Applications Flagged for 5/25 Violations Already!
18 October 2007
By Gene Quinn, Patent Attorney & PLI Blog Editor
A few days ago in, a Patently-O post, it was reported that cases were already being flagged by the Patent Office for violating the 5 independent claim and 25 total claim rules that will go into effect on November 1, 2007, and I then posted mentioning this Patently-O report. In response to that post here on our blog we received a comment that stated that as of October 16, 2007, several cases on the docket of one patent attorney had been flagged. This is a huge development! This cannot be ignored because the new rules make distinctions between cases that have had a first office action and those that have not had a first office action. Specifically, the Summary of the rules contained in the Federal Register notice explains:
The changes to 37 CFR 1.75, 1.142(c), and 1.265 are also applicable to any nonprovisional application filed before November 1, 2007, in which a first Office action on the merits was not mailed before November 1, 2007.
For those who have not internalized the changes made in these CFR sections, which I suspect is many of you (and me too!), allow me to point out that this means that if you have not received a first office action on the merits by November 1, 2007, then you are going to be subject to the so-called 5/25 rules, which are going to require you to cancel claims or file an Examination Support Document, which will cost thousands of dollars and provide the rope necessary for anyone to challenge the patent later. This is the height of arrogance, and luckily the height of stupidity, on the part of the Patent Office. One of the things that some have said will make it difficult for GlaxoSmithKline to prevail on the TRO & Preliminary Injunction level is because they will be hard pressed to show irreparable harm. This is irreparable harm, and it is evidenced by the Patent Office's own PAIR system!
Flagging applications prior to the enforcement date of the new rules is one thing, but according to the post in Patently-O by Dennis Crouch he has contacted the Patent Office and was told that these flagged applications were being removed from examiner dockets! The post reads:
According to a telephone conversation with the Office of the Commissioner for Patents, these cases have been pulled from Examiner dockets because they exceed the 5/25 limit and are thus-far unexamined.
It will be exceptionally difficult to get a first office action mailed on or before November 1, 2007, if the application has been pulled from the examiner docket. In fact, even though there may be some evidence that the Patent Office has noticed their mistake and may be removing flags as we speak, if an application was flagged and removed from the examiner docket for any length of time that has to by definition make it less likely that an office action would be mailed on or before November 1, 2007. So unless the Patent Office mails first office actions on or before November 1, 2007, for all applications that were flagged then it seems like an open and shut case of irreparable harm, not to mention arbitrary and capricious action by the Patent Office and violation of the law. You simply cannot notice an effective date of new rules and then start enforcing early! This is America for crying out loud! We have rules of law and the government doesn't just get to make things up as they go along!
Whether this blatant disregard for process will matter depends upon those affected pointing out what has happened. To patent attorneys, check to see if any of your cases are or have been flagged. If they have been suggest to the client that they consider joining the GlaxoSmithKline lawsuit, but in the meantime file a motion for permission of the court to file an amicus brief in the TRO/PI matter. To clients, call your patent attorneys and ask them to help you take some action to get involved, get your message out there and to take the fight to the Patent Office. If GlaxoSmithKline is the only one challenging the rules it will be a much harder case, at least at the TRO/PI stage.
PLI - Patent Blog
Applications Flagged: Episode II
18 October 2007
By Gene Quinn, Patent Attorney & PLI Blog Editor
In the spirit of sharing and cooperation, and to get the word out there as much as possible, I allowed the Patent Prospector blog to republish some of my work here on the PLI Patent Practice Center Blog. Essentially, I combined a couple posts to create something quasi-unique. Why am I telling you about this? An anonymous comment was just made on that blog posting, which reads:
As an examiner inside the PTO bunker, I can tell you that the (sic) started going through our dockets for enforcement of the 5-25 rule on Monday, October 15th. It might have been done earlier than that date but that was when I first noticed that my docket was looking rather threadbare as all the large-claim applications had been culled.
Anonymous statements from those allegedly inside the PTO won't save the day on a Motion for TRO & Preliminary Injunction, but this seems to me to be smoking gun evidence of irreparable harm, the element that would be the most difficult to prove I suspect. I don't know whether this was done in any of GlaxoSmithKline's pending applications, but if it was I think the odds of them winning an injunction would jump significantly.
The word I am hearing though from comments posted to the various articles on our blog here at PLI are that the flags have been removed. What would be particularly helpful, I think, is if someone had a screen shot or print out of PAIR showing when such a flag was placed and when such a flag was removed. Given that applicants will have to adhere to the 5/25 limit if no first office action has been mailed on or before November 1, 2007, I suspect that if an application were removed from an examiner docket for any length of time that would be irreparable harm. What is to say that an examiner wouldn't have choosen one of those files to work on? Even if it was not at the top of the que it could still have been choosen for work, we all know that. Are there any former patent examiners who are now outside the office willing to go on the record with an affidavit explaining to the court the effect of removing a case from the examiner docket? How about also explaining that in practice examiners don't always take cases in order?
By the way, thanks to Patent Hawk at Patent Prospector for dubbing me a Jedi knight. Who knows whether one Jedi, or patent attorney, can help take down the Empire, but I am giving it a shot!
