Summary judgment motions due December 20 in lawsuit challenging new claim and continuation rules

December 15, 2007
Post by Blog Staff

It's been awhile since our last update on the lawsuit challenging the USPTO's new claim and continuation limit rules. Here's a brief rundown of what's happened since the court granted Glaxo's motion for preliminary injunction, temporarily preventing implementation of the rules:

  • Tafas noticed the depositions of Jon Dudas (USPTO director), John Doll (commissioner for patents), John Love (deputy commissioner for patent examination policy), and Robert Bahr (senior patent counsel), and sought additional discovery of documents withheld from the administrative record
  • Glaxo moved to compel the USPTO to provide a privilege log for materials excluded from the administrative record based on the deliberative process privilege and to provide additional documents to complete the administrative record
  • The USPTO moved for a modified briefing schedule, given that discovery is generally limted in APA review cases

Magistrate Judge Jones denied the plaintiffs' motions and granted the USPTO's motion, and set the following schedule for the remainder of the case:

  • December 20: motions for summary judgment to be filed by the parties; any amicus briefs in support of any party's motions for summary judgment to be filed
  • January 22: opposition briefs to be filed, including any responses to amicus briefs
  • February 1: reply briefs to be filed
  • February 8: hearing on the parties' motions (contingent upon Glaxo's counsel not being in trial)

Tafas also objected to the order denying discovery (objections to order, brief in support, USPTO's opposition). A hearing on the objections was held on Friday, but no order has yet been issued.

Two more amici have sought leave to file briefs in the case, Monsanto and the Intellectual Property Institute of William Mitchell College of Law. Also, the AIPLA and Elan Pharmaceuticals, who both filed amicus briefs in support of Glaxo's motion for preliminary injunction, have sought leave to file briefs in the summary judgment stage.

Interestingly, there has also been a study released that concludes that excessive continuation application and requests for continuing examinations are not causing the USPTO's patent application backlog. Instead, it is the high number of non-final office actions being issued, causing delay in the prosecution process. While the study is worth reading in its entirety, Peter Zura (via I/P Updates) has a post on his blog with some highlights, including:

[B]ased on the current statistics, the results from limiting continuing applications seem similar to the results from limiting RCE applications. Prohibiting second and later generations of continuation application, as the only policy change, will not have much impact. It may help somewhat to prohibit all continuations, but the system will remain saturated, and as with eliminating RCEs, it is unfair to the applicants.

We were surprised by the results of the simulation. We expected the results to show starvation of the priority queue, caused by the RCEs and continuations. Instead, we got the unexpected result that the large number of non-final rejections per round of prosecution is the major cause of the backlog of applications.

Even more interesting is that the paper is a joint work by a professor in the Systems Engineering and Operations Research department of George Mason University and a J.D. candidate at George Mason University School of Law, who also happens to be a patent examiner.

We'll be monitoring the case as it progresses, and continue to post updates.

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