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04/08/08
A number of people have voiced hypotheses as to why Dr. Triantafyllos Tafas brought his suit against the USPTO. The following provides the story behind his case.
Dr. Tafas is a founder of a robotic microscopy company, Ikonisys, Inc. (Ikonisys) www.ikonisys.com, having its headquarters in Science Park, New Haven. Despite his drive and goodwill, he unsuccessfully struggled for years to raise funds in Greece and then in Europe to develop a technologically-complex robotic microscope which was to analyze tissue samples automatically using complex algorithms. Dr. Tafas, having seen the pain and suffering of patients with cancer, was motivated to develop a 24/7 automated microscope which he felt could be used with other technology he was developing to detect early stage cancers (e.g., the smallest breast cancer detectable on mammogram has likely been developing for over two years). After many failures to convince investors in Europe to provide the seed money needed to hire the many programmers, electrical and mechanical engineers, and biologists he would ultimately need to develop a commercial microscope, he turned to a colleague in the United States. Working together, the two developed a plan to seek patent protection on certain of their discoveries, and to seek capital venture money based on the patent applications. Dr. Tafas found the United States exceptional in that it provided strong patent protection affordable not only by large corporate entities, but also by individuals, and because investors respected the worth of patent applications. Based on the patent applications which he filed after coming to this country, Dr. Tafas and his colleague were able to raise the needed seed funding to start Ikonisys.
After many painstaking and lean years, Ikonisys now manufactures and sells a fully automated microscope. The microscope is now in trials in determining its effectiveness in the detection of certain early stage cancers using proprietary biological markers. Early results have been promising. For anyone who suffers from, or knows anyone who has suffered from or died due to cancer (which unfortunately encompasses almost everyone), Dr. Tafas' research holds out the potential to revolutionize the field of cancer treatment.
Dr. Tafas first learned of the USPTO's proposed new rules for limiting continuations and claims (the "Rules") when he received an advanced copy of an article written by Steven Moore, his patent attorney, titled "Hampering Ingenuity Through Changes in the Rules." The article was submitted for publication a few weeks after the Rules were published, and the article was ultimately published in INTELLECTUAL PROPERTY TODAY in April 2006. The article argued that the proposed Rules would "constitute the most sweeping changes in U.S. patent practice in nearly sixty years," and would "fundamentally change the research strategy of untold numbers of companies, universities and individual inventors." The premise of the article was that the USPTO did not have the power to promulgate the Rules and that only Congress had the power to limit continuations and requests for continued examination (RCEs) (many of the cases cited in the article finding their way into the ultimate opinion by Judge Cacheris). After reading the article, Dr. Tafas became quite concerned and asked his patent attorney to file comments on the proposed Rules on his behalf.
Dr. Tafas immediately understood that the Rules would have a dire effect on the development of his own company, as well as other proprietary endeavors he was developing. He was justifiably fearful that new medical technologies and biotechnology advances would be copied and sold by others who had not incurred the research investments borne by the innovators. Dr. Tafas also understood the Rules would adversely affect the development of other technologies in the mechanical, electrical, chemical, and software fields. Dr. Tafas felt the need to take action, but had a difficult choice to make. He certainly was not seeking publicity in bringing the case. In contrast, he seriously contemplated whether the case could result in retribution against him. For example, would commencing a lawsuit against the USPTO (should the proposed rules ultimately be promulgated into final regulations) potentially have negative repercussions on present and future patent applications he had filed for his companies and proprietorships? Dr. Tafas also had a pending application for U.S. citizenship and could not help but wonder if suing the government might create some negative impact on this most important application to him personally. Yet with all these gnawing thoughts, Dr. Tafas put his own fears behind him, put his professional reputation on the line, and did what he believed to be right, becoming the first to judicially challenge the new Rules—within a day of their announcement.
Dr. Tafas pursued his suit despite naysayers who fully supported his arguments yet questioned whether a "small inventor" could possibly prevail in a challenge against the USPTO's unlimited resources and considerable power. Though nearly everyone supported him, no one, not a single entity or party, proffered Dr. Tafas any monetary aid in his endeavor. Dr. Tafas not only fought the USPTO, but quietly lobbied against the Rules behind the scenes in Congress, meeting with the staff of a number of senators, trying to convince them of the damage "Patent Reform" would have on innovation, and particularly on small inventors and small entities. Dr. Tafas pursued his case alone until GlaxoSmithKline, Inc. (GSK) joined the lawsuit and made common cause with Dr. Tafas in mid-October 2007.
On April 1, 2008, in a decision much anticipated and closely watched by companies and patent practitioners in the United States, District Court Judge James C. Cacheris of the Eastern District of Virginia granted summary judgment in favor of Dr. Tafas and GSK invalidating the USPTO's Rules, finding the USPTO's proposed limitations to the number of continuation applications and claims per patent are beyond the USPTO's authority. Such decision has been hailed by many companies who saw the new rules stifling innovation in arts where significant research was needed to bring a product to market, and making patenting a luxury, that is, a privilege limited to companies with significant capital.
Dr. Tafas was represented by Steven Moore, James Nealon, William Golden and Joseph Wilson of KELLEY DRYE & WARREN LLP.
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Bios of Involved Attorneys:
Steven J. Moore, Partner |
James E. Nealon, Partner |
William R. Golden Jr., Partner |
Joseph D. Wilson, Associate
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