Promote the Progress

Welcome to 2009!

For the first post of the New Year, I thought I’d break tradition a bit. Instead of looking forward and listing all the things I’m hoping for in 2009, I’ve decided to look backward and commemorate an anniversary.

Three years ago this week (January 3rd), the Patent and Trademark Office published the controversial continuation and claim limit rules (read the original Promote the Progress post here).

Three years! Can you believe it?

Since that date, the patent community has lived under an inescapable cloud of doubt as to whether the right to claim a properly disclosed invention would be severely limited by agency rule-making. While we’ll soon have an answer from the Court of Appeals for the Federal Circuit regarding the legality of the continuation rules, the “final” answer on the issue of limiting the right to claim an invention – independent from these rules - might not be known for some time. The philosophy and clout of the next Director, the political climate that develops under the new Administration, and the willingness of the 111th Congress to consider the issue under the patent reform banner will certainly influence the issue.

But this is an anniversary, so let’s reflect a bit. Even though these three-year old rules have yet to become law, their enormous impact on the patent community is undeniable. Most owners of large portfolios of applications made an effort to review their applications to determine if any continuation filings should be made ahead of the original Halloween deadline. These efforts required a significant investment of time and money that, if the rules die in the end, might have been completely unnecessary.

And the Office, no doubt, has spent a small fortune defending the rules.

More importantly, though, the impact of the proposed rules goes way beyond time and money. Over these past three years, I’ve had the opportunity to talk to practitioners and other patent stakeholders around the country and from all sections of the community (private practice, in-house, small company, large company). One thing is clear – the rules have contributed significantly to the deterioration of the sense of partnership between stakeholders and the Office that seemed to exist just a few short years ago.

Happy Anniversary!

I recently noticed the strange timeline that has developed for the controversial continuation and claim limit rules promulgated by the Patent and Trademark Office (and currently subject to a permanent injunction via Tafas v. Dudas).

Consider these events:

1.  The Patent and Trademark Office introduced the controversial continuation and claim limit rules during the first week of the year way back in 2006.  Happy New Year!

2.  When making the rules final, the Office decided to draw the line in the sand on November 1, 2007, placing the deadline for filing rules-inspired continuation applications on Halloween.  Happy Halloween!

3.  On that same day, the United States District Court for the Eastern District of Virginia issued a preliminary injunction, temporarily preventing the Office from implementing the rules.  Happy  Halloween, part two!

4.  On April 1, 2008, District Court Judge Cacheris permanently enjoined Director Jon Dudas and the Patent and Trademark Office from implementing the controversial continuation and claim limit rules.  Nope, this was no April Fool’s joke.

5.  The Court of Appeals for the Federal Circuit has scheduled oral argument in the appeal of the new rules injunction for December 5, 2008, which, of course, is the annual Day of the Ninja.

All kidding aside, the timing of the oral argument is a bit strange, too.  Consider this – we have a lame duck administration with lame duck policies, and a President-elect with a yet-to-be announced Director of the Patent and Trademark Office and yet-to-be announced administrative policies.  Will the new PTO administration support the rules?  Will they pursue them with the same fervor as Director Dudas? Or, will the new PTO administration choose to abandon the rules, perhaps in an effort to mend fences in the partnership that used to exist between the Office and its stakeholders?

The court has a calendar to manage, of course, and the hearing date is probably the result of standard scheduling procedures.  But, arguing this case in December is probably the strangest event on the new rules timeline.  What if the PTO wins on appeal but the new administration doesn’t support the rules?  What if they lose but the new team has somewhat less passion for the rules than the Dudas adminstration does?  Do they appeal again, as the current administration has promised?

In the end, with either a win or a loss, it’s possible the rules might just disappear depending on the policies of the new administration, meaning our resource-strapped Patent and Trademark Office might have just wasted untold amounts of time and money.

With a hearing in December, the court will likely hand the new administration a ruling as the ink is drying on the new business cards.  I’m betting on February 14th, Valentine’s Day.