Thursday, May 21, 2009

Will the PTO Continuation Rules Find Support at the Supreme Court? Some Are Saying "Absolutely"

Donald Zuhn from the Patent Docs Blog is reporting on various events from this year's BIO Convention. On Wednesday, BIO held session on "A Model Patent Office for the Future -- Promoting and Protecting Investments in Innovation," where various leaders in the patent community discussed issues pertaining to the improving the PTO.

At one point Sherry Knowles, Vice President of Corporate Intellectual Property at GlaxoSmithKline Biopharmaceuticals, Inc., who also spearheaded the court challenge to the PTO continuation rule changes (Tafas v. Doll), asked a panel for their opinions on whether the PTO continuation rules were "substantive" or "procedural" in nature. While many on the panel (not to mention the district court and the CAFC) concluded the rules were "substantive", John Duffy, Professor of Law at George Washington University Law School (and former SCOTUS clerk) reportedly said the following, as accounted by Zuhn:

Prof. Duffy, noting his background in administrative law, suggested that Ms. Knowles would not be happy if the Supreme Court ever got their hands on the case. When Ms. Knowles stated that she thought the Supreme Court would provide a more favorable ruling for GSK than the Federal Circuit did, Prof. Duffy jokingly advised her to hire some new attorneys. When asked about his Supreme Court prediction after the session, Prof. Duffy indicated that the Supreme Court (where he once clerked) was not as familiar with patent law as it was with administrative law, and therefore, the Court would likely defer to the USPTO with respect to its interpretation of 35 U.S.C. § 120, and thus find the rule limiting continuations to be consistent with that section.

Presuming a CAFC en banc rehearing is denied, the current expectation (i.e., without knowing who will be the next PTO Director) is that a petition for certiorari will certainly be filed.

Read more about this and other happenings at BIO here (link)

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