Late last week, the Court of Appeals for the Federal Circuit made it clear that, under current law and judicial interpretation, a patent holder has no Fifth Amendment remedy against the United States government for unauthorized use of a patented invention.  By denying a petition for rehearing en banc in Zoltek v. United States [.pdf], the Court quietly let everyone know that it believes the Fifth Amendment has no place in patent law.  A dissent by Judge Newman and a concurrence by Judges Dyk and Gajarsa helpfully document the issue and, as Crouch points out, possibly help frame it for consideration by the Supreme Court.

With Zoltek as backdrop, these tough questions seem like great food for thought on a Friday morning:

If there is no Fifth Amendment property interest in an issued patent, can there be one in an application for patent?

Can the Patent and Trademark Office commit a Fifth Amendment regulatory taking by finalizing the proposed rule on continuation and RCE limits that essentially eliminates the ability to claim, through continuation practice, properly disclosed inventions in currently pending applications?

While patent holders still have 28 U.S.C. s.1498 as a remedy against the government for unauthorized use of a patented invention, what remedy, other than the Fifth Amendment, does a patent applicant have against the government for arbitrarily limiting his ability to seek protection on his properly disclosed invention?

Is the Patent and Trademark Office celebrating in the wake of Zoltek?

Should we clarify the property interest issue before we finalize the proposed rule?

Last week, I wrote about the changing scope of ‘patent reform.’ Following the release of the Draft 2007-2012 Strategic Plan by the Patent and Trademark Office, it is clear that ‘patent reform’ is beginning to take on an entirely new, much broader scope than it has in the past.  The Draft Plan hints at a desire to fundamentally alter our unitary patent system in favor of a new system that offers several different ‘patent products’ and examination alternatives.

The concepts mentioned in the draft document have certainly been hinted at before (see the ‘themes’ from the 2005 National Academies/AIPLA Conference on Patent Reform, and the interesting smoke signals we’ve seen from the Senate that contemplate different treatment for different industries).  Nevertheless, the Draft Plan represents the first official signal that a shift away from a unitary patent system is being considered.

Based on the significance of this shift in scope and the Office’s current aggressive approach to implementing change via its regulatory authority, it is critical that a proper agenda for the ‘new patent reform’ be established early…and followed.

With that in mind, here’s a proposal:

First, Congress should conduct oversight hearings to evaluate the current proposed rule placing limitations on continuation and RCE practice.  The hearings should focus on defining ‘continuation abuse,’ the stated purpose behind the proposed rule, and determining whether such ‘abuse’ exists at such a level to warrant an arbitrary limit on the ability to claim inventions properly disclosed under the statute.

These hearing should also address the significant question that exists as to the authority of the Office to implement the proposed changes.  A thorough inquiry on this point is critical because reversing and/or temporarily halting a final rule, if put in place, would place heavy time and expense burdens on patent applicants and the Office alike.  Furthermore, it is clear that making the proposed continuation/RCE rule final without a higher lever of review will create a great deal of frustration amongst the patent bar and patent system stakeholders.  From the Office’s point of view, this may make it more difficult to implement significant regulatory change in the future.  If the Office truly wants to put this rule in place, it should welcome a serious inquiry into its ability to do so.

Considering the Office’s apparently short timetable for making the proposed rule final, these oversight hearings should be conducted immediately, preferably by the 109th Congress.

Second, Congress should conduct an oversight hearing evaluating the current unitary patent system and its ability to fulfil the Constitutional requirement that the system “promote the progress.”  Is the current system working for us?  Is it the best possible system?  Could we improve the current system?  Could we build a better one?

Third, if it is determined that the system needs change to fulfill the Constitutional requirement, oversight hearings should be conducted to determine what types of changes to the patent system would best move us toward fulfilling the Constitutional requirement.  Do we need only to ‘tweak’ the current unitary system?  Is the problem simply one of administrative issues within the Office?  Would proper funding levels fix the problems?  Or, are we missing the Constitutional requirement so badly that we need to build an entirely new system?  If so, would alternative patent products, such as registrations, and examination alternatives, such as requests for examination, move us closer to fulfilling that requirement?

We need to ask these questions to ensure that we don’t automatically move toward the changes being contemplated by the Office.  If indeed change is needed, and if indeed those are the best options for change, then by all means let’s move ahead.  But, we must first ask these questions to ensure that we don’t implement unnecessary and/or ineffective changes.

These hearings should be conducted by the 110th Congress.  The 109th thoroughly examined ‘patent reform’ as we knew it over the last few years.  The 110th needs to take the inquiry up a notch to examine the issue at the societal and Constitutional level.  The scope of the ‘new patent reform’ mandates this.

Fourth, the Patent and Trademark Office must provide details on the changes that it hints at in the Draft Strategic Plan.  It is clear the Office is debating significant change that extends beyond its regulatory realm.  To fully appreciate the scope of these changes and to have open and frank dialogue on the issues they present, patent system stakeholders need details on the “plan.”  The details should be provided through an official channel in which public comments can be received and catalogued.  Ideally, these details would be made available prior to Congressional oversight hearings directed at determining the effectiveness of examination alternatives and alternative patent products.

Thoughts?

Remember when ‘patent reform’ was about moving to a first-inventor-to-file system? About adopting a post-grant review procedure and making it easier for third parties to submit art for examiner consideration? Heck, remember when it was about changing the injunctive relief standard?

Well, those days are gone. Looong gone.

With the release of the Patent and Trademark Office’s draft Strategic Plan for 2007-2012, we now know that ‘patent reform’ is, now, a much broader concept. If you haven’t read the draft yet, I encourage you to do so. If you’re pressed for time, just read the press release regarding the release of the draft, the Introduction (3 pages), and the ‘Goal 1: Optimize Patent Quality and Timeliness’ section (9 pages).

Really pressed for time? Read the last paragraph on page 14 and the first paragraph on page 15.

With the release of the draft plan, the Patent and Trademark Office has single-handedly changed the scope of ‘patent reform.’ It’s now clear that some believe the term should refer to a deconstruction of our unitary patent system. The draft plan, while short on details, talks of “early determination of rights,” “accept[ance] of more limited property rights in exchange for lower costs and faster processing times,” and “some combination of examination processes and patent products that will better allow applicants to choose what determinations and results they need.”

the draft PTO strategic plan represents the beginning of a new chapter in the patent reform movementThe draft plan, with it’s focus on these new fundamental changes, represents the beginning of a new chapter in the patent reform movement. Seems to me we’re now talking about requests for examination, alternative ‘registration’-type systems, and other enormous changes.

How’s that for a ’strategic plan’?

Remember the good ole’ days when we liked to debate the pros and cons of post-grant review? Ah, man, to have those back again…..

New to blogs? Wondering how best to read them? Here’s the 101 lesson of the day….don’t forget the comments. If you’re just reading the latest and greatest article, you’re missing a lot. Comments on articles often turn into fascinating discussions. To wit, read the comments on last week’s article regarding the confirmation of Judge Kimberly Moore. Great discussion.

Several readers of Promote the Progress have asked about Rethink(IP), the group blog I maintain with Steve Nipper and Doug Sorocco. I’ve had several “where have you guys gone?” discussions over the summer, and it seems that no one is buying my standard answer of “we’ve got several projects coming together that have all but killed our ability to write for Rethink(IP).”

Well, summer’s over, and all of our hard work is coming to fruition. Stay tuned because we’re preparing to launch a series of projects over the next several months.

There’s a whole slew of new and exciting tools and resources for intellectual property professionals. First up, though, is LegalMojo, a job board for legal professionals in all areas of law (not just intellectual property). We’re preparing the LegalMojo site for an official launch later this month, and we need to populate it with job postings in preparation for the big rollout.

So we’re extending a special pre-launch invitation to the readers of our collective blogs to get their listings in early (read between the lines). If you’ve got a legal job opening that you need filled, please contact Vince, our jobs board director, via e-mail (vince@legalmojo.com) as soon as possible.

Wondering about the effectiveness of blog-based job boards? Read this Fast Company article, and you’ll likely stop your wondering, much like we did.

It’s going to be an exciting fall. Stay tuned.

I think he’d tell the Office to focus on its core business…patentability.

Everyone knows that the Patent and Trademark Office is readying its proposed continuation rule for final.  It appears that, soon, we’ll be living in a world that is very different than the one we know today.

At first glance, the rule seems like an aggressive attempt by the PTO to address its suffocating backlog.  Remember, though, that John Whealan, Solicitor and USPTO General Counsel for Intellectual Property, has indicated that the rule is not specifically designed to deal with the backlog.  Rather, it’s designed to address the problem of ‘continuation abuse.’

While we don’t know exactly what constitutes ‘continuation abuse’ yet, I think most people would agree that it relates to repeated use of continuation filings to obtain relatively broad claims long-after the filing date. The practice allows patentees to wait for a technology to be developed by others and then draft claims that cover the commercial embodiments. In essence, the patentee gets the benefit of seeing the commercially developed embodiments and ensuring that his later-filed claims cover the technology.

If it is determined that ‘continuation abuse’ is a problem that must be dealt with, is the Patent and Trademark Office the proper body to deal with the issue?

In this light, the following dicta from the CCPA’s opinion in In re Hogan 559 F.2d 595 (CCPA 1977) is quite interesting. When rejecting a PTO argument asserting that an Examiner should be able to employ evidence of a later state of the art to determine compliance with the enablement requirement, Chief Judge Markey stated:

“The PTO position…reflects a concern that allowance of Claim 13 [a later-added, relatively broad claim] might lead to enforcement efforts against the later developers. Any such conjecture, if it exists, is both irrelevant and unwarranted. The business of the PTO is patentability, not infringement.” (emphasis added)

Placing the proposed limits on continuation practice is a drastic move that has significant consequences, both for patent system stakeholders and society at large. Independent of the authority question, it seems to be a sufficiently significant issue that warrants both an investigation to assess the reality of the perceived problem and, if the existence of the problem is confirmed, a political debate on the issue of how best to deal with it.

The Patent and Trademark Office should focus on its business and leave patent reform to Congress.

Above the Law has posted a hilarious Notice of Appeal filed by a pro se plaintiff in a federal district court. The funniest part is not the hand-drawn line numbers or sketched heading. Nope. As with all great legal documents, the artful use of language is the best part. This plaintiff opted against formal, legalistic language in favor of straight-and-to-the-point American-street-English to say what all soon-to-be appellants want to say when filing a Notice of Appeal.

The language could easily be used for a Notice of Appeal inside the Patent and Trademark Office. Any takers?

Yesterday, the Senate unanimously confirmed the appointment of Professor Kimberly Moore as a judge for the Court of Appeals for the Federal Circuit. Crouch has a post with several interesting links surrounding Moore and the confirmation vote.

Here are a few things to think about when considering the significance of Professor Moore’s appointment and confirmation:

* Professor Moore is not a registered patent attorney. Presumably, that means she has never drafted a patent application, never considered the effects of various prosecution alternatives (e.g., filing a Request for Continued Examination or a continuation application v. filing a Notice of Appeal), never interviewed or dealt directly with an obstinate Examiner, and never helped a client develop an overall prosecution strategy to protect an invention.

* She was recently ranked third on Hal Wegner’s list of the Top Ten Activist Patent Professors for 2005-2006. Judge Moore was bested only by Professor Mark Lemley of Stanford and Professor John Thomas of Georgetown.

Judge Moore on continuations “…the world would probably be a better place if continuation applications were abolished.”* In 2004, she co-authored a paper with Professor Lemley that is viewed as a genesis of the ‘continuation abuse’ phenomenon. The conclusion of that paper makes for interesting reading in light of the controversy surrounding the proposed rules:

“Continuation applications have led to abuse of the patent prosecution process. They serve very little useful purpose, and what benefits they confer may be outweighed by their potential for mischief. The world would probably be a better place if continuation applications were abolished. Recognizing, however, that the abuse of continuation practice is not as pervasive as some might think, we propose a number of means by which Congress and the courts could strengthen existing rules designed to limit their abuse while preserving the practice.”

I wonder if Judge Moore will ever use the “the world would probably be a better place” rationale to support a conclusion in a Federal Circuit opinion.  We’ll have to wait and see…

From Yehuda Berlinger in Israel comes the “U.S. Patent Code – in verse.”

I don’t know why, but the only thought I could muster up after reading that came out as a rhyme:

I’m not a poet,
not even a student of the rhyming game,
but I’m smart enough to know it…
Yehuda’s verse certainly isn’t lame.

And if that’s not enough for ya, Yehuda also poem-ized the copyright code.

Man, if only we could get someone to rap this stuff…and post a video to youtube….

Now let’s see who’s really paying attention….did you catch this one? This morning, the Patent and Trademark Office released the list of new appointees to the Patent Public Advisory Committee. Among the new advisors is Mr. David Westergard, a patent attorney with Micron Technology in Boise, ID.

If the name sounds familiar, it should…Mr. Westergard, I think, is becoming the poster boy for the software patent reform agenda. He’s been in the public spotlight on a few occassions. Most notably, he recently presented the “need for reform” underlying the proposed rule that would place limits on RCE and continuation practice, stating, in essence, that ‘continuation abuse’ must be stopped.

John Whealan, Solicitor and USPTO General Counsel for Intellectual Property, spoke at the same meeting and explicitly agreed with Mr. Westergard that ‘continuation abuse’ is an issue that must be addressed. Interestingly, Whealan noted that the proposed rule has nothing to do with addressing the backlog of pending applications and everything to do with ‘continuation abuse.’

Under this new appointment, Mr. Westergard will serve a three year term as an advisor to the Office. While this new advisory role for Mr. Westergard was just announced this morning, I’m betting that he’s been advising the current administration for some time, particularly on the evils of ‘continuation abuse’ and the plague it presents to our society.