Email news string today on a private IP related listserv:
The original thread:
I read the Tafas opinion for the first time today, and while I am still trying to digest it, a question crossed my mind. Tafas, by the way, is the case in which the EDVa enjoined the 5/25 rules last week. At one portion, the court relies on the fact that GSK has a trade secret in its invention which it gives up in exchange for patent protection from USPTO. The court seems to infer from this some sort of due process/retroactivity problem. I am curious why this logic would not apply to the 18-month publication requirement and the limited provisional protection under 154(d). I ask this because it strikes me that the reasoning of the court is broader than need be. With all the problems that the new rules raise, I am not sure that they exceed the USPTO's authority, but I am open to being convinced.
Thread 2:I think that the distinction is that the patent applicant has notice of the 18 month publication requirement and provisional rights at the time the decision is made to file a patent application (and thereby forgo trade secret protection). GSK's argument is that when they made past decisions to file patent applications and forgo trade secret protection, they did so with the understanding that they would be able to file an unlimited number of continuing applications and claims. The Final Rules would be applied retroactively to applications that were filed based on that understanding of the law. GSK is arguing that if it had known that it would be limited with respect to number of claims and ability to file continuations, they might have chosen to rely on trade secret instead of filing patent applications. In effect, the terms of the deal have been changed after they have committed. I think the retroactive effects are a major problem with the rules in their current form.
Thread 3
Yup, the retroactivity is a really thorny issue. For those who are interested in whether the PTO has prospective authority to do what it did, I think it's a close question. Today's Patently-O has a "spirited" debate on this issue, prompted by my critique of certain aspects of the Cacheris opinion.
Thread 4
I agree that retroactivity is thorny here. What is interesting is that in the criminal law context, the Supreme Court has repeatedly said that retrospective change in procedural rules is not a due process problem.
Thread 5 (original poster)
The real question becomes whether these rules are substantive or procedural. I believe that some of these rules will ultimately stand, but it will be the part of the rules that the Patent Office wants least probably. The limitation of 5 independent and 25 total claims seems to me to be procedural, requiring applicants to submit inventions in bite size portions. The real trouble comes when you want to limit the number of claims in an application and then also limit the number of related applications. If claims are limited to 5/25 then one would need to file a greater number of continuations to get the same protection. That is not what the Patent Office wants. They want fewer applications and less work. Ironically, the net result of these rules will almost certainly result in more applications and more work, even if they wind up going into effect as they are presently written, which seems highly unlikely.
