. The brief also fails to appreciate that a Rule promulgated by an Agency cannot contradict an Statute enacted by Congress. To date Congress has never placed any limitations on the number of continuing applications, merely saying that applicants have a right to file them. For more see Law Professors Back USPTO in Tafas v. Dudas Appeal.
May 7, 2008
The USPTO files a Notice of Appeal, setting up a challenge to Judge Cacheris’ ruling permanently enjoining the Final claims and continuations rules.
August 19, 2008
September 24, 2008
GlaxoSmithKline Brief filed with the Federal Circuit.
Tafas Brief filed with the Federal Circuit.
October 15, 2008
USPTO Reply Brief filed with the Federal Circuit.
December 5, 2008
Federal Circuit hears oral arguments in USPTO v. Tafas & GSK at 10am. Gene Quinn will be present and post his reactions to the oral arguments that afternoon.
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