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« Court Report | Main | Secretary Locke Appoints Godici to Assess USPTO Challenges »

July 06, 2009



That the Federal Circuit granted rehearing en banc suggests these nefarious (and oxymoronic) claim-continuation limitation rules are in trouble. The interesting question is whether the PTO will withdraw this rules package before the Federal Circuit ax falls. I doubt the PTO wants a ruling by the en banc Federal Circuit that the PTO has no authority to enact this rules package as it would also undermine their authority on the other pending rule packages on IDSs, appeals and Markush Groups.


If the Office withdraws at this point, keeping in mind that the CAFC Panel decision has been vacated, wouldn't the Office be in a "no authority" state, as standing ruling is that of the District Court, which held that the rules were not allowed?

If for no other reason, the Office seems locked into fighting this particular fight here and now.

Noise above Law,

You bring up a valid point, but as it stands now, the PTO is in a crap shoot which could easily come up snake eyes. By pulling the rule package now, the PTO could still argue that, without a final Federal Circuit decision, their authority to enact a properly drafted set of claim-continuation rules hasn't been fully adjudicated. I suspect this wouldn't be the first time a federal agency pulled a rules package that was in trouble so that it could be refined to address the challenges and perhaps survive a court test. If the PTO continues on with what has been, so far, a "damn the torpedoes, full speed ahead" approach, that could get them a decision from the en banc Federal Circuit that provides no wiggle room for the PTO at all. Conversely, if they pull the rules package now, and address the noted "weak spots," including the APA/RFA/OMB infirmities pointed out by Dave Boundy et al., they might be able to undermine the opposition to these rules a subsequent court fight develops.

Is there an on-line copy of the PTO's response to the en banc petitions?

With what's at stake (rulemaking authority), it is unlikely that the Office will back down, including petitioning for certiorari if the en banc panel does anything other than reverse on Rule 78. Particularly if the court speaks to PTO rulemaking authority broadly, there will be serious pressure to get the Supreme Court to reverse any restrictions on the Office's rulemaking authority. In some ways the present administrative situation is the worst, since presumptive Director Kappos will not have had time to work through the various issues with the Office by the time the need for a cert petition becomes evident. None of the incoming administration wants their hands tied, and the "old guard" has 3-4 years invested in the rulemaking process and these rules (as well as the IDS, Markush and appeals rules).

The thing to remember is something Professor Duffy said at BIO - the Supreme Court is much more comfortable with administrative law than they are with patent law. Since the issues are almost all questions of administrative law, the Federal Circuit should expect even less deference from any Supreme Court review than they may occasionally get from the Court on patent law issues. So the real question is whether the en banc panel comes to a decision that passes muster with the administrative law mavens in the Obama administration (such as Arti Rai), who may then counsel against (or at least not advocate for) Supreme Court review. Remember, over the past 10 years the Solicitor General recommended the Court review most of the CAFC decisions that were struck down, so this aspect may be crucial.

Thanks, EG and Noise, for the comments.

"With what's at stake (rulemaking authority), it is unlikely that the Office will back down, including petitioning for certiorari if the en banc panel does anything other than reverse on Rule 78."

That is what will happen if they lose. The very best outcome that people could hope for if they don't like the rules is a win at the CAFC and the SC to not take the case.

It is unlikely the SC wouldn't take the case, as this is an important case for a whole lot of agencies, not just the office even though the office has special rulemaking authority.

Kev, over at PO someone brought up that IBM was strongly in favor of the continuation limits I do believe.

mavin is a cool new word for me.

With Arti on your side how can you lose?


As Kevin pointed out back in October of 2007 (and again yesterday), Mr. Kappos filed an affidavit in support of the AIPLA's amicus brief to the district court supporting the Tafas/GSK challenge to the claims and continuation rules. So it's hard to believe that IBM would have been strongly in favor of the continuation limits in the new rules (although I guess it's possible that he took a position that was at odds with his employer).

Also, Prof. Rai has pointed out on several occasions that while she supported the PTO on the administrative law issues in Tafas, she did not think the claims and continuation rules were a good way to address the backlog.


My understanding is that Kappos is strongly in favor of the Continuation limits. I would expect him to push them.

As Mark Nowotarski posted earlier in a comment to the June 18 article on Kappos's appointment:

"IBM strongly supports the concept of limits on continuation applications." http://bit.ly/IVcrY

Posted by: broje | Jul 07, 2009 at 11:13 AM

That link says it all.


It's hard to argue with the sentence "IBM strongly supports the concept of limits on continuation applications." A reading of the letter shows that IBM was "not recommend[ing] per se limits on the number of continuation application filings, [but] that there should be a practical method of controlling how many continuation applications can be filed." Also, while IBM "in principle" supported a rule requiring a showing to get a second CON (remember that the proposed rule was more restrictive than the final rule), its support was conditioned on the resolution of three issues, including "how this standard [i.e., requiring a showing] is to be applied." Nevertheless, if IBM's position has remained unchanged since it submitted its letter in May 2006, we should be thankful that President Obama didn't appoint IBM as the new Director.



President Obama’s nomination of David Kappos as the Patent Director may prove embarrassing if Mr. Kappos is aware of suspect insider trading at IBM.

Visit -- www.ibmTheWidowMaker.com

"Since the issues are almost all questions of administrative law, the Federal Circuit should expect even less deference from any Supreme Court review than they may occasionally get from the Court on patent law issues."


A very astute observation. My thinking on the possibility of the PTO pulling this rules package now is that it is currently burdened with many other issues, including retroactivity, how the rules were enacted, etc. The PTO might be better off repackaging these claim-continuation rules that's much easier defend. If the Federal Circuit en banc takes a broad stance that this particular rules package is beyond the PTO's authority to enact, that might poison any subsequent efforts by the PTO to present a more defendable package (which the current one is not).

On the other hand, if the PTO loses before the Federal Circuit en banc, and petitions for cert to SCOTUS, look out. Currently, the only constraining force on PTO rule making is the Federal Circuit. If SCOTUS removes that brake in Tafas v Doll, we might as well torch the APA, at least in the patent area, as meaningless verbiage. Frankly, the whole doctrine of Chevron deference is, in my view, an abrogation by the judiciary of its role and an abomination in our jurisprudence.


If the Office does pull out now (for any reason, be it to repackage or not), don't they leave in place a hurdle that would be very difficult to overcome?

Granted the standing judgment is only at the District Court level, but it is a standing judgment. And Office "rule-making" will have been adjudicated.

Even if they dress up the rules package and try again, the judgement as delivered by the District Court will get in the way of their next (best?) effort, regardless of how pretty the effort.

The battle lines are set - there is no retreat without complete defeat. With whatever the en banc group decides, I see this going the distance.

Noise above Law,

You could well be correct that this might go the distance, including up to SCOTUS. I do stand by my view that, if this does go up to SCOTUS and they uphold the authority of the PTO to enact rules like these, we might as well torch the APA as meaningless verbiage in the patent area.


It appears that my comment from yesterday has been snagged in a filter.

Briefly, I believe that we concur.

I am interested in whether the Supremes, more apt in administrative than patent law, would allow the opening of such a Pandora's box as the Office so wishes. "Doll deference" would replace "Chevron deference".

I think that the torch would singe much more than merely the patent area, and I am hopeful that the power grab will be recognized as what it is.


Your recent comment gives me an opportunity to explain how comments get posted on Patent Docs.

I receive a copy of almost every submitted comment at the time it is submitted from the online service (TypePad) that I use to maintain the blog. I say "almost every" submitted comment because a handful of spammers have recently figured out how to post comments without prompting such notifications. As a result, I have reset the preferences for the blog such that I must publish each comment before it will appear (thus effectively locking out the spammers). Depending on when the comment is submitted, this can sometimes take a little time. When TypePad resolves the issue with these spammers, I will return to our previous settings.

Notwithstanding the above process, I reviewed our database of comments, and we have no record of a comment being submitted on July 9th. However, in view of the problems TypePad is experiencing with comment management, it is entirely possible that they "lost" your comment.

Thanks for reading Patent Docs and thanks for taking the time to comment on our content.


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