More on the USPTO v. Tafas & GSK Appeal

USPTO v. Tafas & GSK Appeal - Dec. 5, 2008 14 November 2008 By Gene Quinn The United States Patent & Trademark Office appeal of the Tafas and GlaxoSmithKline case regarding the claims and continuations rules that were famously enjoined by Judge Cacheris of the Eastern District of Virginia is set for oral arguments on Friday, December 5, 2008, at 10am. I will be in attendance at the hearing and blogging immediately thereafter with my thoughts on the hearing, providing my perspective and insights, that is assuming there is an oral argument that day at all. I know it is scheduled for then, but let me be perfectly open and honest about my intentions. I want to see the Patent Office and/or the Department of Justice step in and do the right thing and withdraw the rules and moot the appeal. That is the only responsible thing to do and the fact that those making the decision to move forward with this case have not seen fit to save themselves this embarrassment demonstrates that they are out of touch and simply don't care what damage will be done to not only the Patent Office but all Administrative Agencies. It is irresponsible and reckless to do anything other than withdraw the rules, and we all need to do whatever we can to bring pressure to bear in the coming weeks to get our government to do what is obviously the right. The fact that this case has gone this far is an unfortunate testament to the fact that the Patent Office and the Department of Justice are hell-bent on forcing the Federal Circuit to issue a decision that is going to be nearly ruinous for all of the agencies of the Federal government. How is it possible that a lame duck administration at the tail end of its time in office can continue to push and appeal a case where the outcome is so certain? This is going to be a disaster for all agencies, and a decision that should be made by the next leaders of the Patent Office and the Department of Justice. The claims and continuations rules should be withdrawn and this appeal mooted. That is the only responsible thing to do, so please Mr. Dudas, on the way out do the right thing here and don't risk the decision of the Eastern District of Virginia being ratified by a Court of Appeals and thus becoming precedent that will allow for the challenge of virtually any administrative rulemaking decision. On Tuesday, August 19, 2008, the United States Court of Appeals for the Federal Circuit issued a decision in Cooper v. Dudas, which makes it clear what the outcome of the PTO appeal of the GSK & Tafas case will be. As I pointed out in my post titled Trouble Ahead for the PTO, the Cooper v. Dudas case, although a win for the PTO, laid the foundation for the Federal Circuit to ratify the decision of Judge Cacheris lock, stock and barrel. In this decision the Federal Circuit explained that the PTO does not have the authority to make substantive rules, explained that substantive rules are those that effect a change in existing law or policy that will affect individual rights and obligations. The Federal Circuit went on to explain that in the Cooper v. Dudas case the PTO was fine because they were merely setting a working definition of an ambiguous term used in a statute. That is hardly the case in the Tafas & GSK appeal. The statute is clear, inventors have the right to file as many claims as they want and file as many continuations as they want. There is nothing in the language of the statute that supports any limitation, and what the Patent Office tried to do clearly and unambiguously was affecting substantive rights. Changing rules in the middle of an application process cannot be characterized any other way. You had the right to do something yesterday, no right to do it today. That is a change, and it impacted a lot of pending applications. It should not come as a surprise to anyone that the Federal Circuit might signal in decisions leading up to an important case which way they are leaning. They do this all the time. In fact, if the Patent Office and the Department of Justice actually force the Federal Circuit to issue a decision you can expect that the decision will cite the Cooper v. Dudas opinion liberally. They have inched the law closer to where it needs to be to support what it is that they are about to do without it being viewed as a shift in the law. It is rare that the Federal Circuit so abruptly changes course like they did in Bilski without moving that direction slowly. So I predict that if the Federal Circuit issues a decision it will be to affirm Judge Cacheris. Now why would the Patent Office and/or the Department of Justice want a Court of Appeals to affirm a decision that is such an indictment of Patent Office rulemaking? I have no idea. It is reckless and is something that should be stopped. Someone in the government, whether in the DOJ, Department of Commerce or Congress, needs to step in and be the voice of reason. We all know there are a lot of needless and irrational challenges to actions taken by Administrative Agencies, and while this is not one of those meritless situations, an indictment of rulemaking that will flow from a Federal Circuit decision will do nothing more than embolden challenges and flood the court system with cases that will for years require district courts and the regional Courts of Appeals to set the appropriate balance. The only way that will happen is by further indictment of the Patent Office as judge after judge explains just how bad the Patent Office rulemaking was and that in whatever case is before them the clear disregard for the law shown by the Patent Office is not what is at issue. When the Federal Circuit ultimately issues its decision after the new PTO administration is in place the claims and continuations rules will be once and for all thrown out and there will be no doubt left that the Patent Office did not have the authority to directly contradict the patent laws enacted by Congress. The truth is that the Patent Office tried to do something they didn't have the right to do and they were challenged, thankfully, by Dr. Tafas and GlaxoSmithKline and the many amici who filed briefs explaining exactly how and why the rules were bad and not supported by the law. Why do our lame duck political leaders want to turn a clearly bad decision to act contrary to the overwhelming weight of public comment and contrary to the Patent Act itself into a miserable precedent that will undoubtedly embolden legions of challenges to legitimately rulemaking? Because if you continue down that path this is exactly what will happen, and someone needs to point that out to our leaders and get them to accept reality. About the Author: Gene Quinn is a US patent attorney and the founder of IPWatchdog.com, and is the Editor and chief contributor to the PLI Patent Practice Center and is on the PLI Patent Bar Review faculty.