We here at Tech LawForum like to give the people what they want, and the analysis of patent law by experts in the field happens to be one of those things. A friend of TLF, Aaron Capron, was kind enough to interview Linda J. Thayer, of Finnegan, Henderson, Farabow, Garrett and Dunner, regarding the injunction of the new claims and continuation rules. Q: Now that a Preliminary Injunction has been granted that in effect stays the implementation of the New Continuation Rules, in your opinion, is it likely that a Permanent Injunction will also be granted? A: Yes. One of the bases for granting a preliminary injunction is ââ?¬Å?reasonable likelihood of success on the merits,ââ?¬Â? while a pre-condition for permanent injunction is ââ?¬Å?success on the merits.ââ?¬Â? Success at the preliminary injunction stage means at least one judge that it was more likely than not that the party would be successful on the merits. Q: If the injunction is eventually overturned or denied, what would be the effective date of the New Continuation Rules (Rules)? A: That is the $64,000 question. The final rules identify three important dates: August 21, 2007 corresponds to the publication of the final rules and started a transition period relevant to certain of its provisions; November 1, 2007 corresponds to the implementation date of the final rules; and February 1, 2008 corresponds to the compliance deadline for certain identification and rebuttal requirements. While the preliminary injunction has altered the November 1, 2007 implementation date, it is unclear whether the August 21, 2007 start of the transition period or the February 1, 2008 compliance date will ultimately be affected. Q: Further, if the injunction is eventually denied and the Rules go into effect, how does the “one more” continuation practice work since it was based on the August 21, 2007 date? (Any further recommendations on how to handle it?) A: Based on this uncertainty, the potential exists that current patent prosecution actions may eventually be viewed as actions taken during what may be deemed an extended transition period. Under this view for example, a continuation application filed after November 1, 2007, in some instances, could destroy the availability of the ââ?¬Å?one moreââ?¬Â? continuation application provided by the final rules, assuming the rules are eventually implemented with the same or a like ââ?¬Å?one moreââ?¬Â? continuation provision. As another example of uncertainty, an RCE filed on or after November 1 under the current rules could result in the lost opportunity to file a future RCE in an application family, if the same or similar only-one-RCE provision is ultimately implemented. In light of this uncertainty, it is in my opinion that it is prudent to think carefully before filing a possible ââ?¬Å?one moreââ?¬Â? continuation or second RCE and to do so only if necessary before this case is resolved, which probably wonââ?¬â?¢t be until early 2008. Q: Is this issue in Tafas v. Dudas more about Administrative Law and whether the USPTO has the ability to implement these rules, or about the nuances of Patent Law and continuation practices? The reason that I ask is if this preliminary injunction or this case goes to appeal, in your opinion, who would answer these questions, the Fourth Circuit or the Federal Circuit? A: This case will most likely end up before the Federal Circuit. Because the basic legal question is whether the PTO has authority to promulgate these rules under the Patent Act, the Federal Circuit has exclusive jurisdiction of the appeal. Under 28 U.S.C. Ã?§ 1295, the Federal Circuit has exclusive jurisdiction of appeals from a district court action where jurisdiction was based in any part on 28 U.S.C.Ã?§ 1388, which provides that the district courts have jurisdiction of any action ââ?¬Å?arising under any Act of Congress relating to patents.ââ?¬Â? Q: If these rules do not go into effect, would you have any recommendations to the USPTO to help it unburden its backlog? A: I think the PTO should re-examine its incentive plan and point system, that is, the way it motivates and retains its employees. Each year, the PTO supposedly operates in the black and it should explore ways to use the money to motivate and retain workers. The PTO has claimed that it cannot solve the backlog problem solely by hiring; however, if the PTO salaries were higher, and quality of life was good, I can imagine that hiring would go a long way toward solving the backlog. The PTOââ?¬â?¢s telecommuting program is a good start and Iââ?¬â?¢ve heard that it is exploring the possibility of opening ââ?¬Å?branchââ?¬Â? offices in other parts of the country where there are talented workers. I think this would also help.

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