Archive for June, 2010

Bilski Reaction

June 30, 2010

Reaction to the Supreme Court’s Bilski decision has come from several fronts.

Prometheus v. Mayo

As many predicted, the Supreme Court issued a GVR (grant, vacate, remand) order in this case and sent it back to the Federal Circuit to reconsider its opinion in light of the Supreme Court’s Bilski opinion.  Given that the Court didn’t change the law of patentable subject matter in Bilski, it is hard to envision a different outcome.

The Federal Circuit had previously reversed a district court ruling in this case that a method of calibrating drug dosages was not patentable subject matter.  The Federal Circuit ruled that the claims at issue met that court’s Bilski transformation test.

In some ways, the court dared the Supreme Court to take this case.  The district court relied extensively on Justice Breyer LabCorp dismissal dissent.  The Federal Circuit rightly noted that such an opinion was not controlling law on the court.

Senator Leahy

In the wake of the Bilski decision, Sen. Patrick Leahy (D-VT) issued a statement:

The Supreme Court today issued a decision in Bilski v. Kappos, affirming a Federal Circuit decision and holding a process for hedging on energy commodities unpatentable as an abstract idea.

“In Bilski v. Kappos, the Court unanimously affirmed the judgment of the Federal Circuit that the application for a patent on a business method should be rejected.  The Court’s opinion, joined by only five of the Justices, however, needlessly left the door open for business method patents to issue in the future, and I am concerned that it will lead to more unnecessary litigation. 

“Since the debate over comprehensive patent reform began many years ago, the Supreme Court has demonstrated an increased interest in patent law cases.  The Court’s decisions have moved in the direction of improving patent quality.  While today’s decision will take time to analyze and may not have advanced the law and created the stability and certainty that it could have, it appears to continue this trend, which is consistent with the goal of patent reform legislation pending in Congress.  The courts, however, are constrained by the text of our outdated statutes, and it is time for Congress to act.” 

Sen. Leahy is the chairman of the Senate Judiciary Committee and a leading proponent of patent reform legislation.  His characterization of the opinion shows his animus towards business method patents.  Perhaps he will seek to add a prohibition to the Senate reform bill S. 515.



June 28, 2010

Well, that was anti-climactic!  The most anticipated Supreme Court patent decision in a number of years turned out to be a bit of a letdown.  Don’t get me wrong, I was expecting a much worse opinion for patent owners and applicants, but we really waited this long for this opinion?

This is really an instance of bad facts making bad law.  As previously noted, Bilski’s invention is not a compelling one for Supreme Court review, as the invention sought to patent an application of a method for hedging.  The Court was unanimous in holding that Bilski’s claims were not directed to patentable subject matter.  The separate opinions differed as to the reasoning for this holding.

Justice Kennedy’s Opinion

Justice Kennedy chastised the Federal Circuit, writing for the Court that “[t]oday, the Court once again declines to impose limitations on the Patent Act that are inconsistent with the Act’s text.”  The Court held that the statutory text of § 101 and the definition of “process” in § 100(d) do not limit processes to those that pass the Federal Circuit’s machine-or-transformation test. 

The majority opinion instead mirrored Judge Rader’s opinion from the Federal Circuit, where he would hold the claims to be unpatentable simply because they are directed to abstract ideas.

So, what test did the Supreme Court give us to use in place of the machine-or-transformation test?  None!  That’s right.  All the Supreme Court did was reiterate that abstract ideas are not patentable.  The Court provided no additional guidance as to how to determine patent eligibility.  Only the old “laws of nature, physical phenomena, and abstract ideas” are expressly prohibited by Supreme Court precedent. 

Justice Stevens, in a separate opinion discussed below, sought to conduct an exhaustive study of English and US judicial precedent to justify that business methods have never been and never will be (?) patentable.  A plurality of the Court chides him for not recognizing that the Patent Act is directed to newly emerging technologies.  It doesn’t make sense to cut off entire fields from patent eligibility ahead of time.  Who knows where the next innovations will come from?  This section of the Court’s opinion only garnered 4 votes and is not precedential.  Justice Scalia declined to join the majority in this section.

The majority’s opinion also justified patents for business methods based on the enactment of the prior use defense in § 273.  Justice Stevens responded to this position by arguing that this statute was only a stopgap and was only enacted by Congress in response to his perceived legislation by the Federal Circuit of the patentability of business method patents in State Street Bank.  He also argued that since the statutes were written nearly 50 years apart, the latter cannot possibly be read to help interpret the former.

Justice Stevens’ Opinion

Justice Stevens wrote for a 4 member minority of the Court that concurred in the judgment but would have categorically banned business method patents.  His opinion on the matter was extensive and included an exhaustive (exhausting) review of precedent discussed above.

Justice Stevens disagreed with the majority that the term “process” in the Patent Act should be defined as an ordinary reader would understand that term.  Instead, he argued that the Patent Act is much more complex and that “process” means something special and entirely different from how a member of the public would understand it. 

He does rightly criticize the majority on one point:  if the word “process” means what it says, why is there an exception for abstract ideas and laws of nature?  I agree:  why indeed?  These issues could be covered by other sections of the Patent Act dealing with prior art, enablement, and definiteness.

Justice Stevens next cites a number of anti-patent commentators to recite a parade of horribles that permitting business methods will cause:  they are not necessary to promote innovation or disclosure, they are subject to ambiguity, they impede rather than promote American business, they inhibit legitimate competition and innovation, they cannot be properly examined by the PTO because there is no body of prior art, etc., etc.

Some of the language of his opinion is interesting:

If business methods could be patented, then many business decisions, no matter how small, could be potential patent violations. 

Isn’t this exactly what the majority did, permit the patenting of business methods?

Justice Breyer’s Opinion

Justice Breyer also wrote separately, concurring in the judgment.  He joined Justice Stevens’ opinion, but wrote separately to garner Justice Scalia’s vote.  His opinion emphasized four points:

  1. § 101 is broad, but not limitless;
  2. the machine-or-transformation test has been repeatedly used by the Supreme Court to determine patent eligibility;
  3. the machine-or-transformation test has never been the sole test for patent eligibility; and
  4. State Street‘s “useful, tangible result” test was never endorsed by the Supreme Court.


Business method patents just dodged a bullet.  Many had speculated that Justice Stevens would write the opinion and that it would be devastating to patentees and patent applicants. 

I believe that was what was about to happen.  Justice Stevens’ opinion appears to have been written as a majority opinion.  He appears to have lost the fifth vote, as demonstrated by his statement that “if business methods could be patented.”  Perhaps Justice Scalia change his mind?  Why?  We will probably never know if this is even true, much less which justice changed position or why.

After reading the opinion of the Court one wonders why it even took the case.  Perhaps the anti-business method side could only garner the four necessary votes to grant cert and expected to get a fifth going forward.

At the end of the day, we are nearly at the status quo that we were prior to Bilski.  Perhaps things are a bit tighter because business method patents and applications may get a bit more scrutiny. 

The machine-or-transformation test was a test, but not the sole test, prior to this case.  It is again a test, but not the sole test, to determine patent eligibility. 

All that we know with certainty is that “laws of nature, physical phenomena, and abstract ideas” are not eligible for patents.  Thanks, we knew that before.

Where is Bilski?

June 21, 2010

This morning, yet another Supreme Court session went by without a decision in Bilski v. KapposWith oral argument having occured on November 9, Bilski is now the oldest undecided case on the Supreme Court docket. 

Why is the Court having such a difficult time issuing an opinion in a patent case?  This is a Court that deals with First Amendment and death penalty cases that are a lot sexier than cases involving patent law.  What gives?

Justice Stevens

One theory that holds a lot of weight is that the opinion is being written by Justice Stevens who is retiring at the end of the term.  He is the only justice who has not written a majority opinion from arguments that took place in November.  Given the typical allocation of opinions, it would seem likely that he is writing the Bilski majority.

Justice Stevens wrote the majority opinion in Parker v. Flook in 1978.  In Flook, the Court reversed a lower court decision in holding a that a claim to a method for updating alarm limits in a catalytic converter was not patent eligible subject matter because the only novel feature of the invention was the use of a particular mathematical algorithm.  That case demonstrated a serious lack of understanding of patentable subject matter by conflating a § 101 argument with a §§ 102 and 103 novelty and obviousness argument.  Some have suggested that Justice Stevens may be trying to book-end his career with the opinions in Flook and Bilski.  To me, this seems to be giving patent law a great deal more weight than the Supreme Court typically does.

Other Possible Reasons for Delay

It has further been speculated that the Court is writing multiple opinions that are taking a great deal of time to review and respond to.  Perhaps there will be a great deal of concurrences and dissenting opinions.  While this is certainly possible, given the tenor of oral argument, it doesn’t seem particularly likely that the Court will be extremely fractured.

Another suggestion has been that, given the importance and gravity of the opinion to innovation and the economy, the Court is being extremely careful in the language used in the opinion.  This may certainly be true, but that doesn’t mean the opinion bodes well for patent owners and applicants.

Some are also suggesting that the Court will give an opinion prohibiting software patents.  There was certainly a great deal of discussion about patenting software at the oral argument, but, as the Federal Circuit recognized, this case does not concern software.  An opinion on patenting software in this case would be dicta in the least and an advisory opinion on the subject.

What’s Going to Happen?

The Supreme Court has two more scheduled sessions for this term:  Thursday, June 24 and Monday, June 28.  Although the Court could hold the case over until next term, this is still extremely unlikely.  We will probably get the opinion at one of the last two sessions of the Court.

I agree that it is likely that the opinion is being written by Justice Stevens.  Given his opinions in Flook, Diehr, and LabCorp., this bodes extremely poorly for the petitioner and for business method patents.  He may even be writing an extensive opinion that clearly prohibits all method patents in the fields of business and finance, possibly other methods as well, and yes, maybe even software.

Given this, chances are extremely good that Bilski is going to lose big.   The opinion is likely to be much worse than the Federal Circuit opinion.  Based on this likely outcome, why is Bilski continuing to pursue this appeal?  Does he really expect to win or is this merely for publicity purposes?

Perhaps others with business method patents should try to convince the petitioners to drop this case before the Supreme Court issues its opinion.

Each session of the Court without the opinion permits us to take a deep breath for a few more days, but it really appears that D-Day is approaching for business method patents.

USTO Seeking Changes in Examiner Performance Standards

June 20, 2010

The PTO issued a press release last week that seeks to revise patent examiner performance standards for the first time in 25 years.  The press release is short on specifics, but seeks to better align examiner performance standards with agency needs in order to reduce application pendency and the backlog.

Patent examiners are evaluated by the Performance Appraisal Plan (PAP).  Some proposed changes include:

•     Establishing a “Stakeholder Interaction” element that emphasizes routine use of interviews to facilitate compact prosecution and timely responsiveness to requests for personal interviews;

•     Revising the performance standards to include a single quality element for all examiners—increasing the focus on examination quality and improving the transparency of how quality is measured; and

•     Revamping the workflow element to provide examiners more opportunities to use their professional discretion to manage their own workflow.

Proposed changes will be voted on by the examiner’s union in July and could be implemented in FY2011.

Changing how examiners are evaluated and how they manage their work load is yet another proposed change to patent procedure at the PTO by new Director David Kappos.  Past attempts at changes have met with resistance from the examiner’s union.  Hopefully, the union will work together with the management to continue to work to reduce pendency and backlog.  Without more specifics, it is difficult to comment on the proposed changes.

False Marking Case Update

June 11, 2010

Yesterday, the Federal Circuit affirmed the grant of summary judgment of no liability for false marking in Pequignot v. Solo Cup.  I had previously discussed the district court proceedings in this case last year.

The Federal Circuit agreed with the district court that marking a product with the patent number of an expired patent is false marking.  Thus, Solo Cup made a false statement when it marked its products with expired patent numbers.

To be liable under the statute, however, Pequignot also had to prove that Solo Cup falsely marked its products with intent to deceive the public.  The court held that “the combination of a false statement and knowledge that the statement was false creates a rebuttable presumption of intent to deceive the public.” 

The court reasoned that mere knowledge that the statement is false is not enough.  Instead, it must be proven that the false marking was done with the conscious desire to deceive the public.  Solo Cup provided enough evidence, such as advice from legal counsel, that it rebutted the presumption that it intended to deceive the public.  The Federal Circuit even held that Solo Cup’s markings that certain products “may be covered” by one or more of a long list of patents to be evidence of rebuttal that it did not intend to deceive the public.

A question that I have after this case is:  if using weasel language such as that a product “may be covered” by a huge list of patent numbers does not constitute false marking if the product is not in fact covered by some or all of the listed patents, how does such a listing comply with the marking statute’s notice requirement?  Is the court suggesting that it is the public’s duty to research each patent in a large list to determine which, if any, cover a particular product?  This seems to defeat the intent of the marking statute.

Federal Register Notice on Three-Track Examination

June 8, 2010

On Friday, the PTO published notice of “Enhanced Examination Timing Control Initiative“.  The notice provides further details on the PTO proposal on multi-track examination.

The PTO terms the three tracks as:  I – Prioritized Examination; II – Traditional Timing; and III – applicant controlled up to 30 month queue prior to docketing.

For both Track I and Track II, the PTO will not docket an application that was first filed in a foreign country until it receives from the applicant:  (1) a search report from that country; (2) an office action on the merits from that country; and (3) an appropriate reply to that office action.  I understand the PTO’s point that it has been doing the vast majority of the world’s examination due to many countries having deferred examination and the US lacking such an option.  This policy would set a dangerous precedent under the Paris Convention, however, in that it would encourage retaliation against US applicants who file in other countries.  I don’t think this form of discrimination is the way to solve this problem.

An applicant may request to have its application placed on Track I at any time by paying the applicable fee, yet to be determined.  The PTO is considering limiting Track I applications to 4 independent and 30 total claims, as well as publishing Track I applications shortly after being granted prioritization status (or 18 months from priority date, whichever is earlier).  This would give the public early notice of such applications.  The timing goals are a first office action within 4 months of the grant of prioritization and 12 months to final disposition.  It is unclear when such a grant would take place with respect to the filing date of an application.

Track II would remain largely as examination is currently with the exception of the foreign origination discrimination set forth above.

Track III would permit the applicant to request up to 30 months to delay the application from being docketed for examination.  Applications falling under Track III must be published within 18 months of the earliest priority date to prevent secret patents from being granted.  While this would solve that problem, 35 U.S.C. § 122 seems to prohibit (“shall not”) publication of applications where the applicant certifies that they will not be filed in another country.  This proposed rule may be contrary to the statute.  Applicants would need to request examination of Track III applications within 30 months of filing or risk abandonment.

The PTO is still determining how to treat Patent Term Adjustment (PTA) under this three-tier system.  One issue is that the PTO is proposing to offset any PTA accumulated in any foreign-originated application by the amount of time before the applicant files the required documents set forth above.  Further, if the foreign-originated application is abandoned, the applicant must inform the PTO within 3 months or risk further PTA offset of the US application.  When the applicant does inform the PTO, the US application will be treated as if it did not include a claim for priority to the foreign application.

The PTO then requested comment on 33 specific questions:

    1. Should the USPTO proceed with any efforts to enhance applicant control of the timing of examination?
    2. Are the three tracks above the most important tracks for innovators?
    3. Taking into account possible efficiency concerns associated with providing too many examination tracks, should more than three tracks be provided?
    4. Do you support the USPTO creating a single queue for examination of all applications accelerated or prioritized (e.g., any application granted special status or any prioritized application under this proposal)? This would place applications made special under the “green” technology initiative, the accelerated examination procedure and this proposal in a single queue. For this question assume that a harmonized track would permit the USPTO to provide more refined and up-to-date statistics on performance within this track. This would allow users to have a good estimate on when an application would be examined if the applicant requested prioritized examination.
    5. Should an applicant who requested prioritized examination of an application prior to filing of a request for continued examination (RCE) be required to request prioritized examination and pay the required fee again on filing of an RCE? For this question assume that the fee for prioritized examination would need to be increased above the current RCE fee to make sure that sufficient resources are available to avoid pendency increases of the non-prioritized applications.
    6. Should prioritized examination be available at any time during examination or appeal to the Board of Patent Appeals and Interferences (BPAI)?
    7. Should the number of claims permitted in a prioritized application be limited? What should the limit be?
    8. Should other requirements for use of the prioritized track be considered, such as limiting the use of extensions of time?
    9. Should prioritized applications be published as patent application publications shortly after the request for prioritization is granted? How often would this option be chosen?
    10. Should the USPTO provide an applicant-controlled up to 30-month queue prior to docketing for examination as an option for non-continuing applications? How often would this option be chosen?
    11. Should eighteen-month patent application publication be required for any application in which the 30-month queue is requested?
    12. Should the patent term adjustment (PTA) offset applied to applicant-requested delay be limited to the delay beyond the aggregate USPTO pendency to a first Office action on the merits?
    13. Should the USPTO suspend prosecution of non-continuing, non-USPTO first-filed applications to await submission of the search report and first action on the merits by the foreign office and reply in USPTO format?
    14. Should the PTA accrued during a suspension of prosecution to await the foreign action and reply be offset? If so, should that offset be linked to the period beyond average current backlogs to first Office action on the merits in the traditional queue?
    15. Should a reply to the office of first filing office action, filed in the counterpart application filed at the USPTO as if it were a reply to a USPTO Office action, be required prior to USPTO examination of the counterpart application?
    16. Should the requirement to delay USPTO examination pending the provision of a copy of the search report, first action from the office of first filing and an appropriate reply to the office of first filing office action be limited to where the office of first filing has qualified as an International Searching Authority?
    17. Should the requirement to provide a copy of the search report, first action from the office of first filing and an appropriate reply to the office of first filing office action in the USPTO application be limited to where the USPTO application will be published as a patent application publication?
    18. Should there be a concern that many applicants that currently file first in another office would file first at the USPTO to avoid the delay and requirements proposed by this notice? How often would this occur?
    19. How often do applicants abandon foreign filed applications prior to an action on the merits in the foreign filed application when the foreign filed application is relied upon for foreign priority in a U.S. application? Would applicants expect to increase that number, if the three track proposal is adopted?
    20. Should the national stage of an international application that designated more than the United States be treated as a USPTO first-filed application or a non-USPTO first-filed application, or should it be treated as a continuing application?
    21. Should the USPTO offer supplemental searches by IPGOs as an optional service?
    22. Should the USPTO facilitate the supplemental search system by receiving the request for supplemental search and fee and transmitting the application and fee to the IPGO? Should the USPTO merely provide criteria for the applicant to seek supplemental searches directly from the IPGO?
    23. Would supplemental searches be more likely to be requested in certain technologies? If so, which ones and how often?
    24. Which IPGO should be expected to be in high demand for providing the service, and by how much? Does this depend on technology?
    25. Is there a range of fees that would be appropriate to charge for supplemental searches?
    26. What level of quality should be expected? Should the USPTO enter into agreements that would require quality assurances of the work performed by the other IPGO?
    27. Should the search be required to be conducted based on the U.S. prior art standards?
    28. Should the scope of the search be recorded and transmitted?
    29. What language should the search report be transmitted in?
    30. Should the search report be required in a short period after filing, e.g., within six months of filing?
    31. How best should access to the application be provided to the IPGO?
    32. How should any inequitable conduct issues be minimized in providing this service?
    33. Should the USPTO provide a time period for applicants to review and make any appropriate comments or amendments to their application after the supplemental search has been transmitted before preparing the first Office action on the merits?

The PTO will host a public meeting on this matter on July 20, 2010 and has requested public comments by August 20, 2010.

Comments on Questions

I’m not going to answer each question in detail, but I will make a few overall comments.

First, I think the PTO is taking a step in the right direction in proposing these examination tracks, assuming that it is able to meet the Track I goals and reduce overall pendency for Track II applications.  Three tracks seems to be the right amount to give applicants sufficient control without making the system overly complicated.

RCE’s should not be limited for Track I applications.  Payment of the prioritization fee once should be sufficient to keep an application on Track I. 

The BPAI has its own backlog crisis.  I’m not sure how allowing applicants to request prioritization during an appeal would effect the BPAI.

I don’t have a problem with limiting the number of claims in an application placed on Track I.  If applicants need more claims, they can file additional applications, such as on Track II.  I would permit 5 independent claims.

I’m not sure there’s a reason to limit extensions of time in Track I cases, so long as the PTO’s goals of 4 months and one year are adjusted accordingly.  Then the applicants are only hurting themselves by delay.

I agree with the PTO’s publication proposals for Track I and III applications, but I’m not sure that it has the power to require publication under the current statute.

I don’t think the PTO should discriminate against foreign-originated applications.  This will result in discrimination against US-based entities filing applications abroad at a time when we are trying to get many countries to enhance intellectual property protection.

More on PTO’s Proposed Three-Track System

June 4, 2010

The PTO provided slightly more details on yesterday’s Wall Street Journal story with its own press release.

The PTO is referring to the fast track as “prioritized” examination.  Under this regime, the PTO is setting goals of a first office action within four months of filing and final disposition within twelve months. 

Applicants would pay a higher fee for this privilege.  The PTO is seeking public input on the amount of the fee based on “technologies where the prioritization requests are most likely.”  What happens to my application in one of these technology areas if I don’t pay the increased fee?  Will my application take even longer to be examined than it does now?

The PTO also seeks to reduce pendency by not examining applications that claim priority to a prior foreign-filed application until it receives a search report from the foreign patent office, an office action from that office, and an appropriate reply by the applicant to the office action.

In general, the PTO is relying on several assumptions noted in its press release to reduce pendency:

Overall pendency would be decreased in four ways:

  1. increased resources in Track I would result in increased output
  2. reuse of search and examination work done by other offices would result in greater efficiency
  3. applicants who chose Track III because their applications were of questionable value might ultimately not pursue their application examination.
  4. applicants with applications first filed abroad might ultimately not pursue their application examination

Professor Osenga Responds to PTO Proposal

As a follow-up to yesterday’s post, Professor Osenga has written an essay at Patently-O Law Journal. 

In her new essay, she argues that assumption 3 from the PTO’s release is simply wrong.  Many applicants with applications of questionable value seek exactly the opposite of what the PTO is suggesting.  Instead, they want a patent and they want it now.  She suggests that the PTO not invest resources in these applications and instead simply rubber stamp them as patents.  Only once the applicant seeks to enforce them should they be examined.

Next, she is very skeptical about the PTO’s ability to meet its goals for “prioritized” examination.  Instead of a much higher application fee, she suggests two things that might act as sufficient deterrents to keep the number of applicants seeking this track from being too high for the PTO to handle. 

First, she advocates the old examination support documents (ESDs).  We know that these would not be popular.  Current Federal Circuit jurisprudence incentivizes applicants to play hide-the-ball and be less open during prosecution, not more so.  Since these types of patents are more likely to be enforced, her prop0sal would require the Federal Circuit to revise prosecution history estoppel and claim construction law.  If the judges took the time to consider it, they should realize that more openness in patent prosecution can only be a good thing.

Second, she proposes a shorter patent term for applications that are examined quickly, maybe five or six years.  She envisions this track being used in technology areas that change quickly where new inventions have short lives and are quickly outdated.

We’ll see what happens with the PTO’s proposal.

WSJ: Patent Office Considering Three-Track Patent Application System

June 3, 2010

The Wall Street Journal is reporting that the PTO is proposing a three-track patent application system that would allow applicants to pay an increased fee to have their applications examined on a fast track.  The second tier would follow the current standard examination track, while the slowest track would permit applicants to delay examination for up to 30 months.

This sounds suspiciously similar to systems that have been proposed for a number of years, such as by law professors.  See Osenga, Kristen, Entrance Ramps, Tolls, and Express Lanes–Proposals for Decreasing Traffic Congestion in the Patent Office, 33 Florida State Law Review 119 (2005).  In full disclosure, Professor Osenga is my wife.

Director Kappos notes in the WSJ article that not all patent applications need to be examined at the same rate.  Some applicants desire a very quick examination and patent, others prefer delay.  The article does not include many details on the plan that could be published for comment shortly, but presumably the fast track would require a substantial increase over the current $1,090 standard application fee.  The second track could use the current fee, while the slower track may permit examination fees to be delayed as in a deferred examination regime.  Presumably, small entities would continue to be entitled to discounted filing fees.

In many instances, an applicant needs a patent quickly because of the short life cycle of the technology or to woo investors.  In other instances, such as when a product requires regulatory review or when money is tight for patent filings, delay is what an applicant needs before being required to proceed with examination.

As noted in the article, the current system that permits applicants to opt out of the 18 month publication requirement could prove a bit problematic for a system that includes a 30 month delay period.  Such a delay could cause problems with secret applications springing to life later that have early filing dates.  Requiring all applications to be published or at least those that seek delay would alleviate this problem.

With all of the political issues facing the Senate, such as a Supreme Court confirmation and numerous lower court appointments, it is uncertain whether patent reform will make it to a vote this year.  The face-off with the House also makes passage less likely.  The House has proposed giving the PTO fee-setting authority and eliminating false marking cases, while the Senate is insisting on more comprehensive reform.

Does the PTO proposal require legislative action or can it be done by rule?  The PTO obviously believes it can be implemented by rule.  Perhaps it can.

HT:  Hal Wegner

Former Chief Judge H. Robert Mayer to Take Senior Status

June 1, 2010

Yet another Federal Circuit judge is stepping down from active duty on the court.  On the day that Judge Rader becomes the new chief judge of hte court, Judge Haldane Robert Mayer has announced that he will take senior status effective June 30, 2010.  Judge Mayer, 69,  was a judge on the U.S. Claims Court when he was appointed by President Reagan to the Federal Circuit in 1987.  He served as chief judge of the court 1997-2004.

This gives the court three vacancies.  Judge Kathleen O’Malley and Edward DuMont have been nominated to fill the first two vacancies, but the Senate has yet to act on the nominations.

Five of the other nine judges on the court are or soon will be eligible for senior status.  Who will be next?  Unless the Senate picks up the pace, how will a nine judge court affect decisions?