Thursday, October 18, 2007

PLI gone wild

PLI is going a bit wild on it's blog today about cases being removed from examiners dockets for 5/25 compliance:

PLI - Patent Blog:"This is the height of arrogance, and luckily the height of stupidity, on the part of the Patent Office. One of the things that some have said will make it difficult for GlaxoSmithKline to prevail on the TRO & Preliminary Injunction level is because they will be hard pressed to show irreparable harm. This is irreparable harm, and it is evidenced by the Patent Office's own PAIR system!
[I]f an application was flagged and removed from the examiner docket for any length of time that has to by definition make it less likely that an office action would be mailed on or before November 1, 2007"

Unfortunately, that is not necessarily true. It does not "by definition make it less likely" to be examined if there was already zero chance of examination.

All the examiners know these rules are coming down the pike, and they all have discretion on which cases to examine. Even the ones that are actually the oldest on an examiners docket do not have to be examined first. They are supposed to be, but I know examiners who just crank through easy amendments for bi-weeks at a time without doing any new cases for months. The small work-flow hit doesn't impact their performance nearly as much as production, so they knock out amendments getting the counts they need.

Even if there are 1000 cases that were both the oldest on an examiners docket and had more than 25 claims, there is actually little reason to believe those 1000 examiners would not just wait it out until the new rules came into effect and resulted in them having to do less work. Surely there will have been a few that would have been examined and saved from the rules, but it is going to be extremely difficult to determine those cases.

As for GSK showing irreparable harm just because of this, I am definitely not as sure as PLI. As I previously had not taken into account examiner discretion, it may be my 1 in 600 estimation was actually high.

1 comment:

Gene Quinn said...

I agree completely that it would be very difficult, if not impossible, to prove which cases would have been examined but for them being removed from the examiner que. But if you were the district court judge hearing the case and you were told that the rules make significant distinctions between the rights afforded to those already having a first office action and those not having a first office action, what would your response be? I personally would be particularly offended given that it clearly looks like the Patent Office was implementing the new rules prior to them becoming effective.

I know the moving party bears the burdens, but in a situation like this where the defendant is in possession of the only information that can prove one way or another, and where there clearly seems to be an arbitrary and capricious (not to mention illegal) implementation of rules not effective, what would you do?

I am not trying to criticize here, I really would like the input. Given the magnitude of the potential harm to the public and system I would have to think that if such an injunction were sought against anyone other than the federal government it would be a no-brainer to maintain the status quo, at least until a more reasoned opinion could be researched and written.

Gene Quinn
PLI Blogger