APPEALS COURT RULES IN FAVOR OF NEW U.S. PATENT RULES SUPPORTED BY PUBPAT: Proposed Regulations Would Curtail Abusive Behavior By Patent Applicants

NEW YORK, NY – March 20, 2009 – The U.S. Court of Appeals for the Federal Circuit in Washington, DC (CAFC), today ruled in favor of new U.S. Patent and Trademark Office (PTO) regulations supported by the Public Patent Foundation at Benjamin N. Cardozo School of Law (PUBPAT) that would curtail abusive behavior by patent applicants and improve patent quality.

PUBPAT led a coalition of consumer advocacy and public interest groups in filing a friend-of-the-court brief (PDF; 150kb) on behalf of the PTO's new rules before the CAFC urging that a decision by the federal District Court for Eastern Virginia blocking the proposed rules be overturned. The CAFC's decision today did just that and was welcomed by PUBPAT's Executive Director, Dan Ravicher, who said, "This is a substantial victory for the public interest in that it paves the way for the PTO to implement sound rules to improve the quality of the the patent application process."

The PTO's new rules ask applicants to justify the need for more than two continuations per application and to assist the USPTO in performing initial technological research on applications that contain an excessive number of claims. Under current rules which allow unlimited continuations, USPTO examiners who have repeatedly rejected an application often face an endless stream of continuation applications that "may well succeed in 'wearing down the examiner', so that the applicant obtains a broad patent not because he deserves one, but because the examiner has neither the incentive nor will to hold out any longer," according to a study by professor Mark A. Lemley of Stanford Law School and Kimberly A. Moore, now a Circuit Judge on the U.S. Court of Appeals for the Federal Circuit.

The groups that joined PUBPAT's brief were AARP, Computer & Communications Industry Association (“CCIA”), Consumer Watchdog (Formerly the Foundation for Taxpayer and Consumer Rights), Essential Action, Initiative for Medicines, Access & Knowledge (“I-MAK”), Prescription Access Litigation (“PAL”), Public Knowledge (“PK”), Research on Innovation (“ROI”), and Software Freedom Law Center (“SFLC”).

"Congress has intentionally implemented a patent system that balances the incentives provided to patentees with the benefit to the public of the disclosure and ultimate dedication of the resulting inventions to society," the consumer groups said in their brief to the CAFC. "Thus, the public interest lies in an efficiently functioning patent system, not one that is subject to abuse and manipulation."

The consumer and public interest groups also said that despite having various missions and activities, they are united in their belief that patent law and policy should be crafted to ensure that it benefits the public interest. They "firmly believe that the Final Rules would significantly advance both the general public interest and the specific aspects of the public interest that they each separately exist to represent. Thus, the Public Interest Amici have united in this brief to express a single voice in support of the Final Rules."