Tafas v. Dudas et al

Filing 235

AMICUS Brief/Memorandum in Support to Plaintiffs 135 MOTION for Summary Judgment, 133 MOTION for Summary Judgment filed by Ron D. Katznelson. (Attachments: # 1 Exhibit 1# 2 CD-Rom (See attachments added on 1/24/08 for the content of CD-Rom) (klau, ) Additional attachment(s) added on 1/24/2008 (klau, ). Modified on 1/24/2008 to edit text of attachment #2 (klau, ).

Tafas v. Dudas et al

Doc. 235 Att. 1

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EXHIBIT 1

Dockets.Justia.com

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UNITED STATES DISTRICT COURT EASTERN DISTRICT OF VIRGINIA Alexandria Division

TRIANTAFYLLOS TAFAS,
Plaintiff,
v.

l:07-cv-846 (JCC)

JON.W.DUDAS,efa/., Defendants.

CONSOLIDATED WITH
SMITHKLINE BEECHAM CORPORATION, et ah,
Plaintiff,
v.

l:07-cv-1008 (JCC)

JON.W.DUDAS,e/ai,
Defendants.

DECLARATION OF DR. RON D. KATZNELSON

1.

Similarly situated to Plaintiff Tafas, I am an inventor and an entrepreneur residing in Encinitas, California. I have been a user of the U.S. patent system for more than two decades and I am the named inventor or co-inventor in 25 U.S. patents and applications.
I affirm, under penalty of perjury, as follows:

2.

Appendix A contains true and accurate copies, excerpted, of letters quoting prices

for patentabilitv search reports that I received from (a) Mogambo Solutions, LLC of
Alexandria, VA; (b) Clearly Understood, Inc. of Dallas, TX; and (c) Patent Hawk, LLC of
Portland, OR.
3.

Appendix B contains true and accurate copies, excerpted, of email

communications on a proposed Examination-On-Request procedure that I had with

Robert A. Clarke, then Deputy Director & Acting Director Office of Patent Legal

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Administration, U.S. Patent and Trademark Office ("USPTO"). Patent Commissioner
John Doll was copied on these email communications.

4.

Appendix C is a true and accurate copy of comments I submitted to the Office of
Information and Regulatory Affairs of the Office of Management and Budget ("OMB")
on June 29,2007, as downloaded from OMB's web site -

http://www.whitehouse.gov/omb/oira/0651/comments/460.html.

5.

Appendix D is a true and accurate copy of comments I submitted to USPTO by email regarding its Information Collection Request (OMB Control No. 0651-0031) under

the Paperwork Reduction Act. A copy was submitted to OMB's Office of Information
and Regulatory Affairs and is linked at OMB's site -

http://www.reginfo.gov/public/do/PRAViewDocument7ref nbr=200707-0651-005.
6. Appendix E is a true and accurate copy of a report I have written entitled "Defects in the Economic Impact Analysis Provided by the USPTO for its New Claims and
Continuation Rules".

7.

I have recently studied patenting trends at the USPTO including arrival and disposition rates of various patent application types. I have also studied possible measures that the USPTO may adopt to reduce its examination workload. In connection

therewith, I have proposed one such measure, which I call "Examination-On-Request". It is based on a method used in foreign patent offices although I have learned that others before me have suggested such a proposal for U.S. implementation and that the USPTO
has considered various variants of this examination procedure. Under this examination regime, there would be a set time-period (say 3-5 years) after a patent application is filed

for requesting claim examination at the USPTO. The applicant may request examination
at any time prior to the expiration of the set period and any third party may do so and

trigger examination after publication of the application. This will prevent a patentee from
holding off prosecution of a patent that others find problematic and in need of early

patentability resolution. Applications for which no requests are filed within the set period
would be deemed abandoned and would never be examined. Because patent claims

become obsolete over time, my analysis submitted as comments to OMB, estimates that

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about 20% of claims would not ever require examination. This workload saving dwarfs
the purported workload reduction that the USPTO models associated with its New Rule
implied.

8.

On June 6,2007,1 met with John Love, Deputy Commissioner for Patent

Examination Policy at the USPTO after his presentation in San Diego1 and asked Mr.
Love why, after the 2004 legislation passed by Congress, the USPTO has not adopted an Examination-on-Request procedure instead of the (then proposed) Enjoined Rules. Mr.
Love responded to me that the USPTO had considered such procedures and had

proposed them in meetings with AIPLA. Mr. Love stated that AIPLA members had

rejected the proposal because, according to him, they were concerned that deferral of
examination would result in loss of legal work and reduced professional fees they would
otherwise receive from their clients. Mr. Love further advised that the USPTO

abandoned further actions in the matter due to these strong objections. I then asked Mr.
Love whether the USPTO recognized that it should have gone forward with such a
system precisely because AIPLA members' objected to the loss of legal work «

confirming that examiners would also see reduced burdens. Mr. Love's response was
that the USPTO would be revisiting this topic "soon".

9.

On October 11,2007,1 met with Robert J. Spar, Former Director of Office of Patent Legal Administration, Deputy Commissioner for Patent Examination Policy,

USPTO, after his dinner presentation in San Diego2 and asked him why the USPTO has
not adopted an Examination-on-Request procedure instead of the New Rules. Mr. Spar responded that the USPTO had considered such procedures and had proposed them in
meetings with AIPLA. He stated that AIPLA members had rejected the proposal

because, according to him, they were concerned that deferral of examination would result

Property Law Association, (June 6, 2007), at http://sdipla.org/resources/SanDiego071 .ppt.

1 John Love, Present and Future Perspectives of the USPTO, presentation at the San Diego Intellectual

Robert J. Spar, Final USPTO Rule on Claims and Continuations - Overview ofMajor Issues and Concerns, presentation at the San Diego Intellectual Property Law Association, (October 11,2007),

at http://www.sdipla.com/resources/ccfrhighpointsv8.ppt.

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in loss of legal work and reduced professional fees they would otherwise receive from their clients. He stated that the USPTO abandoned further actions in the matter due to
these strong objections.

10.

On May 10,2007,1 had an email exchange on the subject of Examination -onRequest with Robert Clarke, then the Deputy Director & Acting Director Office of Patent

Legal Administration. Mr. Clarke told me in his email that the USPTO had presented the deferred examination idea in town-hall meetings but that it was rejected. (See Appendix
B).

Verification

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I declare under penalty of perjury under the laws of the United States of America that the

foregoing is true and correct. Executed as of the date indicated below in Encinitas, California.

Ron D. Katznelson, Ph.D.
^

December 26,2007