By Donald Zuhn —

Last week, the Public Patent Foundation (PUBPAT) announced that a coalition of consumer advocacy and public interest groups had filed an amici brief in the Tafas v. Dudas appeal.  The brief, which was signed by PUBPAT Executive Director Dan Ravicher (below left), was filed on behalf of PUBPAT, AARP, the Computer & Communications Industry Association (CCIA), Consumer Watchdog, Essential Action, Initiative for Medicines, Access & Knowledge (I-MAK), Prescription Access Litigation (PAL), Public Knowledge (PK), Research on Innovation (ROI), and the Software Freedom Law Center (SFLC).

The public interest groups wasted few of the brief’s 30 pages explaining the perceived flaws in Judge Cacheris’ opinion, electing instead to repeat the mantra that the continuation and claims rules were good because they "would significantly advance both the general public interest and the specific aspects of the public interest that [the amici] each separately exist to represent."  According to the brief, these specific aspects include facilitating the entry of generic drugs to the marketplace (AARP), fighting embryonic stem cell patents that allegedly impede research efforts (Consumer Watchdog), challenging illegal prescription drug price inflation by pharmaceutical manufacturers (PAL), and advancing the development and free distribution of Free and Open Source Software (SFLC).

Outside of a few generalized statements about "curtail[ing] abusive behavior by exploitative patent applicants" and improving patent quality, the brief provides little explanation as to how the continuation and claims rules would allow the amici to achieve their specific objectives.  With respect to curtailing abusive behavior, the amici argue that the continuation and claims rules "do not restrict any of the rights of patent applicants under the law," but rather, "strike a fair and reasonable balance between preserving the rights of patent applicants to obtain all of the patent protection they deserve and ensuring that those patent applicants who want to game the system for undue advantage are thwarted in such attempts."  The amici then trot out Lemley (at right) and Moore’s "Ending Abuse of Patent Continuations" to establish that an "endless stream of continuation applications" results in a "wearing down" of examiners, which in turn leads to the issuance of undeserved broad patents.

The brief also labels the practice of submitting claims that read on a competitor’s product in a later filed continuation application as a "perverse manipulation of the patent system" that "defeats the public notice function of patent claims."  As for the assertion that the continuation and claims rules do not restrict the rights of patent applicants, the amici contend that applicants denied an additional continuation (after using up their two continuations as a matter of right) are not left without a remedy, but can elect to pursue an appeal to the Board, and if that doesn’t work, take their appeal to the Federal courts.  For the amici, the costs of such appeals must be small when compared with the opportunity to eliminate a yet to be quantified amount of "abusive procedural gamesmanship" committed by a yet to be determined percentage of patent applicants.

Not surprisingly, the amici take the position that "any claims desired and deserved by a patent applicant can and should be included in the original application, an amendment to it, or any of the continuation applications allowed under the Final Rules as a matter of right without justification."  As luck would have it, the continuation and claims rules would have provided precisely the number of continuation applications that an applicant would have needed to secure all of the claims it "desired or deserved."

The brief treats unlimited claiming as it does the right to file unlimited continuations, arguing that "some applicants purposefully attempt to overwhelm the USPTO examiner by submitting dozens, if not hundreds, of claims in their application with the hope that the examiner will simply not have sufficient time to fully analyze and review each one."  Alluding to the creation of Examination Support Documents (ESDs) under the continuation and claims rules, the amici argue that applicants "who seek more than a reasonable number of claims [should] provide some assistance to the USPTO in reviewing that application."  Notwithstanding the ESD requirement, the amici argue that the continuation and claims rules "do not in any way preclude applicants from applying for as many claims as they would like, nor do they take away any right granted to patent applicants under the Patent Act."

The brief concludes by taking up the second of its generalized statements, i.e., that the continuation and claims rules would improve patent quality.  The amici argue that "there have been several patents that were used to preclude competition in markets worth billions of dollars that were later proven to be undeserved," and that "this phenomenon repeatedly occurs is the pharmaceutical industry."  As evidence of this "phenomenon," the brief points to the invalidations of the paclitaxel patent in Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368 (Fed. Cir. 2001), and the fluoxetine hydrochloride patent in Eli Lilly & Co. v. Barr Labs., 251 F.3d 955 (Fed. Cir. 2001).  However, if it only takes one or two invalidations to establish that the patent system is in desperate need of repair and that the continuation and claims rules present a reasonable solution, then opponents of these rules will have a difficult time convincing the amici that the continuation and claims rules went too far and would have caused far too much damage to the public interest.

For information regarding this topic, please see:

• "USPTO Files Opening Brief in Tafas v. Dudas Appeal," July 22, 2008
• "Save the Date — Initial Scheduling of the Tafas/GSK v. Dudas Appeal," May 21, 2008
• "USPTO to Appeal Tafas/GSK v. Dudas," May 7, 2008
• "No April Fool’s Joke — Tafas and GSK Win on Summary Judgment," April 1, 2008
• "Judge Cacheris Takes GSK Case under Advisement," February 8, 2008
• "GSK Summary Judgment Hearing Set for Friday Morning," February 7, 2008
• "New Briefing Deadline Set In PTO Rules Case," December 18, 2007
• "Court Sets Summary Judgment Schedule in New Rules Case," December 3, 2007
• "No Discovery in New Rules Case," November 27, 2007
• "Tafas v. Dudas; SmithKline Beecham Corp. v. Dudas (E.D. Va. 2007)," October 31, 2007
• "USPTO Late to Its Own Party," October 31, 2007
• "GSK Secures Injunction," October 31, 2007 (includes links to Court’s Order and Opinion)
• "GSK TRO/Preliminary Injunction Hearing," October 29, 2007
• "GSK Brings Out the Big Guns Opposing the New Continuation and Claims Rules," October 24, 2007
• "Hooray! – (Finally) the Big Dogs Have Joined the Hunt," October 11, 2007
• "Rules Challenger Amends Complaint and Withdraws PI Motion," September 11, 2007
• "Inventor Sues PTO to Prevent New Continuation and Claims Rules from Taking Effect," August 30, 2007