By Kevin E. Noonan --
As reported earlier today on the PLI Patent Blog, Senator Charles Schumer (D-NY) last Thursday sent a letter
to U.S. Patent and Trademark Office Director Jon Dudas (at right), asking the Director to delay implementation of the new continuation and claims rules (see 72 Fed. Reg. 46716).
In his letter, Sen. Schumer (below) cites both the opposition of inventor and other groups, and the pending lawsuit in the Eastern District of Virginia brought by GlaxoSmithKline, as reasons for delaying implementation of the rule. The Senator's letter cites the potential for disparate impact of the new rules on different technologies, as well as the potential for unintended consequences 
including harming American innovation. The Senator also raises the issue that the costs of filing an Examination Support Document (ESD) could require inventors to make choices between financial resources devoted to additional claims necessary to protect their inventions, and the costs of preparing an ESD. He also noted that ESD practice could undermine "core principles" of candor in making disclosures to the Patent Office and the public.
The significance of the Schumer letter is that the Senator is a co-sponsor of the patent "reform" bill languishing (fortunately) in the Senate. Some have speculated that the Senator's letter may be merely a signal to the Office that they should wait until the "reform" bill, which contains (in the versions passed by the House of Representatives, H.R. 1908) provisions authorizing the Patent Office to make substantive rules with regard to continuations. Another possibility is that the Senator (or one of his staffers) listened to constituents like Gene Quinn who have provided the Senator's office with information regarding the new rules. And it cannot be forgotten that under Senate rules any Senator can put a "hold" on any measure that, while not binding, will frequently be respected and prevent a bill from coming to a vote. The Senator's belated interest in the inadvisability of the new rules just might be a signal that some on Capitol Hill are beginning to understand that the push for "reform" has less to do with a broken patent system than it has to do with the unenlightened self-interest of certain technology sectors looking to stifle competition (you know who you are). It may behoove readers to send their own signals to their Senators to derail the disaster of "reform" before there is nothing of any value left in the U.S. patent system.
Glaxo wins this round!
Posted by: NIPRA anonymous | October 31, 2007 at 11:16 AM