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Breaking A Very Long Silence

    By Kevin E. Noonan —

Biotechnology_industry_organization
A curious aspect of the recently-promulgated new prosecution rules (see links below) has been the relative silence of the major interest groups in opposition.  Perhaps lulled by pundits who declared the new rules "dead" as recently as six months before they were issued, or because the focus was on Capitol Hill initiatives such as "patent reform" or the various biogenerics proposals, the fact is that (except for the overwhelmingly number of negative comments provided to the Office) the major groups who might have been expected to be significantly more vocal (such as the Biotechnology Industrial Organization (BIO) and the Pharmaceutical Research and Manufacturers of America (PhRMA)) before the rules were finally issued were silent.  Indeed, the head of BIO appeared to be unprepared for a Patent Docs question regarding litigation challenging the new rules (see "BIO CEO Provides Briefing on Follow-On Biologics and Phrma_2
Patent Reform").  Perhaps this inertia can be explained as the rational response to this Administration’s notorious resistance to anything resembling consensus-building or debate that extends beyond blind obedience – from the tenor of the townhall meetings roadshow at the time the new rules were proposed to the efforts (both in person and in various "webcasts" from the Office) thereafter, it is clear that institution of these rules was foreordained and inevitable.  Indeed, the only legal efforts to overturn the rules were not taken by any of these trade organizations (not even the legal ones such as the AIPLA), but by an individual inventor (see "Rules Challenger Amends Complaint and Withdraws PI Motion").

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"Once bitten, twice why" is the adage, and the response of the patent community to other Patent Office "initiatives" has been decidedly different.  The Intellectual Property Owners (IPO) organization submitted and published on their website their objections to the proposed appeals rules, and the National Association of Patent Practitioners have also objected and made their objections public.  In both cases, the major objections are: 1) that the appeals rules were recently revised (in August, 2004; 69 Fed. Reg. 49960) and that there is no evidence that the new revisions are necessary; 2) the rules are unduly complex and the page restrictions unnecessary and contrary to the thorough determination of patentability that applicants are entitled to; 3) the lack of concomitant page number restrictions on the Examiner’s Answer are unfair and prejudicial to applicants; 4) the rules continue the recent Office trend of shifting the procedural and substantive examination burdens onto applicants; and 5) that the timing of these rules are unfortunate in view of the expected increase in appeals occasioned by the limitation on the number of continuations in the rules promulgated on August 21, 2007 (effective on November 1, 2007).

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In view of the reluctance of the Office to be dissuaded from its mission to provide more "effective" examination by adopting rules seemingly intended to reduce pendency and the application backlog "by all means possible," regardless of its effect on innovation or the integrity of the U.S. patent system, it is unlikely that these efforts in opposition to the proposed rules will have any noticeable effects.  It is heartening, however, to see groups who should have an important voice in these deliberations finally attempting to be heard, even if their entreaties will be unlikely to have any positive effects until the current administration is replaced in January, 2009.  With any luck, the more deleterious effects of the present regime will be amenable to being reversed once the focus of the Patent Office returns to protecting American innovation rather than meeting merely bureaucratic metrics.

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