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 of business on June 3, 2009 within which to move for reconsideration or rehearing en banc. My thought is that asking for an extension of time likely means that one or more of the parties will seek either reconsideration or rehearing en banc, and I cannot believe reconsideration is what is in the cards. With a case like this, with so much on the line, the three judge panel made up of Judges Rader, Bryson and Prost certainly gave the matter the full consideration it deserved. Thus, I am anticipating a request for rehearing en banc. With a matter of such great importance I would be surprised if the Federal Circuit did not want to hear this one en banc, so I suspect we will soon be Federal Circuit watching again as this dispute goes into extra innings!
One question that might be on the minds of some this: why would the Patent Office want to ask for reconsideration or rehearing? The Patent Office wanting further Federal Circuit review seems a lot like a greedy gambler who has just won big, but wants to win bigger. The risk is that by pushing the matter the Patent Office will not ultimately walk away with as much as they have right now. I have been hard pressed to find anyone who agrees with the original three-judge panel decision, including those who thought the Patent Office would prevail. Those who believed the Patent Office would prevail did not anticipate the way in which the Court so willingly found all of the Patent Office’s actions to be procedural. We all know that what the Patent Office did was not procedural. How intelligent people could view the substantive changes the Patent Office rule would force as being procedural is bizarre. There is nothing procedural about altering rights while the game is being played. There is nothing procedural about directly contradicting a statute. It seems to me the USPTO was given a gift on a silver platter and are upset that the platter was not made of gold instead.
The real reason the USPTO will continue to pursue this matter, if in fact they do want to go double or nothing and force the issue, is because the one thing they lost on is the one thing they need in order to make all of the other rules make logical sense. Without the ability to limit the number of continuations one can file the problems facing the Office get worse, not better. Limiting claims to 5 independent claims and 25 total claims without the filing of an Examination Support Document is really an unenforceable rule unless you can also limit the number of applications that can be filed. An argument could be made that forcing bite-size applications makes sense even without the continuations limit, but reality is that the average patent application already contains less than 5 independent claims and 25 total claims. In fact, significant internal debate surrounded the fear that by setting the limit at 5 and 25 there would be incentive given to applicants to include more claims and thereby unwittingly increasing the work of the Office. So the whole case must turn on continuation limits, at least insofar as these rules packages are concerned.
What the Patent Office should do is take this decision and run. I am reminded of Kenny Rodger’s famous song “The Gambler.” Every gambler knows that the secret to surviving is knowing what to throw away and knowing what to keep, and the Patent Office should throw away these rules and keep the decision of the three-judge panel. The decision in place would allow the Patent Office to force all applicants to prepare and file an Examination Support Document. We all know that you would be a fool to file an ESD because it would render the issued patent completely useless unless the Federal Circuit were to completely retreat from its recent inequitable conduct cases. So why then would the Patent Office want to force the most commercially relevant inventions to become commercially useless thanks to the admissions present in an ESD? I can’t answer that question, and I am not sure anyone else can either.
The Patent Office is confronted with an interesting choice. They have been green-lighted to require an Examination Support Document in every case, yet they are not rushing to do that. Why? If an ESD is so wonderful, so helpful and the Patent Office is not concerned about rendering the issued rights worthless, then they should require an ESD to be filed in every case. The reason they are not rushing to take this decision as it is, rewrite the rules and force ESDs upon all applicants is because the Office knows that would never fly. The outcry would be enormous. Everyone would line up against the PTO, Congress would hear from every constituency and the entire program would crash and burn. There is no way the PTO could ever force all applicants to file an ESD, so why then should they want to force ESDs to be filed when the inventions are among those most likely to have a positive impact on industry and the economy?
Yesterday the Supreme Court refused to accept cert. in the Aventis case, which means we continue to be left with uncertain inequitable conduct laws. While we don’t have a split among circuits that the Supreme Court seems to love, we are at the point where your inequitable conduct ruling is completely dependent upon the panel you draw. The Federal Circuit ignores the Patent Office and 37 C.F.R. 1.56, which is absolutely 110% procedural. The irony of this is that the Federal Circuit has now ruled that the Patent Office can do pretty much whatever it wants and it will be called procedure, save the one thing that is clearly procedural. Defining what prior art should be submitted is obviously within the right of the Patent Office and it is pathetic that the Federal Circuit refuses to defer on such an important issue.
With the Supreme Court AWOL on inequitable conduct, and a deepening battle between the USPTO and the Federal Circuit, applicants are getting squeezed. The one thing the USPTO needs most to make progress with the backlog and expeditiously granting patents is inequitable conduct reform. There will be no help from the Supremes, so Congress must step in and make the only change that is really required, which is inequitable conduct reform. Of course, I am not going to hold my breath for Congressional activity. Neither am I going to hold my breath for Federal Circuit uniformity. So that means that the fight must go on against USPTO reforms. The sad thing is that at least some of the proposed reforms could make sense if you just took away the 800 pound inequitable conduct gorilla.