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« In re Ciprofloxacin Hydrochloride Antitrust Litigation (Fed. Cir. 2008) | Main | Wyeth v. Dudas (D.D.C. 2008) »

October 15, 2008

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Comments

Don,

Let's face it, the USPTO hierarchy is delusional in believing it can win this case. The bigger concern is that we may win the "battle" in court and then lose the "war" in Congress next year. Given who's advising Obama (who's looking good now to win the presidency) on IP matters, I shudder to think what might happen in Congress, especially one that is likely to be Democrat dominated.

This is a clear lie:

With respect to Rules 75 (5/25 claims rule) and 265 (requiring an Examination Support Document (ESD) when exceeding 5 independent or 25 total claims), the Patent Office contends that "Rule 75 does not limit the number of claims at all, and the ESD requirement for claims exceeding the requisite number is a reasonable imposition."

Rule 75 operates to prevent applicants from taking allowed claims that have already been examined without an undue burden on the examiner when the number of claims examiner is well withing the low error rate number.

File an application with only 20 claims, say 3 independent and 17 dependent, say 6, 6 and 5 directly depending from each independent claim. All very reasonable and well withing 5/25. So, no ESD is required, nor is it needed....because the ESD is to address the fact that the error rate goes up when the claim count increase.

The examiner very accurately then, finally rejects the 3 independent claims but finds all the dependents to be allowable if placed in independent form.

So, applicant places 17 allowable claims in independent form.... but NO!

That violates 5/25. Applicant must choose only 5 of the 17 allowable claims.

There is no way to file an ESD at this point. Rule 75 requires it to be filed before the First Office Action on the Merits.

Therefore, Rule 75 severely limits the number of claims.

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