PTO Officials Called For Depositions In Rules Battle

By Erin Marie Daly, erin.daly@portfoliomedia.com

Portfolio Media, New York (November 6, 2007)--Marking the latest development in the closely watched legal battle over the controversial new rules proposed by the U.S. Patent and Trademark Office, two of the agency’s top officials were among several individuals served with deposition notices by plaintiff Triantafyllos Tafas on Monday.

Tafas filed a series of deposition notices in the U.S. District Court for the Eastern District of Virginia on Monday, including a notice to depose PTO Director Jon Dudas and a notice to depose Commissioner of Patents John J. Doll, according to court documents.
Also served with deposition notices were John J. Love, the PTO’s deputy commissioner for patent examination policy, and Robert Bahr, the PTO’s senior patent attorney.

Separately on Monday, Dudas and the PTO withdrew their partial motion to dismiss without prejudice to the defendants raising any of the arguments at later stages of the proceedings.

The developments come just days after Judge James C. Cacheris granted a preliminary injunction on Wednesday to block the PTO’s rules from going into effect.

The rules, fiercely fought by many patent law practitioners, largely centered on limits to continuing applications and claims.

The last-ditch effort to stop the regulations from going into effect was filed by GlaxoSmithKline. The company asked the court on Oct. 9 to issue a preliminary and permanent injunction on the rules, arguing that they were introduced without “proper legal authority.”

A schedule for the court to examine the merits of the case has not yet been determined, according to sources familiar with the case.

In a response issued after the hearing, the PTO said it stands by the new regulations.

“The USPTO continues to believe that the rules are an important component of modernizing the patent system. They are part of a package of initiatives designed to improve the quality and efficiency of the patent process and move American innovation and our economy forward,” said Brigid Quinn, a PTO representative.

GlaxoSmithKline received support from a diverse group, including the American Intellectual Property Law Association, IBM, research organization Roskamp Institute and individual inventor Tafas. GSK's suit was joined with Tafas' lawsuit seeking a similar order.

The USPTO introduced the new rules in the face of a growing backlog of pending patent applications, arguing that they will make the process more effective and efficient.

The rules allow for applicants to file only two new continuing applications and one request for continued examination unless they can provide a convincing argument for why the additional information in question was not previously submitted.

The new rules also limit applications to 25 claims, including no more than five independent claims, unless the applicants can demonstrate why the additional claims are necessary.

Previously, applicants could automatically file an unlimited number of continuations, and, in principle, their applications could have an unlimited number of claims.

“The final rules are also vague, arbitrary and capricious, and prevent GSK from fully prosecuting patent applications and obtaining patents on one or more its inventions,” GlaxoSmithKlein said in its complaint. “The PTO's promulgation of the final rules will damage specific GSK patent applications and inventions.”

GlaxoSmithKline is represented by Kirkland & Ellis LLP.