Tafas v. Dudas et al

Filing 225

Amicus Brief in Support of Plaintiffs' 135 MOTION for Summary Judgment, 133 MOTION for Summary Judgment filed by Robert Lelkes. (klau, )

Tafas v. Dudas et al

Doc. 225

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UNITED STATES

DISTRICT

COURT

EASTERN DISTRICT OF VIRGINIA

Alexandria Division

TRIANTAFYLLOS

TAFAS,

Plaintiff.

JON. W. DUDAS.

against
et al.,

-

l:07cv846 JCC/TRJ

Defendants.

CONSOLIDATED WITH
SMITHKLINE BEECHAM CORPORATION.

Plaintiff.

JON W. DUDAS,

against
et al.,

-

) ) )

l:07cvl008

JCC/TRJ

Defendants.

AMICUS CORIAE BRIEF FROM ROBERT LELKES IN SUPPORT OF THE
I.

PLAINTIFFS/

MOTIONS FOR SUMMARY JUDGMENT

INTRODUCTION

The undersigned Amicus curiae, Robert Lelkes ("Lelkes"), 33,730), is a U.S. patent attorney (U.S. PTO Reg. No. a
experience

a member of the District of Columbia bar,
years'

European patent attorney with more than 20

in international private and corporate patent practice,
well as a former U.S. Patent and Trademark Office

as

{"USPTO")

Dockets.Justia.com

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patent examiner.

I have no vested interest in the outcome

of the above-captioned lawsuit other than as a long-time
patent practitioner and U.S. citizen concerned about U.S.
compliance with international law.

II.

IMPLEMENTATION OF 72 FED. REG. 46716-47843 IS

On November 26, 1975, the United States of America

ratified the Patent Cooperation Treaty PPCT"), which

provides a legal framework for filing international patent applications valid in all PCT member countries, including the United States. At least 50,000 U.S.-originated

international patent applications were filed at the U.S. PTO
under the PCT last year. This represents more than half of

all U.S.-originated patent applications filed at the U.S.
Patent and Trademark Office that year.
27(1) PCT:

According to Article

No national law shall require compliance with requirements relating to the form

application different from or additional to those which are provided for in this
Treaty and the Regulations.

or contents of the international

Rule 6.1 (a) PCT, which is the only provision of the PCT and its implementing regulations relating to the

number of claims in a patent application filed under the
PCT, states:

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reasonable In consideration of the nature of the Invention claimed.
6.1 ,a, PCT applles to the claims

<a>

The number of the claims shall be

applications filed under the pcT.

The

part of every international patent application filed under
the PCT designating the United States.

Annex A5.42UJ to Part XI, chapter 5, Paragraph

5.42, of the PCT search and Preliminary Examination Guidelines states that claims may be objected to as lacking
conciseness under this ru!e during search and preliminary
examination during the international phase of the PCT
application "when they are unduly multiplied or

duplicate-".

The term "unduly multiplied" is defined

therein as claims where "in view of the nature and scope of
the invention, an unreasonable number of claims are
presented which are repetitious and multiplied the net

result of which is to confuse rather than to clarify".
the claims differ from one another and there is no

If

difficulty in understanding the scope of protection, "an objection on this basis generally should not be applied". Annex A5.42C2, to Part H, chapter 5, Paragraph 5.42, of the
PCT search and Preliminary Examination Guidelines states

that what is or is not a reasonable number of claims

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"depends on the fact, and circumstances of each particular
case".

This rule is dearly intended to provide the basis
for making a formal objection to the olaims ,,, laek of
conciseness or lac* of clarity. lt is not lntended ^

an arbitrary limit on the number of claims, nor is it

intended to shift the burden of search and examination to
the applicant.

According to new rule 1.75, an applicant must file an "examination support document" ,»ESD») according to new

rule l.26S before the issuance of a first Office action on the merits -if the application contains or is amended to
contain more than five independent claims or more than
twenty-five total claims." Under new rule 1.78,f>, the

Patent application is deemed to additionally contain the

number of claims present in another co-pending U.S. patent application if the filing date or priority date is the same
as a filing date or priority date of another co-owned o.s patent application having at least one inventor in common

with the international application, at least one patentably
indistinct claim and "substantial overlapping subject
matter".

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35 U.s.c. S 363 states that an international PCT application designating the United states shall have the
effect, fro. its international filing date undfir ^^ ^

PCT, of a national application for patent regularly filed in the U.S. Patent and Trademark Office. New rUles 1.75 and

1.265 would therefore apply to patent applications filed
under the PCT when the internationa! application enters the
U.S. national phase.

New rule 1.75 therefore would impose a further

Procedural requirement on patent aPpliCations filed under the PCT based on an arbitrary nmber of patent claims
regardless of the nature of the invention claimed. This is
not sanctioned by Rule 6.1,., PCT, which only ^^ ^ ^

formal objection against the claims for lack of conciseness
or lack of clarity on a case-by-case basis. Such an

objection cannot be remedied by an BSD, because Rule 6.1(a,
PCT relates to the ability to comprehend the invention
claimed and not whether or not the claimed invention is
patentable over the state of the art.

New rule 1.265 requires the applicant to, inter

1U. submit a pre-examination search performed by the
applicant and a detailed explanation of the relevance of
each reference found and the patentability of the

independent claims over each reference. According to new

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1.2.5,.,,

failure to submic an (the

rights in the patent application "abandoned").

Rule S1W..1 PCT specifies certain national

requirements allowed under Article 27 pct.

Those

requirements relate to furnishing documentation relating to
the identity of the applicant, the entitlement of the

applicant to a patent, entitlement to claim priority from an

earlier application, an oath or declaration of inventorship,
or evidence concerning non-prejudicial disclosures or
exceptions to lac* of novelty, representation by a

registered patent agent or attorney, and translations of certain documents. Submission of an ESD based on exceeding
· certain number of patent claims is not a national requirement sanctioned under Rule Slbla.l PCT.

Since the ESD requirement is not among the

exceptions to Article 27 pct identified in Ruie siw..! PCT

imposition of the ESD procedure on patent applicants
under the PCT is Prima facis prohlbited under ^.^ ^

g

PCT.

New rule 1.75 therefore imposes a further procedural

requirement on the PCT applicant in addition to the

procedural requirements of the PCT contrary to Article 27,1,
PCT.

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The purpose of the PCT is to provlde cenCrall2ed

searching and preliminary examination of the invention in
any authorised international search authority USA, and

international preliminary examination authority (IPEA),
respectively, worldwide (not only m the U.S.). The

applicant filing an international application under the PCT

is retired under Article 1S Per to pay for an international
Patent search by an international search authority when the

PCT application was filed.

m addition, the applicant may

have paid for preliminary examination of the claims by an international preliminary examination authority under
Article 33 PCT during the preceding international phase of
the PCT application.

The ESD requirement nevertheless requires PCT
applicants to, inter alla, independently carry out a search and characterization of the prior art already pald for and

carried out by internationally recognized authorities deemed
competent for those functions under Articles 16,3, and 32

PCT, respectively.

This duplication of work results in

additional cost and hardship for PCT applicants relative to
applicants for a national patent not relying on the pct,
which is contrary to the purpose of the PCT and, in
particular, contrary to the spirit of Art. 27 pct.

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35 U.S.C. § 2<b),2) requires consistency between the regulations established by the U.S. pto and U.S.

statutory law passed by Congress, including international laws ratified by the U.S. Indentation of new rules
l-73,b, and 1.265 are therefore cleariy »ltra vlres,
those rules violate Article 27 PCT.
III. iwJ

BENEFIT

Regardless of whether the applicant submits an

ESD, the U.S. PTO is required by 35 U.S.C. , 1.104,3, to
search the prior art. since searching the prior art as

statutorily required p!us studying an ESD would inherently
take more time than to rely soiely on its search of the

prior art, furnishing an ESD for patent applications having
more than the specified number of patent claims under new

rule i.75,b, will not necessarily help the U.S. PTO achieve
the stated goal of reduced U.S. patent application
pendency.
PTO.

Enjoining implementation of the new rules will

not, therefore, harm the legitimate interests of the U.S.
IV. CONCLUSION

It is well established in a long line of U.S.

Supreme Court cases that the judicial branch is responsible

for ensuring that the administrative branch of government

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does not exceed the powers granted to it under the U.S.
Constitution. The judicia! branch has the power, and the
responsibility, to ensure that administrative agencies such
as the U.S. Patent and Trademark Office implement
regulations consistent with U.S. law, including

international laws ratified by the U.S. such as Art. 27 pct.
As is clear from the evidence submitted by

Plaintiffs, implementation of the new ultra vires rules
1.75(b) and 1.265 would harm the public by imposing
substantial, illegitimate and unnecessary legal and

financial burdens on the individuals and companies seeking
to protect their investment in research and deveiopment,
contrary to the U.S. PT0-s constitutional mandate to promote

technological progress.

For the foregoing reasons, ! urge

this court to grant the plaintiffs' motions for a permanent
injunction to prevent the coming into force of the abovereferenced new rules.

Dated:

December 2 6,

2007

AMICUS CURIAE/

ROBERT LELKES, Pro se Geigenbergerstr. 3
81477 Munich
Germany