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« Court Report | Main | USPTO to Hold Public Meeting to Discuss PCT improvements »

January 10, 2010

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"However, this decision was mooted by joint motion between the Office and GlaxoSmithKline to have the panel opinion vacated."

Not quite Kevin.

The panel decision was wiped out when the Federal Circuit took up the matter En Banc. I had commented on the import of this when it happened, prior to the capitulation.

Only later did the Office decide to drop the matter and then the Office and GlaxoSmithKline petition for dismissal and vacatur (which vacatur was declined - leaving the lower court ruling in place).

While not the focus of your article, these are important details that should not be glossed over.

Kevin,

A very good, thoughtful article about the implications of and "bigger picture" in Wyeth. Thanks.

Kevin - Thanks for those last 2 paragraphs. I've been pondering why the PTO would even fight this. What do they care if a patent terms is extended another 3 months? How would that affect the office?

Let litigants fight it out if the issue ever came up.

Dear Noise:

Admittedly mentioned in passing, but the en banc court could have merely affirmed the panel opinion (look at the Enzo v Genprobe decision by the en banc panel that just sent it back for the original panel to get it right - under the circumstances, if the majority of the judges in Tafas had decided that the original panel was correct there would be little need to speak broadly on the issue). It was only when the court granted the motion to abandon the appeal en banc (and denied the motion to vacate the district court opinion) that the Federal Circuit had no opinion on the record in the matter.

But you are correct that I could have said it more clearly. Thanks for the clarification.

The PTO now has 90 days from the decision to appeal to the SupCt. Any thoughts on whether that's likely to happen here? The CAFC decision appears to be a remarkably clear slap on the PTO's wrist about its interpretation of the statute (not to mention its lack of authority to act) and it would seem unlikely that the DOJ would push this one farther up the chain; still, as it considers its options, I wonder how many more Wyeth petitions will be dismissed between now and April 7...

ptageek:

The USPTO could petition for certiorari, but after it rescinded the rules and sought to dismiss the en banc appeal in Tafas, I would be a little surprised. The USPTO seemed to have a better deference case in Tafas than it does in Wyeth. I agree, however, that we may get a hint of what is to come by watching how the Office handles recent requests for reconsideration of PTA. Thanks for the comment.

Don

But keep in mind that the district court said that the PTO's argument was a reasonable interpretation of the statute, but the court believed its interpretation was at least as correct.

One reason the Solicitor might file the cert petition would be the strength of the CAFC smack-down - the panel did not take the sting out of the rebuke to the Office's statutory interpretation, and unlike the district court affirmatively stated that they thought the Office's interpretation was "strained" and clearly incorrect.

We'll see. Thanks for the comment.

Point of clarification - the district court said the policy behind the Office's interpretation (not permitting double-recovery of time lost due to prosecution) was reasonable, but interpreted the statute as the CAFC affirmed.

But the district court was less harsh in its rejection of the Office's interpretation. We'll see if that makes a difference; the situation is sufficiently limited that it is unlikely to provoke a cert petition as a general protection of administrative agency statutory interpretation, and as Don points out it would be contrary to the way Director Kappos has handled these sorts of disputes in other areas (like the Tafas case, where the Office stood to benefit from the court's expansive reading of its procedural rulemaking authority).

Or maybe the Office heard that the en banc court was going to go the other way on the question. We will only know if a similar question comes up (and in view of what provoked the last one, let's hope we never will).

"Or maybe the Office heard that the en banc court was going to go the other way on the question."

Kevin,

I will use your own line to reaffirm my initial post and say this is a hunch as to why Kappos pulled the plug on the continuation rules. As you point out, Kappos had more riding on that earlier decision and was seemingly coming off of a victory with the smaller panel. It seems very unlikely to have pulled out then and yet to go to the mat on this one.

The reason why the earlier turn of events should be kept in mind is precisely why I am comfortable with my hunch. Kappos played the odds and figured that a chance at vacatur was better than the inside word of a complete en banc smackdown. GSK even went along with the move to vacatur (for the life of me, I cannot figure out why). I am extremely pleased that Tafas held his ground.

I also want to dissuade anyone from giving even a smidgeon of credibility to the continuation rules panel decision. That decision has ZERO legal weight and deserves ZERO legal weight.

Dear Noise:

Agreed - the panel decision is a nullity.

BUT

it does indicate how those particular judges felt about the issue. I don't think you can unring the bell, and I think Kappos understood 1) that the c&c rules were dead because even the panel decision said Rule 78 was substantive (and without that rule the others were a waste of time with regard to the impetus for the rules in the first place i.e., the backlog); 2) the Office's problem isn't the backlog so much any more as the decreased revenues and reduced filing frequency, again blunting the need to the C&C rules in the first place; 3) that the rules were dead because the OMB said they were (no matter what the en banc court had to say) and 4) that abandoning the appeal was a politically-popular thing to do.

So while I agree, I also don't think we should ignore the panel opinion, either.

Thanks for the comment.

"I will use your own line to reaffirm my initial post and say this is a hunch as to why Kappos pulled the plug on the continuation rules. As you point out, Kappos had more riding on that earlier decision and was seemingly coming off of a victory with the smaller panel. It seems very unlikely to have pulled out then and yet to go to the mat on this one.

The reason why the earlier turn of events should be kept in mind is precisely why I am comfortable with my hunch. Kappos played the odds and figured that a chance at vacatur was better than the inside word of a complete en banc smackdown. GSK even went along with the move to vacatur (for the life of me, I cannot figure out why). I am extremely pleased that Tafas held his ground."

I think my reasoning is a more explanation of what happened. If you were a man, then you would know so.

I think my reasoning is a more reasonable* explanation of what happened. If you were a man, then you would know so.

"http://www.youtube.com/watch?v=1pMT2t00GO0"

At 0:58 explains it pretty well.

6,

your tripe is not worth the click.


Kevin,

I grant that the panel deicsion does have some minor worth. It shows which CAFC judges to keep an eye on. And while I cannot unring a bell - I know which bell makes the louder, more permanent, and oh by the way, the current Legal Noise - this time a Noise that is Law (sorry for the inside joke - those who know, know I couldn't resist).

I don't buy the backlog as a driver one single bit. The thought that as you say that the one rule was missing made the package incomplete is compelte nonses as well. Witht he vicotry at the panel level, it would have been NOTHING to reformulate the one missing rule to obtain what they wanted. In fact, with the power switch of the bulk of examination to the applicant, the Office was set to reduce backlog even without the last rule. Sorry, but your explanation doesn't wash. The move was a power play pure and simple, an illegal power grab and there are similar smackdowns of the Office power grabs before "backlog" was a dirty word. Even now in a time as you say the focus is elsewhere, the Office's strong armed minions (BPAI) still power grab. The Office lost a battle, but the war is still on - it's just on different battlefields.

As to your point 3), I keep on waiting for some word that the Office Counsel is being investigated for the actions of continuing the illegal power grab after knowing that the OMB had the rules in a deathgrip. How can the counsel get away with not informing the court or opposing counsel of such material knowledge?

Dear Noise:

OK, let's assume you are correct about the Office's motivation - what would be the benefit of the "power grab?" The effect of the rules would have been fewer applications, since no one would file an ESD on anything expected to be commercialized. Ironically, if the rules had been implemented we would probably be in the same place we have been in since the rules were promulgated- a dramatically-reduced allowance rate, fewer filings and lower PTO revenues. So what do you perceive as the point of the "war" of not to improve Office statistics?

I look forward to your response.

Kevin,

I am uncertain by what you mean as "So what do you perceive as the point of the "war" of not to improve Office statistics?"

That is not the war I refer to. The war I refer to is the Office wanting to control and rewrite patent law so that they set ALL the rules and could do whatever they wanted to do. While the ESD effect would have been extremely bad for the Office, as many of the bar commented, that bit of logic in itself does not refute in any manner the "plan" of the Office. The Office does many things which befuddle me in that they seem to actively seek to make the Office itself meaningless and to "close the doors". Perhaps this is why the famous quote to Charles H. Duell has such vibrancy, as well as the phrase "The Office puts the NO into inNOvation" rings so true (at least up until recently when Kappos flatly stated that quality does NOT equal rejection. A shame it actually took the Boss to come out and state such a thing, isn't it?

Dear Noise:

Agreed about it being a pity Kappos had to remind the corps that their job wasn't just to reject, but in view of the mismanagement of the previous administration, the reject-reject-reject philosophy (and outcome) were predictable.

This type of thing seems to happen periodically - the early 1990's in biotech were no picnic, but then Commissioner Lehman made an effort to reverse some of the nonsense (and the Bell and Deuel cases reversed the rest), and there was a period of relative sanity. Which KSR, Kubin, Bilski et al. have started to unravel.

But I don't think we can just impute power-hungriness as the only motivation - it's pretty pathetic if that was what Dudas was trying to do (and it might have been). But I think it more plausible that the Office (at least management from John Doll on down) believed that there was a crisis, and that crisis was missing beureaucratic targets (and the political criticism that came with the perception that the Office was mismanaged, that patent law was broken, etc.).

But the OMB stuff, and the RIM/NTP stuff may in fact have crossed way over the line. Unfortunately, like many evildoers in the past administration, the current one doesn't seem interested in settlind scores or righting wrongs, just with moving on.

Thanks for the comment.

One more comment before I move on as well Kevin (btw thanks for the forum),

Who would be responsible for holding the Office's Counsel to task for any indiscretion committed in the carrying out of his duties?

Thanks again,

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