About the Authors

  • The Authors and Contributors of "Patent Docs" are patent attorneys and agents, many of whom hold doctorates in a diverse array of disciplines.
2018 Juristant Badge - MBHB_165
Juristat #4 Overall Rank

E-mail Newsletter

Contact the Docs

Disclaimer

  • "Patent Docs" does not contain any legal advice whatsoever. This weblog is for informational purposes only, and its publication does not create an attorney-client relationship. In addition, nothing on "Patent Docs" constitutes a solicitation for business. This weblog is intended primarily for other attorneys. Moreover, "Patent Docs" is the personal weblog of the Authors; it is not edited by the Authors' employers or clients and, as such, no part of this weblog may be so attributed. All posts on "Patent Docs" should be double-checked for their accuracy and current applicability.
Juristat_165
Juristat #8 Overall Rank

Pharma-50-transparent_216px_red

« Innogenetics, N.V. v. Abbott Labs. (Fed. Cir. 2008) | Main | Conference & CLE Calendar »

January 18, 2008

Comments

NIPRA has posted (another) sample letter to Congress regarding 35 USC 123 (USPTO requiring search etc.) at:

http://www.nipra.org/congress.htm

In part:

This Section, as written would be detrimental to the U.S. Patent System and it would hinder rather than promote the progress of science and the useful arts for at least five (5) reasons:

1) It gives too much discretion to the current U.S.P.T.O. Director (and to any future Directors who might not have professional background and experience in patent law) to make requirements that unduly burden patent applicants. The current U.S.P.T.O. Director (Jon W. Dudas) has already demonstrated a marked anti-patent (and anti-patent applicant) sentiment, as demonstrated for example his ill-conceived final "Claims and Continuations" rule-making which is currently under an injunction issued by the U.S. District Court in Alexandria. Specifically, Section 123 gives the Director "carte blanche" to promulgate whatever requirements he sees fit, regardless of whether those requirements might unduly burden patent applicants and the patent application process. For example, in the final "Claims and Continuations" rule-making, the Director has shown (in Rule 265) his desire to require patent applicants to not only perform a patentability search for every claim, but also to perform a technical assessment of the prior art, an analysis of the claims for legal support in the specification, and a patentability determination of how each element and limitation in each and every claim by its wording technically distinguishes over the prior art. In effect, the patent applicant is required by the Rule to do the totality of the work of the patent Examiner. It is apparent that one of the purposes of the workload burden of new Rule 265 is to discourage the applicant from filing applications which would come under its purview (i.e applications with more than 5 independent claims or 25 total claims). Of course, if Section 123 is passed, Rule 265 might apply to every patent application by this time next year without any recourse for patent applicants whatsoever.

The comments to this entry are closed.

April 2025

Sun Mon Tue Wed Thu Fri Sat
    1 2 3 4 5
6 7 8 9 10 11 12
13 14 15 16 17 18 19
20 21 22 23 24 25 26
27 28 29 30