Breaking A Very Long Silence

    By Kevin E. Noonan --

A curious aspect of the recently-promulgated new prosecution rules (see links below) has been the relative silence of the major interest groups in opposition.  Perhaps lulled by pundits who declared the new rules "dead" as recently as six months before they were issued, or because the focus was on Capitol Hill initiatives such as "patent reform" or the various biogenerics proposals, the fact is that (except for the overwhelmingly number of negative comments provided to the Office) the major groups who might have been expected to be significantly more vocal (such as the Biotechnology Industrial Organization (BIO) and the Pharmaceutical Research and Manufacturers of America (PhRMA)) before the rules were finally issued were silent.  Indeed, the head of BIO appeared to be unprepared for a Patent Docs question regarding litigation challenging the new rules (see "BIO CEO Provides Briefing on Follow-On Biologics and Patent Reform").  Perhaps this inertia can be explained as the rational response to this Administration's notorious resistance to anything resembling consensus-building or debate that extends beyond blind obedience - from the tenor of the townhall meetings roadshow at the time the new rules were proposed to the efforts (both in person and in various "webcasts" from the Office) thereafter, it is clear that institution of these rules was foreordained and inevitable.  Indeed, the only legal efforts to overturn the rules were not taken by any of these trade organizations (not even the legal ones such as the AIPLA), but by an individual inventor (see "Rules Challenger Amends Complaint and Withdraws PI Motion").

"Once bitten, twice why" is the adage, and the response of the patent community to other Patent Office "initiatives" has been decidedly different.  The Intellectual Property Owners (IPO) organization submitted and published on their website their objections to the proposed appeals rules, and the National Association of Patent Practitioners have also objected and made their objections public.  In both cases, the major objections are: 1) that the appeals rules were recently revised (in August, 2004; 69 Fed. Reg. 49960) and that there is no evidence that the new revisions are necessary; 2) the rules are unduly complex and the page restrictions unnecessary and contrary to the thorough determination of patentability that applicants are entitled to; 3) the lack of concomitant page number restrictions on the Examiner's Answer are unfair and prejudicial to applicants; 4) the rules continue the recent Office trend of shifting the procedural and substantive examination burdens onto applicants; and 5) that the timing of these rules are unfortunate in view of the expected increase in appeals occasioned by the limitation on the number of continuations in the rules promulgated on August 21, 2007 (effective on November 1, 2007).

In view of the reluctance of the Office to be dissuaded from its mission to provide more "effective" examination by adopting rules seemingly intended to reduce pendency and the application backlog "by all means possible," regardless of its effect on innovation or the integrity of the U.S. patent system, it is unlikely that these efforts in opposition to the proposed rules will have any noticeable effects.  It is heartening, however, to see groups who should have an important voice in these deliberations finally attempting to be heard, even if their entreaties will be unlikely to have any positive effects until the current administration is replaced in January, 2009.  With any luck, the more deleterious effects of the present regime will be amenable to being reversed once the focus of the Patent Office returns to protecting American innovation rather than meeting merely bureaucratic metrics.

For additional articles in this series, please see:

• "An Analysis of the New Rules: 37 C.F.R. § 1.78(d)(1)(i) & (vi): PCT Practice," September 23, 2007
• "An Analysis of the New Rules: USPTO Releases ESD Guidelines," September 17, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.265: Examination Support Document," September 13, 2007
• "An Analysis of the New Rules: Revisions to First Action and Second Action Final Practice," September 11, 2007
• "An Analysis of the New Rules: 37 C.F.R. §§ 1.78(d)(1) and 1.114: Streamlined Examination," September 10, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.117: Refund Due to Cancellation of Claims," September 10, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.142: Suggested Restriction Requirements," September 6, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.114: RCE Practice," September 5, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.75(b): 5/25 Limit on Claims," September 4, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.78(d)(1): Claims for Benefit of Prior-Filed Applications," September 3, 2007
• "An Analysis of the New Rules: 37 C.F.R. § 1.78(f): Commonly Owned Applications and Patents," August 27, 2007

For additional information on this and other related topics, please see:

• "It Ain't Necessarily So," September 28, 2007
• "Commissioner Doll Addresses ACI Biotech Patents Conference," September 26, 2007
• "Rules Challenger Amends Complaint and Withdraws PI Motion," September 11, 2007
• "Inventor Sues PTO to Prevent New Continuation Rules from Taking Effect," August 30, 2007
• "Patent Office Provides Recorded Web-Based Discussion of New Rules," August 30, 2007
• "New PTO Continuation Rules: Unfair to Biotech?" August 29, 2007
• "Proposed Agenda for September 12, 2007 Biotechnology/ Chemical/Pharmaceutical Art Group Meeting," August 24, 2007
• "The 'Word' on the New Continuation Rules (from the USPTO Webcast) - Part II," August 24, 2007
• "The 'Word' on the New Continuation Rules (from the USPTO Webcast) - Part I," August 23, 2007
• "New Continuation and Claims Rules Published," August 22, 2007
• "More on M.P.E.P. § 710.06," August 20, 2007
• "Patent Office to Hold Webcast on New Claim and Continuation Rules on August 23, 2007," August 20, 2007
• "Patent Office Announces that New Continuation and Claims Rules Will Be Published . . . Tomorrow," August 20, 2007
• "Procuring Patent Protection from the Present USPTO," August 15, 2007
• "New Continuation and Claims Rules to Be Published in Late Summer," July 25, 2007
• "They Just Don't Get It - 'Patent Reform' at the USPTO," April 11, 2007
• "Patent Applicants Beware: The Rules Are Changing (Again)" Part 1 and Part 2, November 6, 2006